Trademark Protection in Turkey

Today, one of the most important success factors for companies is the brand. In the new economic order where digital marketing methods dominate the market, brand is among the key indicators of competitiveness. In global marketplaces where the same or similar goods and services are offered by different companies, your brand acts as a bridge between the company and customers, distinguishing your company's goods and services from those of your competitors and thus ensuring that you are preferred. Brand value is based on the value that customers attribute to a trademark and represents the financial value and strength of your company relative to competing trademarks. For this reason, trademark registration and protection not only prevent unfair use of your trademark, but also protects the financial value of your company.

In Turkey, the provisions regarding the registration and protection of trademarks are regulated by the Turkish Industrial Property Code No. 6769.

A trademark is basically used to identify the goods or services of a company. These can be, for example, words, letters, numbers, pictures, but also colors, holograms, multimedia signs and sounds. In essence, a trademark should make it possible to distinguish the goods or services of one company from the goods or services of other companies. Therefore, a trademark, sought to be registered in the Turkish trademark registry, must be able to be represented in the registry in such a way that the subject matter of the protection enjoyed by the trademark owner can be clearly and unambiguously understood. Only those trademarks that enable the goods or services of one company to be distinguished from the goods or services of other companies are eligible for registration in the trademark registry.

Under the Turkish Industrial Property Code No. 6769, trademark protection starts to take effect from the date the trademark owner applies for registration in the Turkish trademark registry, provided that the trademark is found to be in compliance with the relevant legislation by the Turkish Patent and Trademark Office and registered in the Turkish trademark registry. Obtaining trademark protection gives the trademark owner the right to use the trademark exclusively in the registered class of goods and/or services, as well as the right to demand legal sanctions in case of an infringement. Thus, a registered trademark not only protects a company from loss of sales, but also ensures the protection of the company's image, reputation, and financial value.

The Code No. 6769 aims to protect the rights of the first applicant upon registration in the trademark registry. The acts considered as trademark infringement are listed in the law. The use of the trademark without the permission of the trademark owner, imitation of the trademark by using an indistinguishably similar trademark are among the main acts considered as trademark infringement. In case of violation of the rights provided by the relevant law, the trademark owner may apply to the court for the detection, prevention, and cessation of trademark infringement, as well as compensation for the material and immaterial damages suffered as a result of trademark infringement.

The above-mentioned rights and sanctions that can be imposed in case of trademark infringement cover only those trademarks which are registered in the Turkish trademark registry. If the trademark is not registered in the Turkish trademark registry, the trademark protection under the Turkish Industrial Property Code cannot be utilized. In this case, the provisions of the Turkish Commercial Code on unfair competition may be considered as a means of protection. Unfair competition refers to behaviors contrary to the rules of honesty and law in commercial life. As a result of these fraudulent or other unfair behaviors, the party who abuses its right to compete, causes damage to others. In such a case, the trademark owner must first prove to the court that he is the real owner of the trademark in question and then prove the existence of unfair competition in accordance with the relevant unfair competition provisions, if his trademark is not registered in the Turkish trademark registry. If the court determines that the applicant is the real owner of the trademark and that the action against him is subject to unfair competition, the court may order the cessation of the misleading commercial practice, the correction of false and misleading statements, the destruction of the means and goods causing unfair competition, and compensation.

The answer to the questions of which law will be utilized in case of trademark infringement and who bears the burden of proof depends on whether the trademark is registered in the Turkish trademark registry or not.

Trademark registration applications in Turkey are filed with the Turkish Patent and Trademark Office. Before filing an application, it is advisable to conduct a trademark search in terms of the words used for the trademark and the classes of goods (Nice classification). This preliminary search prevents the applicant from wasting time and money. If the trademark in question has not yet been registered in the relevant classes, the trademark owner may apply to the Turkish Patent and Trademark Office for registration in one or more classes of goods and/or services. The right to register a trademark belongs to the trademark owner who has the exclusive right to use the trademark.

The Turkish Patent and Trademark Office examines the application in terms of form, similarity and trademark qualifications. If there are no absolute grounds for refusal, it accepts the application and publishes the relevant trademark in the Official Trademark Bulletin and opens it to the opposition by third parties. Third parties may object to the registration of the trademark within two months following the publication of the registration in the Official Trademark Bulletin, citing the existence of both absolute and relative grounds for refusal. If there is no objection, the trademark is published in the register and becomes a registered trademark. If the trademark is successfully registered in the Turkish trademark registry, it provides protection to the right holder for 10 years. The registered trademark can be renewed every ten years, provided that an application is filed before the expiry of the registration period.

A registered trademark provides trademark protection to the right holder only in the country where it is registered.  A European Union trademark (EU trademark) is a type of trademark that is valid in all member states of the European Union. Since Turkey is not a member of the European Union, an EU trademark cannot benefit from trademark protection in Turkey.

Generally, if the trademark owner wants the trademark to be protected in other countries, they should apply separately to the registry of each country. However, with the transition to the Madrid System, this situation has been facilitated and it has become possible to protect the trademark in multiple countries with a single application. International trademark registration is regulated by the Madrid Agreement and the Madrid Protocol. The international registration and subsequent management of the trademark takes place at the World Intellectual Property Organization (WIPO) in Geneva, which keeps a register of international trademarks. It is mandatory to have a valid trademark application or a registered trademark with the relevant national trademark office before applying for international trademark registration. Turkey became a party to the Madrid System with the Madrid Protocol as of January 1, 1999. In this way, it has become possible for the trademark owner to request trademark registration in all countries party to the Madrid System with a single application from Turkey.

Trademark owners can benefit from the Madrid system if they are a citizen of a Madrid Protocol member country, reside in this country or have a company in this country. Turkey is a party to the Madrid Protocol. As a result, an application for international trademark registration for trademarks registered or applied for in the Turkish trademark registry must be filed with the Turkish Patent and Trademark Office. After the application is filed, the Turkish Patent and Trademark Office first examines the formal requirements for international trademark registration and, in particular, the compatibility of the international trademark registration application with the basic trademark in Turkey. International trademark applications cannot exceed the scope of the main registration or application in the originating registry. The application must clearly indicate the countries in which protection of the trademark is sought. A fee is paid to both the Turkish Patent and Trademark Office and WIPO for the application. Application fees vary depending on criteria such as the number of classes covered by the application and the number of countries covered by the application. The Turkish Patent and Trademark Office formally examines the application and forwards it to WIPO if it finds it appropriate. WIPO officially examines the application and if it determines that the application is appropriate and correct, it registers the application in the international register and publishes it in the WIPO Gazette. It then notifies the offices of the contracting states where trademark protection is sought.

The publication of a trademark in the WIPO Gazette does not mean that the trademark has been granted international trademark protection in the contracting countries where trademark protection is sought. The examination of the protectability of international trademarks takes place independently in the countries where registration is requested. These countries have the right to refuse protection under their national laws within one year (or in some cases 18 months) of notification by WIPO. The rejection of an application in one country does not affect its validity in other countries. If no notification of refusal of protection is made within the said period or if protection is declared granted, the decision is entered by WIPO in the international register and the international trademark owner thereby enjoys all the rights granted to the national trademark owner in the contracting countries where his application has been accepted.

Every trademark, registered in the international register, enjoys the trademark protection of the countries indicated in the register for a period of 10 years from the date of registration. A renewal application must be filed with WIPO before the expiry of this period for continued protection. If the period is missed, a renewal application can also be filed within six months of the expiry of the period by paying an additional fee.

A trademark enables a good or service to be recognized nationally and/or internationally and distinguished from its competitors. Trademark gains a legal ground with registration and provides legal assurance to the trademark owner. Trademark protection gives the trademark owner a distinct competitive advantage over its competitors. 

In Turkey, trademark protection is possible in two ways: