Different interpretations on indications of the existence of bad faith make it harder to tackle bad faith trade mark filings in Turkey, as Yasemin Aktas explains.

In Turkey, bad faith is a very strong argument. If it is accepted, according to Article 6/9 of the Intellectual Property Code no. 6769 (the IP Code), the Turkish Trademark and Patent Office (PTO) or courts must totally refuse/invalidate the conflicting application/registration.

Since the IP Code does not bring any clarification on the indications of existence of bad faith, its determination remains a matter of interpretation for the PTO and the courts. This has led to the issuance of contradictory decisions in very similar and even identical disputes.  

Recent decisions in the same dispute

In a recent case, the brand owner was the largest independent US manufacturer of high-end gear for professional audio, car stereo, marine audio, and home theatre. It had registered its main brands comprising a word mark and distinctive logo in class 9 in the US as well as in some other jurisdictions, but not in Turkey. The brand owner has also been using the updated version of its logo in a different stylisation.  

The brand owner noticed a local third-party registration before the PTO for a mark consisting of its word mark and distinctive logo identically and covering all sub-classes in class 9. The local registrant was in the same sector and had other trade mark filings that were apparent copies of other foreign marks in the audio system sector, which had not been registered in Turkey. Moreover, the local registrant also owned an application in classes 12 and 35 for the brand owner’s updated logo. This application was still in the opposition term.  

The US brand owner contacted the local registrant to try to solve the matter amicably. At the beginning, the registrant said that they never used the conflicting marks and agreed to fulfil all requests in writing, but then they changed their approach and said that they could not simply withdraw their rights without payment.

The US brand owner filed an invalidation action against the registration and an opposition against the pending application for total invalidation/refusal of them.

Given these facts, the strongest basis for both actions was bad faith based on the following arguments.

1. The identity of the registered mark with the brand owner’s word mark and distinctive logo and the identity of the pending application with the brand owner’s updated logo (accepted as an indication of bad faith in the precedent of 11^th Chamber of Supreme Courts, 13.10.2011 dated and 2009/12370E./ 2011/12969K. numbered).
2. The registrant’s other trade mark filings copied from the other unregistered foreign marks in the same sector (accepted as an indication of bad faith in the precedent of the 11^th Chamber of Supreme Courts, 24.10.2011 dated and 2011/12336E./ 2011/14360K.numbered).
3. The fact that the registrant has not used its registered mark as of its registration (for almost 4.5 years) and also requested payment to transfer their filings (accepted as an indication of bad faith in the decision of Supreme Court Assembly of Civil Chambers 16.07.2008dated and 2008/11501E./ 2008/507K numbered).

All these arguments were accepted as an indication of bad faith in the Supreme Court’s precedents.

The local company defended their filings in both actions by saying that it was a coincidence that they applied for registration of the subject marks. However, they did not respond any other claims.

The IP Court sent the invalidation file to an official expert panel for examination of the parties’ claims and the panel advised that the registrant’s marks consisting of the plaintiff’s word mark and distinctive logo and even the updated logo cannot be the result of a “coincidence” and suggested that the registration should be deemed to be a bad-faith filing.

Meanwhile, the Trademark Directorate of the PTO rejected the opposition against the pending application was rejected by the, but upon the brand owner’s appeal before the Re-examination and Evaluation Board of the TPO, the Board deemed the application as a bad faith filing and decided to entirely reject it by accepting arguments (1) and (3) listed above.  

Despite the expert report and the PTO decision, the IP Court of first instance decided to refuse the bad faith claims on the ground that “identity/similarity between the registered mark and the US owner’s unregistered mark is not sufficient for acceptance of bad faith arguments by itself.”

The brand owner appealed the First Instance Court’s refusal before the Regional Courts of Justice (the appeal is pending). Meanwhile, the local company did not challenge the Board’s decision, and it is now finalised (decision no. 2022-M-5744 dated 10 May 2022).

The Court decision not only contradicts the PTO decision in the same dispute, but it also contradicts the Supreme Court’s precedents in similar disputes. Likewise, although the Board decision recognises the bad-faith and accepts the arguments (1) and (3), it does not accept argument (2).

Expecting the PTO and the court decisions to always be in parallel would not be realistic, although it is what should happen in an ideal world. However, the contradictions between the above summarised decisions in the same dispute highlight the need for a reasonable level of clarification on indications of existence of bad faith.

The result of pending appeal against the court decision is being awaited with the hope that the Regional Court will bring the needed clarification. 

Yasemin Aktas is a partner of BRANDIT in Turkey and a member of MARQUES