PROTECTION OF UNREGISTERED TRADEMARKS
Authors: Hatice Ekici Tağa, Sümeyye Uçar, Bensu Özdemir
The trademark is the sign which enables the goods or services of a business to be distinguished from the goods or services of other businesses. Article 7 of the Industrial Property Law (“IP Law”) explains the scope of the rights arising from trademark registration and under this article, the legal protection of the trademark is gained through registration. Therefore, as a rule, IP Law ensures the protection of only registered trademarks. While the registration of a trademark is obligatory in order to benefit from the legal protection provided in IP Law, registration is not obligatory for signs such as words, shapes, colors to be used to distinguish the business’ goods/or services from other businesses, to be accepted as a trademark. However, in this case, how to protect an unregistered trademark is an issue for discussion.
The two important legislations for the protection of unregistered trademarks in Turkish Law are the IP Law and the Turkish Commercial Code (“TCC”). Although the protection provided in the IP Law for unregistered trademarks is limited, it mainly aims the protection of well-known trademarks. Also, certain conditions must be fulfilled in order to provide this protection under the IP Law. In this context, Article 6/3 of the IP Law specifies that if a trademark has been used despite being unregistered and has become recognizable, it is considered that a right on this mark has been acquired. Real right ownership provides superior and prior right to registration which has an explanatory affect. In other words, a person who has not fulfilled the registration procedure despite using the trademark shall have the right to object to the Turkish Patent and Trademark Office (“Office”), when the same or similar trademark is requested to be registered by another person.
At this point, it is necessary to examine the determination of “real right ownership”. Primarily, evidence showing the real right ownership of the objector should be submitted to the Office. In these evidences, it will be evaluated whether the real right owner has started to use the trademark before the third party's application or priority date. Although the Supreme Court does not require the use to take place in Turkey in its old-dated decisions, this case-law has changed. After 2000s, the Supreme Court has referred to the principle of "nationality" and sought the use of the trademark in Turkey when the real right ownership is determined.
Another debate is whether the trademark in question has a recognition or not. Recognition means that the trademark has reached a certain level of awareness/recognition in the country, even if it is not a well-known trademark. The Supreme Court stated this issue as follows: "In accordance with the principle of real right ownership, if a prior right has been obtained on the sign as a result of intense and continually use of the sign subject to the trademark in the country, before the trademark application and in terms of goods and services within the scope of registration, the priority is given to the person who has the real right for trademark. However, the use on the sign in question must have been used in a wider geography than the domestic and local, without conflict, interruption and intensively. The use of the sign abroad does not give any priority right to the person using the sign in the country. Also, the fact that it is marketed to Republic of Turkey citizens in abroad and that the foreign website can be accessed by buyers from Turkey will not grant any priority right to the owner of the mark in the country.” (11. HD., 2017/3943 E., 2019/1154 K., 13.02.2019 T.)
Furthermore, Supreme Court specifies that “4 low-cost invoices submitted by the respondent, one each for 2008 and 2009 and two for 2010, with the explanation of "Starlock Push on Fastener" stating selling to a company in Turkey, are not sufficient to provide a serious use of the trademark and distinguishing the trademark. Also, multiple entries from Turkey to the respondent’s foreign website cannot be counted as using the sign in the country and giving the sign distinctiveness.” (11. HD., 2019/157 E., 2020/3024 K., 22.06.2020 T.) For this reason, it is necessary to attach all kinds of information and documents that will show that the relevant sign is used continuously, regularly, and intensively in Turkey, and in particular information and documents that are objective, with a certain source and date.
In addition to above, Article 6 bis of the Paris Convention provides protection to well-known trademarks, and Article 6/4 of the IP Law has been regulated parallelly. Well-known trademarks are known, generally accepted, and adopted by the target audience both in Turkey and in other countries, especially in the country of origin. Accordingly, the owner of a well-known trademark has the right to object to the registration of the trademark by others since the right has been acquired by using the trademark before. Important issue with this is that since a trademark could lose the quality of being well-known as easily as it gains this quality, the well-known trademark evaluation for the earlier dated trademark will be made for the date of application of later dated trademark.
Another issue that needs to be examined is bad faith. Not only registered trademarks but also unregistered trademarks benefit from the principle of not protecting bad faith. Not protecting bad faith in any application and registration is accepted as a basic principle. In the objection based on the allegation of bad faith, it will be determined whether there is a malicious registration by considering the legal protection of the previous trademark and "the reputation of the trademark" as of the registration application date. At the same time, when the evaluation for bad faith is being made, the following issues shall be taken into consideration; if the primary and secondary elements of the trademark has been registered identically, whether the trademarks are identical, how creative and distinctive the trademark is, if it is reasonable for the trademark to be registered coincidentally without being aware of the other trademark, if the registration was made to benefit from other trademarks well-knownness, distinctiveness and commercial power. (Uğur Çolak, Turkish Trademark Law, 4th Addition, Pg. 945.) The important issue here is to prove the bad faith.
Supreme Court held following assessment for the bad faith, “The principle of the nationality applies to trademark protection. Registration of the same trade name registered abroad as a trademark in Turkey will not provide the right to the owner of the trade name, nor it alone constitute a sign of bad faith in trademark registration.” (11. HD., 2019/4443 E., 2020/2514 K., 01.06.2020 T.) Also, Supreme Court specifies that “According to the general acceptance in Trademark Law, applications, and registrations for the purpose of making unfair use of someone else's trademark by misusing the trademark protection provided by registration, or for the purpose of making backup, trademark trade or blackmail without actually being used, are considered malicious. The existence of bad faith should be determined by considering the characteristics of each concrete case.” (HGK, 2008/501 E., 2008/507 K., 16.07.2008 T.) Although it is not mandatory for the trademark to be well-known in Turkey for the detection of bad faith, registration abroad is not sufficient either. Supreme Court evaluate this issue as following “As a rule, there is no obstacle to the registration of the same word in the name of someone in one country and in the name of another in another country. In the concrete case, it is understood that at the stage of objection to the trademark application by the plaintiff, no other evidence was presented as evidence for the claim of bad faith registration, apart from the similarity of the trademarks and the internet domain name information. The possibility that the respondent company may know that the trademark applied for is registered on behalf of others in another country, without providing any evidence of bad faith such as harming others or preventing the trade of others, cannot be considered as a malicious trademark application, not for the purpose of using the trademark.” (11. HD., 2018/4210 E., 2019/5769 K., 24.09.2019 T.) For these reasons, it is necessary to present all information and documents that may show the application owner’s purpose to unfairly benefit from the real right owner’s trademark. It is also possible for the real right owner to cancel the malicious registration based on the non-protection of bad faith principle.
The protection of the unregistered trademark is mainly within the framework of the unfair competition provisions of the TCC. Article 54 of the TCC defines unfair competition, and the following articles regulate liability arising from unfair competition. Unregistered trademark owners who cannot benefit from the abovementioned rights regulated in the IP Law or cannot obtain the desired protection despite benefiting from it, shall be able to rely on unfair competition provisions. Within the scope of the TCC, the person who thinks that there is an infringement in relation to the unregistered trademark and the customers who suffer economically have the right to file a lawsuit. It is also possible to request interim injunction in connection with lawsuits. In this context, the person(s) whose customers, credit, professional reputation, commercial activities, or other economic interests are damaged or may face such a danger due to unfair competition; the following legal lawsuits may be filed;
Lawsuit to prevent the unfair competition act;
Lawsuit for restitution, (Restitution of the material situation that is the result of unfair competition, correction of these statements if unfair competition is made with false or misleading statements, and destruction of vehicles and goods that are effective in the unfair competition if it is inevitable to prevent infringement)
Lawsuit for compensation of the damages that result from the unfair competition act
Customers whose economic interests are damaged or who may face such a danger can also make the above claims but cannot demand the destruction of vehicles and goods. As a rule, no fault is sought for the aforementioned lawsuits to be filed. On the other hand, as in the general provisions, in cases of pecuniary and non-pecuniary damages, the person causing the unfair competition must be at fault and the person(s) who is/are the victim of unfair competition must have suffered damage. In addition, if the unfair competition is occurred in the ways listed in the Article 62 of the TCC, the related persons also have criminal responsibilities.
In the trademark law, although providing legal protection to trademarks depends on the rule of application and registration, the provisions that will ensure the protection of unregistered trademarks are included in both the IP Law and the TCC. This way, the owner(s) of the unregistered trademark have the opportunity to prevent the registration of this trademark by another person or to cancel the registration, if there is an existing registration, in case of certain conditions. At the same time, if there is unfair competition, the owner of the unregistered trademark can file a lawsuit within the scope of the unfair competition provisions of the TCC, and they will be able to make demands based on prevention, restitution, and compensation.