Turkey: The Dilemma Of Co-Existence Of Trademarks Under Turkish Law

Last Updated: 17 September 2009
Article by Uğur Aktekin and Begüm Beyhan

Trademarks are defined as signs distinguishing the goods and services of one undertaking from the goods and services of the same kind or another undertaking. In this sense, "distinguishing certain goods and services of an undertaking from other goods and services of the same undertaking or other similar goods and services provided by other undertakings" is considered as the main function of trademark.

On the other hand, in the usual flow of the business life, since the signs that can be chosen as trademarks are limited, it is possible to see identical or confusingly similar trademarks used by companies doing business in the same industry coexists without any dispute. Even though it is sometimes observed that some of these trademarks, in particular confusingly similar ones, coexist as registered trademarks, it is generally not possible to register identical or even confusingly similar trademarks if there isn't any dispute between the holders of the trademarks under Turkish law. This implementation prevents registration of some of the trademarks that are used for a long period of time without the intervention of the proprietor of an identical or confusingly similar trademark and therefore, deprive them of the advantageous provisions of the Trademark Law.

Under the system of Decree Law No.556 Concerning the Protection of Trademarks, the mechanism for protection of distinctive character of trademarks is the "similarity" examination. The implementation of similarity examination differs from country to country. Where in some countries an examination is made under absolute grounds of refusal as well, others carry out a similarity examination only upon oppositions of trademark holders.

In Turkey, the initial examination on which signs can be registered as trademarks is made upon the filing of the trademark application by Turkish Patent Institute ("TPI") under the provisions of the Decree Law. The TPI bases this examination on two main grounds simply defined by the provisions of the Decree Law and the doctrine as "Absolute Grounds for Refusal" and "Relative Grounds for Refusal".

The refusal grounds defined as "Absolute Grounds for Refusal" are deemed to be concerning public policy, are set forth under art.7 of the Decree Law and the examination regarding these refusal grounds for refusal is considered by TPI ex officio during each stage including the application, publication and opposition stages. Similarly courts are also bound with the absolute grounds for refusal and have to make an ex officio examination during cases pending before them.

The examination concerning the relative grounds for refusal is set forth under art.8 of the Decree Law and it arises "upon an opposition by the proprietor of an application for registration of a trademark or of a registered trademark".

This article concerns the interpretation of the terms "trademarks identical or indistinguishably similar with a trademark registered earlier or with an earlier date of application for registration in respect of an identical or same type of product or services" set forth under absolute grounds for refusal under art.7/1(b) of the Decree Law in Turkish Law and problems caused by this interpretation in practice. The related article of the Decree Law is as follows:

"Article 7 - Following signs shall not be registered as a trademark:

.....b) (Amended: 5194- 22.6.2004/m.13) Trademarks identical or indistinguishably similar with a trademark registered earlier or with an earlier date of application for registration in respect of an identical or same type of product or services, "..."

The main purpose of the identity and similarity examination conducted ex officio under absolute grounds for refusal provided under art.7 of the Decree Law is to protect the distinctive character of the trademarks and public policy by avoiding registry of reiterated trademarks. Basically, this provision takes its place in Turkish Law as a reflection of the origin identifying function of the trademarks. However, while the developments and changes in business life have strengthened other functions of trademarks such as the guarantee function, origin identifying function has gotten much weaker. As a result of domination of the global economic rules, the trademarks have started to indicate goods of a certain quality or services provided under certain standards by drifting away and abstracting themselves from their holders. In this regard, nowadays, consumers perceive the trademarks independent from their proprietor undertakings and choose the product by focusing on the trademark bared rather than the manufacturer.

According to the statement under the absolute grounds for refusal set forth under art.7/1(b) Decree Law, a trademark application should be rejected upon an ex officio examination made by the TPI if the trademark application is "identical or indistinguishably similar" with an earlier registered trademark or an earlier dated application for registration in respect of an "identical or same type of product or services". As a general rule, the determination of "indistinguishable similarity" between the trademarks is based on their overall impressions.

As mentioned above, the regulation concerning the examination of absolute grounds for refusal differs from country to country. Decree Law art.7/1(b), does not take place in Regulation 40/94 constituting the reference text of the Decree Law. Additionally the provision provided under art.7/1(b) of the Decree Law No.556 does not take place under EU Directive 89/104 which has been availed from during preparation of the mentioned Decree Law, either. In fact; there are no provisions within the scope of the absolute grounds for refusal set forth under the mentioned Community Trademark Regulation corresponding to art.7/1(b) of the Decree Law No.556, and the confusingly similarity with an earlier trademark/trademark application has been regulated as the right of opposition directly granted to the holders of the earlier trademarks. Its reflection in practice results in that TPI rejecting some trademarks under absolute grounds for refusal which are already registered under similar conditions in EU member states the legislation of which are thought to be harmonized with Turkish Law. In other words, trademarks concurrently registered in trademark registries of EU member states will not be registered under Turkish Law, with one registered trademark being the ground of refusal of the other even if the trademark holders do not raise any oppositions.

On the other hand, when the TPI decisions are examined it can be perceived that TPI interprets art.7/1(b) of the Decree Law No.556 broadly and may reject even the trademark applications that can be considered as "similar" with the earlier trademark/trademark applications within the meaning of relative grounds for refusal, upon an examination made under absolute grounds for refusal.

It is possible to say that decisions granted by the Civil Courts of Intellectual and Industrial Rights make an interpretation of art.7/1(b) of the Decree Law No.556 complying better with the purpose of the provision, contrary to TPI's broad interpretation. For instance, upon the rejection of "4US" trademark application based on the earlier "FOR US" trademark in accordance with art.7/1(b) of the Decree Law No.556; the 2nd Civil Court of Intellectual and Industrial Rights of Ankara, in its decision dated 01.05.2008 and numbered 2007/90E. 2008/110 K., has stated that the trademark application subject to the action is not identical or indistinguishably similar with the trademark shown as the grounds for the rejection.

It should not be possible to interpret art.7/1(b) not taking place under regulations of many countries and even EU Directive constituting the reference of the Decree Law No.556, in a way that allows TPI to reject even the "similar" trademark applications ex officio.

Another contradicting issue is the letter of consent of the holder of the earlier trademark to the applicant of the later trademark application to overcome the Decree Law art.7/1(b) obstacle. In practice, TPI does not acknowledge such letters of consent and rejects the application under absolute grounds for refusal even if the holder of the earlier trademark consents or does not withdraw the rejection decision in case the consent is submitted at a later stage. The ex officio rejection of the trademark application by the TPI even where there is no dispute between the holder of the earlier trademark and the applicant of the latter trademark application concerning the similarity in trademarks and likelihood of confusion on the part of public, disadvantages the trademark holders. At this point the concept of protected interest is transformed by the Turkish Law system and the priority of the "right of the trademark holder" is diverted to "public policy" and even to "non-deception of the consumers".

Even though there are no regulations in Directive 40/84 concerning the absolute grounds for refusal, in contrast to the TPI application the letters of consent are acknowledged during oppositions. In this regard, even though OHIM accepts that the letter of consents issued by the holder of the earlier trademark for registration of the later trademark application may be valid, it has also adapted the opinion that OHIM will not be bound with such letter of consent since they are private contracts. The 10.12.2004 dated and R 330/2002-2 numbered OMEGA decision and 30.07.2002 dated and R 1167/2006-1 numbered COMPARE decision granted by the OHIM are in this direction. On the other hand, at the 27.11.2007 dated and R 1167/2006-1 numbered SKY decision OHIM has considered a contract of 20 year between the parties and examined the action from the merits. Even though the OHIM has not accepted the applicants claims on the contract since the trademark subject to the dispute regards to "SKY device" trademark while the contract concerned the SKYROCK, SKYZIN and SKY CHANNEL trademarks, the fact that it has examined the contract between the parties from merits shows that the latest approach of the OHIM is to consider the will of the parties.

Although it is not possible to overcome absolute grounds for refusal under the scope of art.7/1(b) of the Decree Law No.556, until the amendment of art.7/II of the Decree Law on 2004, it was possible to register a trademark that was identical or indistinguishably similar with the earlier trademark/trademark application without being affected by the absolute grounds for refusal for the same goods or services in accordance with the reference to the mentioned article of the Decree Law and only if the sign has acquired a distinctive character before the date of registration. Before the amendment on 2004, art.7/II stipulated that "The provisions of (b), (c) & (d) cannot be invoked to refuse the registration of a trademark which has been used before the registration and has acquired distinctive character through this use in respect of the goods and services for which it is to be registered"

Therefore under the practice before 2004, despite the existence of a similar trademark within the meaning of art. 7/1(b), it was possible to register a trademark application through an opposition or action in case the latter trademark application acquired distinctive character through use is rejected due to an earlier registered trademark.

Another aspect of the option provided for the "trademarks acquired distinctiveness through use" is that, under the 6.bis of the Paris Convention it is accepted that the trademarks meeting the status of well-known trademarks should benefit from the mentioned option a fortiori. Decree Law No.556 art.7/1(i) stipulates that applications made for well-known trademarks according to 6.bis 1 of the Paris Convention, without the permission of the proprietor shall be rejected. In this regard, based on the reverse interpretation of art.7/1(i) provision, it can be said that it was possible to register a trademark that is identical or indistinguishably similar with a well-known trademark before the TPI, in case the holder of the well-known trademark according to article 6.bis 1 of the Paris Convention produced a letter of consent, for a long period of time. Again based on this provision, since it was possible to register a trademark in the name of a third party in case the holder of the well-known trademark showed consent, the registration of regular trademarks must also have been possible in case holder the earlier trademark showed consent. However, even though the consent of the proprietor of a regular trademark for the registration of a trademark identical or indistinguishably similar is given effect in practice, there are no precedents indicating acknowledgement of these documents by the TPI.

It can be seen that the settled TPI practice allowing the registration of well known trademarks with the consent of their proprietors has changed upon the amendment of 2004 on the Decree Law No.556. The major reason of this change is based on the abolishment of the reference made by art. 7/II to art.7/1(b) of the Decree Law. Before the amendment of 2004, the obstacle of art.7/1(b) could be overcome by this reference and the letter of consent of the well known trademark proprietor allowing the registration of the identical or indistinguishably similar trademark based on the Court of Appeals precedent concluding that well known trademarks should benefit from the 7/II provision a fortiori.

However, after the amendment on 2004, the "KINDER FRIENDS" trademark application containing the "KINDER" trademark, which has the well-known status and registered in Turkey under the name of an affiliate company of the same company groups managed by the same persons, has been rejected by the TPI due to art.7/1(b) of the Decree Law despite the letter of consent of the trademark holder. The applicant company has filed an action before the 1st Civil Court of Intellectual and Industrial Rights of Ankara for annulment of the mentioned rejection decision. The Court of Appeals has made determinations differing from the practice before 2004 regarding the interpretation and application of articles 7/1(b) and 7/1(i). According to interpretation of Court of Appeals; in terms of Paris Convention 6.bis 1 provision "The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation" and provision of 4.bis 6/B-1 "when trademarks are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed shall not be registered" and art.7/1(b) of the Decree Law, the consent of the registered trademark holder given for registration of a trademark that is identical or confusingly similar with his trademark shall not incur any right in favor of the latter applicant.

With this decision, the Court of Appeals has given priority and superiority to art.7/1(b) as compared to art.7/1(i) both set forth under absolute grounds for refusal. Accordingly, a registered and well-known trademark in Turkey shall not be registered for identical or similar goods/services under the name of a third party even if the holder of the trademark clearly gives consent to.

Therefore, it is not possible to overcome art.7/1(b) which regulates absolute grounds for refusal. Considering that nowadays the trademarks cover a wide range of goods and services, trademark applicants face difficulties to register their trademarks based on the registered but unused trademarks.

It is quite common for the companies to register trademarks that they do not use just because they are similar to the ones they actually use or to register trademarks for goods and services similar to the goods and services which they will actually use their trademark on, with the aim of widening the scope of protection. In this regard trademark applications of the latter applicants are rejected due to unused but registered trademarks and filing an invalidation action against the earlier registrations merely keep Courts unnecessarily occupied.

In light of the above explanations, we are of opinion that a regulation providing the trademark application to initially be compared with the earlier registrations/applications and then be rejected ex officio only if the application is identical with an earlier registration or application, is appropriate as otherwise, the holder of the earlier trademark registration will be obliged to track every trademark application identical to its trademark and file an opposition if that is the case. However, the examination of absolute grounds for refusal to include similar trademarks and especially trademark applications to be rejected even when there is consent of the earlier registered similar trademark causes significant problems in practice as briefly explained above.

Therefore, some provisions in favor of the trademark applicants should be introduced in order for them to obtain trademark protection. In this regard, considering that trademark use liability is for 5 years, this period could be shortened to 3 years as it is in the reference regulation which will at least reduce the number of trademark applications rejected because of the non-used trademarks. Additionally, the TPI to request additional information whether the trademark will be used or not could also be considered as an alternative solution.

Similarly, Court of Appeals and TPI recognizing the letter of consents by taking into account the fact that the origin indicating function of the trademarks has lost its significance may provide a solution.

As a matter of fact, the consent implies the existence of necessary contracts between the parties regarding the legal use of the trademark and indicates that there is no illegality such as counterfeit.

Consequently, we are of opinion that art.7/1(b) should be amended as to comprise only "identical" trademarks registered or applied for earlier and the initiative regarding similar trademarks shall be of the earlier right holder. Even if this is not possible, the phrase "indistinguishably similar" in art.7/1(b) of the Decree Law should be interpreted narrowly in accordance with the wording of the provision. On the other hand, in the case the latter trademark application identical or indistinguishably similar with the earlier trademark is rejected due to art.7/1(b) of the Decree Law, the written consent of the earlier trademark owner allowing registration of the application shall be considered as a presumption that the trademarks are not "indistinguishably similar" and be taken into account during the appeal process, which makes concurrent registration of similar trademarks possible for at least in cases where trademark owners do not have any oppositions against each other.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Uğur Aktekin
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.