Yasemin Aktas discusses a ground-breaking decision in Turkey, now finalised, which sheds light on the Turkish Patent and Trademark Office’s (TPTO) broadening of trade name protection to cover identical trade mark applications for different goods/services.
Company names are important marketing devices and receive significant investment. In Turkey, trade names registered before the Turkish Chambers of Commerce can be protected against later dated identical and/or similar third-party trademark applications, registrations or use.
As a member of the Paris Convention, Turkey has also implemented the principles of Article 8 and grants protection to trade names registered in members of the Paris Convention in Turkey without the need for filing or registration, whether or not they form part of a trade mark.
Trade names in Turkey
Protection of trade names in Turkey is implemented under the following regulations:
- Article 6/6 of the Turkish Intellectual Property Code no. 6769 (the IP Code), which clearly indicates that an application for registration of a trade mark shall be refused upon the opposition of the right holder if it consists of a trade name of another.
- Article 6/3 of the IP Code, which reads that, if a right to a non-registered trade mark (or another sign used during trade) was acquired prior to the date of application, the trade mark application shall be refused upon opposition of the proprietor of that prior sign. Trade names are included under “another sign” and get protection based on this article.
- Article 55 of the Turkish Commercial Code no 6102, which requires that all necessary measures are taken to prevent confusion with someone else’s business products or activities.
Scope of protection
Trade name protection in Turkey is usually limited to the company’s activities as recorded within the trade name registry. In other words, if the company is involved in the fashion industry, its trade name protection against similar marks is limited to identical or similar goods/services in the fashion sector.
Some companies may be active in fewer areas than are listed in the trade name registries. That has led the TPTO and Turkish IP courts to discuss whether to look to the scope of a company’s existing activities rather than the trade name registry records to determine the scope of trade name protection.
Discussions that may narrow the scope of trade name protection from activities recorded on the trade name registry to the scope of existing activities are ongoing.
In the meantime, however, the TPTO has issued a ground-breaking decision broadening the scope of company name protection against identical marks to different goods and services.
The opponent, the largest independent European manufacturer of sealants, adhesives and polyurethane foam, has been actively using and has registered its trade mark in Turkey for many years (in classes 1, 2, 17 and 19).
The opponent’s trade mark has a strong distinctiveness owing to its creation by the opponent and it not having any meaning in any languages. The opponent sought the refusal of a local application for an identical mark in classes 16 and 35, including all sub-classes in the related classes.
In this case, only “retail sale of the goods in classes 1, 2 and 17” within the opposed mark were similar to the scope of the opponent’s registered marks. The opponent claimed broader protection for different goods/services based on its reputation in Turkey (and a company name registration in Belgium for the same term).
It also claimed that the applicant could not have chosen an identical term without being aware of the opponent and its strongly distinctive mark. It therefore asked for total refusal of the conflicting application due to bad faith.
The Trade Mark Directorate of the TPTO rejected the first opposition. On appeal before the Re-examination and Evaluation Board of the TPTO, however, the opposed application was entirely rejected (decision no. 2021-M-8332 dated 23 November 2021).
As expected, the Board’s refusal regarding the similar services was based on the opponent’s registrations.
However, when considering the different goods and services, the Board issued a ground-breaking decision and based its refusal on the opponent’s company name registration in Belgium.
It rejected the opposed mark for the goods/services which had not been in the scope of the opposing company’s existing activities or the activities for which its company name is registered in Belgium. The applicant did not challenge the Board’s decision, and it is now finalised.
This decision is important because it reveals that the PTO interprets company name protection broadly. Where possible, then, company name protection must always be sought even against trade marks for different goods/services.
Yasemin Aktas of OFO VENTURA in Istanbul is a member of the MARQUES Disputes Resolution Team