Scope Of Protection Of Well-Known Trademarks Under Turkish Trademark Law: Legislation And Case Law

A. INTRODUCTION

Trademarks are distinctive signs that indicate the commercial origin of goods and services. However, certain trademarks, through extensive use, advertising activities, and market strength, may over time attain a high level of recognition and reputation, thereby acquiring the status of "well-known trademarks." Such trademarks benefit from an extended scope of legal protection, not only in respect of the goods and services for which they are registered, but also in relation to dissimilar goods and services.

In this context, the concept of a well-known trademark goes beyond the traditional likelihood of confusion analysis in trademark law and represents a special protection regime aimed at safeguarding the reputation, distinctive character, and strong associative value of the mark in the minds of consumers.

This article examines the scope of protection afforded to well-known trademarks under Turkish trademark law in light of the relevant legislative framework, practical applications, and judicial precedents.

B. LEGAL FRAMEWORK ON WELL-KNOWN TRADEMARKS UNDER TURKISH TRADEMARK LAW

The protection of well-known trademarks under Turkish trademark law is governed by the Industrial Property Code No. 6769 ("IPC").

Pursuant to Article 6/4 of the IPC, trademark applications that are identical or similar to well-known trademarks within the meaning of Article 6bis of the Paris Convention are rejected upon opposition, provided that they relate to identical or similar goods and services. This provision confirms that the traditional protection regime based on the likelihood of confusion continues to apply to well-known trademarks.

However, the protection afforded to well-known trademarks is not limited to this framework. Article 6/5 of the IPC provides for an extended scope of protection, allowing well-known trademarks to be protected even in relation to dissimilar goods and services. Accordingly, a subsequent trademark application shall be refused where it:

• takes unfair advantage of the reputation of the well-known trademark,
• harms its distinctive character, or
• damages its reputation.

In this respect, the protection of well-known trademarks is not confined to the likelihood of confusion, but rather establishes a broader legal regime aimed at safeguarding the economic value, reputation, and distinctive character of the mark.

Therefore, the IPC maintains the traditional trademark protection on the one hand, while on the other hand introducing an additional layer of protection against uses that target the market power and symbolic value of well-known trademarks.

C. ELEMENTS OF PROTECTION FOR WELL-KNOWN TRADEMARKS

In order for the extended protection afforded to well-known trademarks to apply, certain key elements must be satisfied cumulatively.

First, the trademark must enjoy a high level of recognition among the relevant public. In assessing whether a mark is well-known, factors such as the duration of use, geographical scope, advertising activities, and market share are taken into consideration.

Second, the later use must establish a connection with the well-known trademark. While this connection does not necessarily need to reach the level of likelihood of confusion, it must be sufficient to create an association in the minds of consumers.

Third, such use must result in taking unfair advantage of the reputation of the well-known trademark, harming its distinctive character, or damaging its reputation.

In this respect, the protection of well-known trademarks extends beyond preventing consumer confusion and also aims to safeguard the economic and symbolic value of the mark.

D. SCOPE OF PROTECTION OF WELL-KNOWN TRADEMARKS IN THE CASE LAW OF THE COURT OF CASSATION

Under Turkish trademark law, the scope of protection afforded to well-known trademarks is determined on a case-by-case basis, taking into account the level of recognition of the mark, its distinctive character, and the risks of unfair advantage, reputational harm, and dilution in relation to the relevant goods and services.

The case law of the Court of Cassation demonstrates that this protection is neither absolute nor unlimited; however, where the necessary conditions are met, it may extend to dissimilar goods and services.

• Decision of the 11th Civil Chamber of the Court of Cassation dated 11 April 2017 (File No. 2015/14462 E., Decision No. 2017/2034 K.):

This decision is significant in determining the limits of protection afforded to well-known trademarks, particularly in relation to different classes of goods and services.

In the case at hand, the trademark application "GAP Avantaj" filed by the defendant was compared with the claimant's trademarks containing the element "ADVANTAGE." The Court found that the services in Classes 38 and 41 covered by the application were different in nature from the banking and financial services for which the claimant's trademarks were well known.

In assessing the signs, it was held that the term "ADVANTAGE," being a commonly used word in Turkish meaning "advantage," has a limited degree of distinctiveness. Although the claimant's trademarks had acquired distinctiveness and recognition through use in certain services, such protection could not be automatically extended to all goods and services.

In this context, the Court of Cassation emphasized that a claim of well-known status produces legal effects only in respect of the goods and services for which the mark is recognized. It further underlined that, in the absence of a link established in the minds of the average consumer between the marks, there can be no likelihood of confusion in relation to services in different sectors.

Moreover, considering the dictionary meaning and widespread use of the term "Avantaj," it was concluded that this element contributed a certain degree of distinctiveness to the applied-for mark and ensured a sufficient level of differentiation from the claimant's trademarks.

As a result, the Court upheld that the conditions for extended protection of a well-known trademark were not met in the present case and dismissed the action, finding that the requirements under Article 8/4 of the repealed Decree-Law No. 556 were not satisfied.

• Decision of the 11th Civil Chamber of the Court of Cassation dated 3 March 2021 (File No. 2020/1913 E., Decision No. 2021/1928 K.):

This decision provides important guidance on how sector-specific recognition, acquired rights, and temporal priority should be assessed in determining the scope of protection of well-known trademarks.

In the case at hand, the claimant's "ANN TAYLOR" trademark was accepted as well known in the clothing sector, whereas the defendant's trademarks were argued to rely on earlier registrations and use in relation to "eyewear" and "watches."

Although the Regional Court of Appeal partially invalidated the defendant's trademarks based on the well-known status of the claimant's mark, the Court of Cassation held that this assessment was based on an incomplete examination.

The Court of Cassation first provided a detailed definition of the concept of a well-known trademark, emphasizing that well-known status is not a fixed or absolute notion, but may vary depending on sectoral, geographical, and temporal factors. In this regard, it stressed that the assessment of well-known status must be conducted as of the filing date of the later trademark application.

The Court further clarified that well-known status does not automatically extend to all goods and services. Rather, the scope of protection depends on the level of recognition of the mark and whether the risks set out under Article 8/4 of the repealed Decree-Law No. 556 (Article 6/5 of the IPC) materialize in the specific case.

In addition, the Court underlined that the defendant's argument regarding earlier trademark registrations in relation to "eyewear" and "watches" had not been sufficiently examined, and that it should be assessed whether these circumstances give rise to acquired rights.

It was also noted that a significant portion of the evidence submitted to establish the claimant's well-known status post-dated the filing of the contested trademarks. Accordingly, the Court emphasized that well-known status must be proven with concrete and sufficient evidence as of the relevant date.

Ultimately, the Court of Cassation held that, in order to apply the extended protection of well-known trademarks, the following factors must be assessed cumulatively:

• whether the mark was well known in the relevant sector as of the filing date,
• the scope and intensity of its recognition,
• the existence of any acquired rights based on earlier registrations, and
• whether the risks of unfair advantage, reputational harm, or dilution arise in relation to different goods and services.

On these grounds, the decision was overturned due to incomplete examination.

This decision clearly demonstrates that the protection of well-known trademarks is neither automatic nor unlimited, and that each case must be assessed separately in light of temporal, sectoral, and use-based considerations.

• Decision of the 11th Civil Chamber of the Court of Cassation dated 5 February 2025 (File No. 2024/1645 E., Decision No. 2025/599 K.):

This decision provides important insights into whether the scope of protection of well-known trademarks may extend across different sectors and to what extent marks with a low degree of inherent distinctiveness can benefit from such protection.

In the case at hand, there was no dispute as to the high degree of similarity between the core element of the claimant's well-known trademark and the defendant's "... kimya+device" trademark application. However, the Regional Court of Appeal concluded that the conditions under Article 6/5 of the IPC were not met, on the grounds that there was no proximity between the "milk and dairy products" sector, where the claimant's mark was well known, and the goods covered by the application, and that the main element of the mark was a commonly used term with a relatively low level of distinctiveness.

The Court of Cassation did not agree with this assessment. It emphasized that, considering the level of recognition attained by the claimant's trademark, the use of a similar sign in different classes of goods and services could still adversely affect the reputation of the mark, create an association in the minds of consumers, and enable the defendant to obtain an unfair advantage.

In this context, the Court clarified that the protection of well-known trademarks is not limited to identical or similar goods and services, and that, depending on the circumstances of the case, such protection may extend to dissimilar goods and services. In particular, the likelihood that consumers may perceive the applied-for mark as part of the claimant's series of trademarks or assume an economic link between the parties was considered sufficient to justify extended protection.

As a result, the Court of Cassation held that the risks set out under Article 6/5 of the IPC, namely unfair advantage, reputational harm, and dilution, could materialize in the present case, and therefore found the dismissal of the action to be unlawful, overturning the decision.

This decision demonstrates that the scope of protection of well-known trademarks may, depending on the specific circumstances, expand in line with the level of recognition of the mark and consumer perception, and may provide effective protection even across different sectors.

E. CONCLUSION

Under Turkish trademark law, well-known trademarks benefit from an extended protection regime that goes beyond the traditional likelihood of confusion and aims to safeguard the reputation and distinctive character of the mark. However, the case law of the Court of Cassation makes it clear that such protection is neither absolute nor unlimited and must be determined based on the level of recognition of the mark, the filing date, and the existence of concrete risks.

In this context, the demonstration of risks such as unfair advantage, reputational harm, and dilution in the specific case is decisive. Where the relevant conditions are met, this regime may give rise to a dynamic scope of protection extending even to different goods and services.

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.