Trademark Filing History May Result in Finding of Bad Faith Under Turkish Law

It is widely accepted in the literature[1] and decisions of the Court of Cassation[2] (“CoC”) that an applicant's attempt to create a trademark portfolio by trying to register other well-known trademarks can be sufficient to constitute proof of bad faith. In this context, first instance courts and regional courts of appeals will examine the applicant's other trademark applications and might accept that the registration of the disputed trademark was attempted in bad faith where the trademark applications as a whole establish a pattern of creating a bad faith trademark portfolio.[3]

These principles have been adopted in recent decisions by the 20th Civil Chamber of the Ankara Regional Court of Appeals and the Ankara 2nd Civil IP Court.

• In its decision dated 03.07.2023 and numbered 2021/837 E.(Merits) 2023/771 K.(Decision), the 20th Civil Chamber of the Ankara Regional Court of Appeals held that the phrase comprising the essential element of the plaintiff's trademarks registered on textile products in class 25 and the trade name containing the same phrase are distinctive and genuine, that it does not have a special meaning or use in Turkish, and that it is contrary to the ordinary course of events to think that the defendant chose the same phrase by chance to register for foods and beverages in class 30. In addition, the Court, by taking into account the defendant's obligation to act as a prudent merchant, stated that the examination of the Turkish Patent and Trademark Office registry showed that the applicant had trademark applications for signs of other reputable brands operating in the clothing sector abroad, of which the plaintiff company of the cited court action was one. Such evidence led to determination of the challenged trademark as being registered in bad faith. The Court decided that the applicant did not have a convincing argument as to why the trademark application was made by choosing the same sign as the plaintiff company's genuine trademark, despite the different class. Therefore, it was concluded that the applicant knew of the earlier trademark of the plaintiff, which has a high degree of distinctiveness and was an original creation, and it was decided that the challenged trademark was made for the purpose of "taking unfair advantage of someone else's trademark", which is one of the circumstances of bad faith described in the decision dated 16.7.2008 and numbered 2008/11-501E.(Merits) 2008/507 K.(Decision).[4] of the Court of Cassation General Assembly of Civil Chambers (“General Assembly”).
• Similarly, in the decision of Ankara 2nd Civil IP Court dated 28.09.2023 and numbered 2022/377 E.(Merits) 2023/320 K.(Decision), invalidation of the challenged trademark was claimed by a world-famous tire company because the challenged trademark was identical to a trademark of the claimant tire company. The Court evaluated that the defendant applied for a total number of 127 different trademarks, some of which were identical to well-known trademarks covering same or similar goods, and where one was even identical to another reputed tire brand. The Court found the whole trademark portfolio of the applicant to be in bad faith. The Court stated that there was no sufficient argument by the applicant explaining the reason for trademark applications identical to well-known tire brands and that there was no evidence of the applicant’s business with tires. The Court concluded that such circumstances could amount to the case of "trademark backup" as stated in the decision of the General Assembly. The Court concluded that the applicant registered the challenged trademark in bad faith and ordered the invalidation of the challenged trademark.

The conduct of the applicants, which can be characterized as creating a portfolio by registering the same or similar trademarks as well-known trademarks, is considered an example of bad faith by the CoC in its recent decisions. Considering the above decisions, it is evident that the courts of first instance and the regional courts of appeal adopted a consistent approach in line with the decisions of the CoC, acknowledging the bad faith of the applicants who try to establish a trademark portfolio by copying well-known or highly distinctive trademarks of others. The above approach makes a finding of bad faith possible where an applicant seeks to register a large number of well-known or highly distinctive trademarks, originally belonging to third parties.

[1] Uğur Çolak, Türk Marka Hukuku, 5th Edition, p. 1218

[2] Court of Cassation 11th H.D. 04.02.2015 T, 2014/15654 E. 2015/1254 K: "It is not possible for the defendant to have registered 28 trademarks on the grounds that it will use all of them, considering the fact that many of these registrations are similar to the logos of world-famous trademarks such as ... in the sector, it reveals the defendant's bad faith..."

[3] Ankara 3rd Civil IP Court decision dated 19.02.2019 numbered 2018/217E. 2019/36 K. : "In addition, when the other trademarks, that the defendant attempted to register on behalf of himself and the company in which he is a partner, copied famous trademarks operating in the AUTOMOTIVE sector, when these circumstances are evaluated as a whole, it cannot be considered that the trademark registration ... whose invalidity is requested ... was filed without being aware of the plaintiff's trademark..."

[4] “According to the generally accepted understanding in Trademark Law, applications and registrations aimed at taking unfair advantage of someone else's trademark by misusing the trademark protection provided through registration in a manner contrary to its purpose, or applications and registrations that are not actually used but are intended for backup, trademark trading or blackmail are considered to be bad faith."

* First published by Gün + Partners.