Protection of Well-Known Marks

Although there is no clear definition of a trademark in the Industrial Property Law (IPL), Article 4 of the IPL regulates the signs that may be considered trademarks:

''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.''

In accordance with this provision, a trademark can be defined as any sign that distinguishes one enterprise's goods and services from another enterprise's goods and services[1]. Consistent with this definition, it has been stated in the doctrine that the trademark individualizes certain goods and services by saving them from being anonymous, thus enabling consumers to distinguish the goods and services they wish to purchase from the goods and services of other enterprises[2].

This provision and the definitions based on it also point us to the elements of a trademark, and the elements of a trademark also point to its functions. Accordingly, it can be said that a trademark has three elements as "sign", "distinctiveness", "clarity and certainty", and four functions "distinction", "indication of origin", "advertisement", and "guarantee"[3]. Among the aforementioned functions, the indication of origin is significant concerning well-known marks since these marks directly indicate an enterprise rather than a good or service[4].

As with trademarks, there is no direct definition of a well-known mark in either domestic or international law. Nevertheless, there have been various opinions in the doctrine regarding the well-known mark, and WIPO has attempted to classify the features of well-known marks. Considering the arguments in domestic law, according to Arkan, in order to be considered a well-known mark, a trademark that has become a symbol of quality with high advertising power must be known not only by the goods or services bearing that trademark but also by individuals outside this circle who are not related to those goods or services[5].

Meanwhile, Kayıhan defined a well-known mark as follows[6] :

"Whether registered in Turkey or not, trademarks that are closely associated with a real or legal person, guarantee, quality, strong advertising, have a widespread marketing and distribution network, are known not only in the sector to which the trademark is addressed, but also in other sectors, and are reflexively linked by people in the same environment, regardless of geographical boundaries, culture and age."

The WIPO Joint Recommendation serves as a fundamental criterion in the international arena. In the second article of this document, the characteristics of well-known marks are classified as follows[7]:

• 1. The degree of knowledge or recognition of the mark in the relevant sector of the public;
• 2. The duration, extent and geographical area of any use of the mark;
• 3. The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
• 4. The duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
• 5. The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well-known by competent authorities;
• 6. The value associated with the mark.

When these criteria are examined, it is clear that they change over time for each brand and should be examined in an up-to-date manner. In a precedential decision[8], the Court of Cassation stated that the well-known mark should be re-evaluated in each specific case and that a trademark in the well-known mark registry of the TÜRKPATENT is not sufficient to be well-known and emphasized that the TÜRKPATENT is not authorized by law to establish a well-known mark registry. According to an opinion in the literature, although the TÜRKPATENT is not authorized by the Court of Cassation to establish a well-known mark registry, it is crucial in terms of public interest to keep this registry.

Well-known marks are protected according to Article 6 bis of the Paris Convention: 

''The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark or an imitation liable to create confusion therewith.''

Here, there is an unfair gain due to the level of recognition of a trademark that has been registered or applied for on the previous date and the rejection of this application upon the objection of the well-known mark due to damage to the reputation of the well-known mark or confusion in the customer perspective. Likewise, this objection may be rejected in the presence of a valid reason within the scope of Article 5 of the IPL since recognition may differ in each case.

In domestic law, Article 6/f.4 of the IPL directly refers to the relevant article of the Paris Convention. According to this provision, trademark applications which are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention shall be refused upon opposition in respect of the identical and similar goods or services. 

The principle of territoriality is accepted due to the nature of trademark law. The protection of well-known marks is an exception to the territoriality principle. A trademark registered as a well-known mark in one of the states party to the Paris Convention can object to a later-dated trademark even if it is not registered in that country. This mentality shows the importance of the well-known mark and the fact that there is an effective effort in the international arena to protect well-known marks.

Bibliography

Cahit Suluk/ Rauf Karasu/ Temel Nal, Fikri Mülkiyet Hukuku, 5th Edition, Ankara, Seçkin Yayıncılık, 2021, p. 151

Hamdi Yasaman, Tanınmış Marka, Prof. Dr. Kemal Oğuzman’a Armağan, Galatasaray ÜHFD, V.I, I.1-2002, p.308.

https://www.wipo.int/edocs/pubdocs/en/wipo_pub_833-accessible1.pdf

Sabih Arkan, Marka Hukuku V.I, 1st Edition, Ankara, 1997

Şaban Kayıhan, Yargıtay Kararları Işığında Tanınmış Marka, AÜEHFD, V.VII, I.1-2, June 2003, p.426. 

Ünal Tekinalp, Fikri Mülkiyet Hukuku, 5th Edition, İstanbul, Vedat Kitapçılık, 2012, p.22.

Yargıtay Hukuk Genel Kurulu, D. 2.04.2014, 2013/656 P., 2014/427 S.