Recent Update on Well-known Trademark Protection in Türkiye

Well-known trademark registry of the Turkish Patent and Trademark Office (“Office”) became a discussion topic after the Turkish Court of Cassation decided in 2020 that the Office has no authority to create and maintain a registry for well-known trademarks. (Turkey well-known trademark registry is again open for debate)

First instance IP courts and regional courts of appeals have adopted this decision immediately and changed their practice, whereas the Office has continued to maintain its registry for recording well-known trademarks.

In one of its decision rendered in 2023 (dated February 1, 2023 and numbered 2023/83 E. 2023/7 K.), which the authors were made aware of recently, the General Assembly of the Court of Cassation ruled that even though the Office created a registry to record the trademarks which are well-known according to its examination, it is not entitled to create such a registry under existing laws and the well-known status of a trademark should be proven in each case as it is not a stable fact.

In addition, the General Assembly ruled that the courts are not entitled to render a decision about determination of well-known status in a way that will constitute a final verdict on the well-known status. It means that the courts could examine and decide whether a trademark is well-known or not as a prior issue only, while deciding on the claims of the claimant that are based on well-known trademark argument. In other words, the courts are not authorised to determine whether a trademark is well-known or not as part of the verdict where their decisions on the claims of the claimant are explained.

The decision of the General Assembly is binding for the courts and the courts are expected to decide in line with this decision in cases where well-known status of the trademark would be decided.

On the other hand, throughout 2024 the Office has not changed its practice, and it is still possible to file an application for determination and recordation of well-known status of a trademark by the Office. Although the Office has announced official fees for such applications also in January 2024, there has not been any change in the legislation as discussed in our previous article. (Debate on well-known Trademark Registry Expected to be Resolved Soon)

While this issue remains unsolved, the Court of Cassation rendered a decision (dated January 25, 2024 and numbered 2022/4067 E. 2024/620 K.) after the decision of General Assembly’s above-mentioned decision where there are references to well-known trademark register of the Office and scope of protection that a well-known trademark recordation provides with regard to goods and services. It seems that the Court of Cassation overlooked the General Assembly’s decision as the date of both decisions are close and the courts shall follow the General Assembly’s guidance in the future cases.

The Office is expected to announce its new official fees for 2025 soon, including the fee for filing an application for determination and recordation of well-known status. Meanwhile, the right holders and practitioners are eager to know whether there is a new regulation that will enter into force to give the Office authority to maintain the well-known trademark registry. This contradictory situation on well-known trademark registry should be resolved with a clear and definite solution.