Turkish Law Blog
The Code No.6769 and the Invalidation of a Trademark Through Bad Faith
Trademarks, as a source of visibility and reputation, become a strategic asset to companies competing on the basis of product differentiation and customer loyalty (1). While patents and copyrights can be described as governmental grants which give their inventor the right to exclusively use, make, or sell a product for a pre-determined time period, trademarks were merely perceived as indicators of the commercial origin of goods (2). The primary economic function of trademarks is not – as with patents – to give firms incentives to invest in research and development, but to signal quality and goodwill, to enhance efficiency by reducing consumer search costs, and to support firm branding efforts (3).
In terms of the importance of the trademarks within the business world, it is necessary to provide wide-reaching legal protection to trademarks which are registered in accordance with the law. In Turkey, the trademarks are protected by the Industrial Property Code No.6769 which is promulgated on the 10th of January, 2017.
The first article of the Code constitutes the purpose and the scope and it states that the Code aims to protect the rights relating to trademark, geographical signs, design, patent, utility model and traditional product names and thus to contribute to technological, economic and social progress. The Legislator has aimed by preparing Code No.6769 to harmonize the Turkish intellectual property system with the EU system, to eliminate deficiencies, to solve the problems experienced in practice and therefore create more efficient protection on the intellectual properties in Turkey.
2. Novelties of the Code No.6769 on Trademarks
The Article 4 of the Code states that trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor (4).
By the above-mentioned article, the definition of the trademarks has changed and widened. The Code stated that each of type of mark shall be registered as a trademark on condition that the mark can be shown on the registry in order to provide clear and precise protection; instead of the charter on viewability with drawing at registration. Thus the flexible approach in EU law has been adopted and so it states that non-traditional marks may be registered as a trademark such as color, sound, hologram, position, and movement marks.
The other important innovation in the Code is that the confirmation letter has been entered into force. In this way, the permission of the previous proprietor enables the registration of the same or similar trademarks. So, one trademark can be registered on behalf of two people or company as long as parties agree on that.
According to the previous regulations on trademarks, invalidation or cancellation of a registered trademark can only be asserted in the Courts. Via the Code No.6769, invalidity still be brought forward in the courts; but, the cancellation of a trademark is can also be put forward in the Turkish Patent Institute. This is called “administrative cancellation” and it is an important novelty in Turkish legislation. The Turkish Patent Institute may cancel a trademark on conditions prescribed by the Code. However, this radical provision will not enter into force until 2024.
By the Code, the principle of the loss of rights through silence, which came into effect by Court Decisions, has became a legal rule. According to that principle, where a trademark proprietor has acquiesced in the use of a later trademark for a period of five successive years while being aware or should have been aware of this situation, trademark proprietor may not allege his trademark as an invalidation ground unless the registration of the later trademark is in bad faith.
Distinction between causes of cancellation and of invalidation has been made clearly on Article 25 and Article 26 of the Code. The discrimination of these two legal remedies is important because while the cancellation decisions are forward-acting, the invalidation decisions are retroactive.
3. Invalidation of a Trademark due to Bad Faith
The abrogated Decree-Law No 556 on Protection of Trade Marks did not regulate the bad faith as an obstacle to registration. Although the regulations regarding registration with bad faith are in this way, in the doctrine mala fide was considered as a separate reason for invalidity. In advance registration with bad faith is not considered as a reason for invalidity by the Supreme Court. However, with the subsequent decisions, the Supreme Court has accepted the bad faith as a reason for invalidity such as adopted by the doctrine.
By Code No 6769, bad faith has been accepted as a relative ground for invalidity within the Article 6/9. According to that article, trademark applications filed in bad faith shall be refused upon opposition. So, trademark applications filed in bad faith will not be considered invalid by the Authority on its own motion; however, in case of objection of those concerned, the registration of the trademark with bad faith can be prevented. In addition to that, bad faith can also be put forward before competent courts as a ground for invalidity.
With this change, one more step has been taken to catch the EU standards on the protection of trademarks. However, there still is a difference in terms of bad faith. The Article 4/2 of the Directive (EU) 2015/2436 states that a trademark shall be liable to be declared invalid where the application for registration of the trademark was made in bad faith by the applicant (5). By the mentioned article, the bad faith accepted as an absolute ground for invalidity clearly and precisely.
Trademarks are essentially indicators of origin which informs the consumer on the producers of goods and services. They traditionally provide protection within this scope against to confusion caused by identical and similar signs on identical and similar goods and services (6).
In Turkey, protection of trademarks has been amplified by the Code No 6769. The Code is important for Turkey because of many reasons. But the most important one is that the novelties brought by the Code create a harmony with the EU standards and the other related international agreements substantially.
In terms of the principle of honesty, protection of malicious registration is unthinkable and unacceptable. Indeed, the abrogated Decree-Law No 556 on Protection of Trade Marks the registration with bad faith has been regulated as the reason for objection. While malicious registration has not been considered as reason for invalidity by the Decree-Law; it was adopted by the doctrine and judicial bodies as ground for invalidity. In the Industrial Property Law no.6769, malicious registration is clearly regulated as relative ground for invalidity. The only difference related to malicious registration between the Turkish legislation and EU regulation is that the EU considers the bad faith as an absolute ground for invalidity which provides wider protection to the proprietor and its trademark rights.
- Miresi Çela, The importance of Trademarks and a review of empirical studies, European Journal of Sustainable Development (2015), p.125-134
- Borchardt, ‘Are Trademarks an Anti-Trust problem?’(1943) 31(3) Geo. L.J. 245, 245
- Davies & Davies,2011
- The Industrial Property Code No.6769 https://www.mevzuat.gov.tr/MevzuatMetin/1.5.6769.pdf
- Directive (EU) 2015/2436 https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32015L2436&from=EN
- Comparison Of Trademark Laws In European Union And Turkey On Protection Against Dilution Of Trademarks / ŞEKER http://www.ankarabarosu.org.tr/siteler/AnkaraBarReview/tekmakale/2013-1/3.pdf
- Aliye Akgün, Kötü Niyetli Marka Tesciline İlişkin Bir Yargıtay Kararı Üzerine Değerlendirme- https://hukuk.deu.edu.tr/wp-content/uploads/2017/11/17-ALIYE-AKGUN.pdf
- Cahit Suluk, The New Turkish Industrial Property Code https://dergipark.org.tr/tr/download/article-file/520575