Like any intellectual property right item that grants its owner the right to exclusivity of use in a given market, ownership over a trademark or right to use it may be subject to controversy between the trademark's would-be genuine owners or bona-fide users.
If the parties are sufficiently cooled off and wish to avoid an adversarial procedure, they tend to consider ways of agreement over the ownership or usage of the trademark in question.
Co-existence agreements come thus into the scene as a way to regulate the parties' ownership and usage of the trademark in the market.
Co-existence agreements were possible and enforceable between parties as a sui generis contract since a long time under the general provisions of the Turkish law of obligations/contracts law. The Turkish Intellectual Property Code no. 6769 which took effect as of January 10, 2017 has introduced the possibility for applicants of obtaining and submitting a Letter of Consent from the earlier-registered owner of a still valid trademark before the Turkish Patent and Trademark Office, so that they may be able to obtain registration for the identical or almost identical trademark covering goods or services, identical or of identical type.
Here are some major matters to keep in mind and pay attention to while considering executing a trademark co-existence agreement in Turkey:
a."Letter of Consent" concerns the registration of a later identical/nearly identical trademark and it is not the only way of co-existing for trademarks in Turkey;
An often-misunderstood aspect of letters of consent is that they are thought to be equivalent to and indispensable for trademark coexistence. Although they prove to make things simpler, they are not the only way of coexisting in the market.
Especially, in the cases where the parties' trademarks are not identical or nearly identical, but they can still be confused by the customers, preparing and submitting a letter of consent would be unnecessary and meaningless. In such instances, due consideration must be placed on how to delineate the way in which the trademark specimen/representation will be used by the parties and that would be a matter to be resolved contractually — in the co-existence agreement.
The same consideration above goes for the trademark ownership or use which concern different goods or services. Again, in these instances, the attention must be primarily focused on the delimitation of the goods and services on which the trademark is to be used.
b. If the trademarks are identical or nearly identical;it is important to considerthe goods or services the trademark will be used on, i.e. whether the parties will use the trademark on the same goods or services or else
c. If the goods or services are identical or of identical type; it is important to consider the representation of the trademark to be used by parties, especially whether it will be identical or with several differences distinguishing the source
d. Especially in cases where the identical trademark will be used on the identical goods or services; it is crucial to include provisions regulating the ways in which the trademark is used: obligations to avoid dilution, harm to reputation or prohibition not to take unfair advantage from each other or any other issue which matters in the specific case.
e. The boundaries for further trademark applications comprising the trademark in question must be explicitly set since ambiguity or lack of a term in this regard might cause legal limbo resulting to a dispute in case of visual rebrandings or expansion of product range on the trademark in the future.
f. Other matters, such as geographical scope of the coexistence agreement, securities to avoid future controversies, non-compete, relationship of the subject trademark with other intellectual property assets must be scrutinized while drafting the agreement.
g. Where the goods and services derive from a regulated area such as food or tobacco, it is meaningful to draft the agreement in a way which will be in line with the current regulation and not to include provisions which cannot be honoured or will be meaningless in view of market regulation restrictions.
h. Where the coexistence agreement falls within the scope of application of competition and anti-trust laws because of the market share of the parties or else; it is equally important that the agreement is permitted and not contrary to laws.
The above matters reflect not all but some of the material issues that should be considered while drafting a coexistence agreement. What may matter afterwards is to reflect the coexistence agreed upon within the public records of the trademark registry of the country concerned if those are not in line with the inter partes agreement of the parties.
As hinted at above, there are many ways to ensure this which includes but is not limited to letters of consent; in this regard and additionally, trademark assignments, licensing registration, out-of-court or administrative non-use actions will become relevant.
Originally Published 20 November 2020
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.
