The authority of the Turkish Patent and Trademark Office ("the TPTO") to maintain a registry of well-known trademarks has been a subject of debate since the Court of Appeal's decision in 2020. Although the TPTO continues to accept well-known trademark applications, its last published decision on such applications dates back to July 20, 2022. Since then, while the TPTO has continued to accept applications and convey them to the relevant department for a decision, it appears that no substantive review or assessment has been conducted.
This situation has created uncertainty regarding the future of the Well-Known Trademarks Registry and the policy that the TPTO will adopt in this respect. Clarifying the scope of this authority through legislative amendments is critically important to resolving the practical issues currently faced.
1. Establishment and Background of the Well-Known Trademark Registry
The TPTO published a bulletin in 1997 listing well-known trademarks as on a one-time basis. Later, relying on the authority to "determine and implement procedures concerning the recognition level of trademarks", granted under Law No. 5000 on the Establishment and Duties of the Turkish Patent Institute, which entered into force on November 19, 2003, the TPTO began maintaining a Well-Known Trademarks Registry. This was announced in a communiqué titled "Principles and Implementation Regarding the Recognition Level of Trademarks".
However, neither the repealed nor the current legislation contains any explicit provision granting the TPTO the authority to maintain such a registry.
2. Relevant Court of Appeal Precedents on the Well-Known Trademark Registry
Following 2003, in numerous decisions, the Court of Appeal referred to Law No. 5000 and acknowledged the TPTO as the primary authority for the determination of well-known trademarks. In fact, in non-contentious proceedings initiated solely for the recognition of well-known status in anticipation of potential future infringements, the Court of Appeal considered an application to the Well-Known Trademarks Registry as a procedural requirement.
However, the Court of Appeal later emphasized that well-known status is not a permanent condition, and a trademark may lose this status over time. Because the registry is not a continuously updated system, registration in the Well-Known Trademarks Registry is not sufficient evidence of a trademark's well-known status. Accordingly, the Court of Appeal has stated that well-known status must be assessed in each on a case-by-case basis.
However, with its decision dated 05.02.2020 and numbered 2019/2980 E., 2020/991 K., the 11th Civil Chamber of the Court of Appeal departed from its established precedent by dismissing a case filed for cancellation of a Board of Re-examination and Evaluation decision of the TPTO rejecting a well-known trademark application, on the grounds that there was "no legal interest". The decision reiterated that well-known status must be proven on a case-by-case basis and is not permanent, but for the first time, it also held that the TPTO lacks legal authority to maintain a well-known trademark registry.
This approach was reinforced by the General Assembly of Civil Chambers of the Court of Appeal in its decision dated February 1, 2023, and numbered 2023/83 E. – 2023/7 K., which similarly concluded that the TPTO has no legal authority to maintain such a registry. It further held that the determination of well-known status cannot be the subject of a standalone legal action and may only be asserted within the context of an actual dispute.
3. Function and Current Status of the Well-Known Trademark Registry
According to established Court of Appeal precedents, trademark owners must submit extensive evidence in each case to prove their trademark's well-known status before the TPTO or the courts. Although registration in the Well-Known Trademarks Registry is not, on its own, sufficient to prove such status – because well-known status is not a fixed concept- registration has long been used in practice as a means to facilitate proof by trademark owners.
Well-known trademark registrations are particularly significant for their potential impact on proceedings before the TPTO. It is often observed that even when claims of well-known status are supported with detailed and comprehensive evidence, the TPTO experts are reluctant to acknowledge such claims. However, when a trademark has been registered as well-known, such claims tend to be accepted more easily.
Despite the Court of Appeal's opposing precedents over the past five years, trademark owners continue to apply for well-known status registrations, indicating an ongoing need in this regard. That said, the last decision by the TPTO evaluating a well-known trademark application was issued on July 20, 2022. Since then, although applications have been accepted and referred to the examination department, the TPTO has conducted no substantive review or assessment.
In line with the latest Court of Appeal precedents, it has become impossible for a trademark owner to seek recognition of their trademark as well-known either by the TPTO or through court proceedings without an underlying dispute.
4. Conclusion
It is crucial that the TPTO's authority to maintain a well-known trademark registry is clearly established through legislation, and that the scope and limitations of this registry system are explicitly defined. Otherwise, even if the TPTO continues to operate the registry, its evidentiary value will be undermined. Consequently, trademark owners will be forced to submit more extensive and detailed evidence in every individual case to prove the well-known status of their trademarks.
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.
