Co-Existing Agreements under Turkish Law
Turkish legislation enables the registration of signs with the Turkish Patent and Trademark Office ("TürkPatent"), even if they are identical to or indistinguishably similar to a trademark for identical goods or services or goods and services of the same type, with co-existing agreements and deed of consent.
Deed of Consent
The deed of consent was included to our legal system with the Industrial Property Law No. 6769 ("IP Law") that came into force on January 10, 2017; which was part of the harmonization process with the "European Union Trademark Regulation" numbered 2015/2424 in 2016.
IP Law regulates the deed of consent as an exemption to the Article 5/1(ç), which is one of the absolute grounds for refusal of a trademark application, regulating that signs that are identical or indistinguishably similar to a trademark, which has been registered or applied for registration, for identical goods or services or goods and services of the same type, cannot be registered.
The principles and procedures regarding the deed of consent are regulated under the Regulation on the Implementation of Industrial Property Law ("Regulation"). According to the Regulation, the deed of consent:
Must be prepared as a signed form.
Must be presented to TürkPatent, notarized by a notary public.
Must be submitted separately for each trademark application.
Can be submitted to TürkPatent with the application form or, in the case of an objection against a TürkPatent decision, until a decision is given about the objection.
Must be unconditional.
In addition, the following information must be provided with the deed of consent:
The applicant’s identity and contact information,
If submitted at the application stage, the trademark sample subject to consent; or if submitted at the objection against a TürkPatent decision stage, the application number,
Identity and contact information of the consenting applicants or trademark owners,
Application and registration numbers of previous applications or trademarks subject to consent,
Consented goods or services and their class numbers,
If the deed of consent is signed by an attorney on behalf of the applicant or trademark owner, a notarized or notarized copy of a power of attorney containing the authority to provide consent.
While the deed of consent is one of the practices that ensured harmonization of the IP Law with the European system, it also introduced co-existing agreements to Turkish practice.
Even though co-existence agreements are not regulated in the IP Law or the Regulation, they are recommended because as a result of the principle of freedom of contract, they regulate the procedures and principles regarding the use of trademarks that will continue to co-exist. Although the co-existence agreements are not frequently used in Turkey, they can be found in the decisions of courts, including the Supreme Court, and disputes where there is a co-existence agreement, are examined in accordance with the will of the parties.
One of the most important things regarding co-existence agreements is ensuring that the agreement enables the protection and use of the relevant trademarks in a way that they coexist. In this context, these agreements can determine the trademarks’ are of use, including the styles and ways in which they will be used, the consumer audience they will appeal to, or the distribution channels.
Additionally, to prevent creating confusion for the consumers with the co-existing trademarks’ forms of use; the target consumer audience can be differentiated as well as obligation to provide additional information with the trademarks can be regulated in order to distinguish the trademarks. Otherwise, consumers, who have an interest to protect, may request the invalidity of the trademark within the scope of the IP Law, on the grounds that the trademarks cause confusion.
Therefore, while it is possible for similar trademarks to co-exist with the practices under the Turkish law, developments in both Europe and Turkey show that while protecting the interests of trademark owners, it is essential to prevent consumers from being misled, which is one of the basic principles of the trademark legislation.
Authors: Hatice Ekici Tağa, Sümeyye Uçar, Bensu Özdemir, Göksu Tuğrul