Mutlu Yıldırım Köse has been with the firm since 2006 and a partner since 2017. Mutlu is both a lawyer and trademark and patent attorney specializing in intellectual property practice. Her IP practice focuses on trademarks, designs and copyrights.She has been involved in numerous projects on all fields of IP. Her involvement includes both contentious and non-contentious matters in relation to trademarks, copyrights, designs, patents, domain names and unfair competition. She has an extensive litigation experience, counselled various domestic and foreign clients regarding their IP strategies, legal disputes, licensing and settlement agreements.She also works in IP prosecution where supervises and drafts oppositions and appeals regarding trademark and design applications before the Turkish patent and trademark office.She represents foreign, multinational and Turkish clients from numerous business areas including electronics, fashion, cosmetics, textile, entertainment, hotel and tourism, media and entertainment, pharmaceuticals, radio and TV broadcasting, telecoms on all aspects of intellectual property and regulatory matters. Practice Areas &amp; Work DepartmentIntellectual PropertyTrademarks and DesignsCopyrightsIP Prosecution LanguagesEnglishTurkish MembershipsAssociation Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)The Association of European Trade Mark Owners (MARQUES), Anti-Counterfeiting and Parallel Trade TeamThe Chartered Institute of Trade Mark Attorneys (CITMA)

Gün + Partners was founded in 1986 and is one of the largest law firms in Turkey with 13 partners and over 70 lawyers. The firm is based in Istanbul and provides transactional, advisory, and dispute management services to local and international companies throughout Turkey and assists clients worldwide through its established network of correspondents and contacts.The firm's core areas of expertise are corporate and commercial, dispute management, and intellectual property. It represents clients in numerous industry sectors with a particular focus on life sciences, insurance and reinsurance, energy, construction and real estate, logistics, technology, media and telecoms, automotive, FMCG, chemicals and the defence industries.

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&lt;ul style="list-style-type: square;">&lt;li style="margin-left: 20px; text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">Cumulative protection is no longer available in light of a recent Court of Cassation decision&lt;/span>&lt;/li>&lt;li style="margin-left: 20px; text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">Trademarks are protected under the IP Code, but “name[s], title[s] or trademark[s]” are not covered by the unfair competition provisions under the new Commercial Code&lt;/span>&lt;/li>&lt;li style="margin-left: 20px; text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The decision will have a serious impact on pending cases&lt;/span>&lt;/li>&lt;/ul>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">In a recent decision that challenges longstanding precedents, the Court of Cassation has ruled that, in cases where trademark infringement has been found, it is no longer possible to accept that the same infringing act also creates unfair competition.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;strong>Background&lt;/strong>&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">In a civil court action involving pharmaceutical companies, the plaintiff argued that the defendant used a mark that was confusingly similar to its registered trademarks for the same or similar goods in Class 5. The plaintiff requested:&lt;/span>&lt;/p>&lt;ul style="list-style-type: square;">&lt;li style="margin-left: 20px; text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">a determination of trademark infringement and unfair competition;&lt;/span>&lt;/li>&lt;li style="margin-left: 20px; text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">the prevention and cessation of the defendant’s infringing use; and&lt;/span>&lt;/li>&lt;li style="margin-left: 20px; text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">a preliminary injunction order to prevent the defendant from using the infringing mark until the finalisation of the case.&lt;/span>&lt;/li>&lt;/ul>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The first-instance court accepted the plaintiff’s requests and issued a preliminary injunction order at the beginning of the case to prevent the defendant’s infringing use. The court then decided to uphold the trademark infringement claims, but dismissed the unfair competition claims on the grounds that the plaintiff should not benefit from the protection afforded by the unfair competition provisions in addition to that afforded by the trademark infringement provisions.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">Both parties appealed the decision before the Regional Court of Appeals. The Regional Court of Appeals decided to accept the plaintiff’s appeal on the ground that the defendant’s acts created unfair competition, because the defendant continued to use the infringing mark despite the refusal of its application for registration of that mark by the Turkish Patent and Trademark Office. The refusal was based on the ground that the defendant’s trademark application was similar to the plaintiff’s registered trademarks to the extent that it created a likelihood of confusion, and was incompatible with the good-faith principle under the Turkish Commercial Code. The defendant appealed to the Court of Cassation.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;strong>Court of Cassation Decision&lt;/strong>&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;span style="font-size: 14px;">In a decision dated 14 March 2022 (No 2019/5189 E 2022/1852 K), the Court of Cassation overruled the decision of the Regional Court of Appeals on the ground that, as trademarks are protected under the Intellectual Property Code (No 6769) (and the former Decree Law No 556 on the Protection of Trademarks), the trademark infringement acts were protected cumulatively under the relevant articles of the Commercial Code No 6762; the relevant article of the Commercial Code No 6102 (‘&lt;/span>&lt;strong>new Commercial Code&lt;/strong>&lt;span style="font-size: 14px;">’) states that acts that lead to confusion with the goods, work products, activities or businesses of others creates unfair competition, but does not include the protection of a “name, title or trademark” on purpose, as trademarks are already protected by the trademark infringement provisions of the IP Code. Therefore, it is not necessary to also protect trademarks under the unfair competition provisions under the new Commercial Code.&lt;/span>&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">Following the decision of the Court of Cassation, the case file was returned to the Regional Court of Appeals. The latter decided to comply with the decision of the Court of Cassation, upheld the case only in terms of the trademark infringement claims and dismissed the unfair competition claims. The parties did not appeal the decision and the case was recently finalised.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;strong>Comment&lt;/strong>&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The fact that the Court of Cassation changed its longstanding precedents has come as a surprise to practitioners: the court stated that it is no longer possible to maintain its previous precedents on the cumulative protection afforded by the trademark infringement and unfair competition provisions, as trademarks are protected under the IP Code (and the former Decree Law) and “name[s], title[s] or trademark[s]” are not covered by the scope of the unfair competition provisions under the new Commercial Code. It is noteworthy that the new code entered into force in 2012; however, until recently the Court of Cassation had upheld all decisions where such cumulative protection had been accepted in similar cases. In addition, there has been no recent change in the legislation that would explain the Court of Cassation’s decision.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The finalised decision will have a serious impact on pending cases. Some courts have already started to dismiss unfair competition claims in similar infringement actions on the ground that cumulative protection is no longer available in light of the Court of Cassation’s decision. Arguably, this decision cannot be considered as a precedent in all cases where trademark infringement and unfair competition claims are brought together, and there needs to be a distinction between these cases - even though the Court of Cassation did not make one in its reasoning.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">For instance, if there is infringing use of a registered trademark on a product, but the product packaging is not similar to the rights owner’s products, then the infringing use should be prevented under the IP Code. It is thus sufficient to bring only trademark infringement claims; otherwise, the courts will likely dismiss the unfair competition claims in light of the Court of Cassation’s recent decision.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">However, in cases where the defendant is using a similar trade dress, or discrediting or making false statements/publications about the plaintiff or its products, activities or business, the protection afforded by the unfair competition provisions should still be available, in addition to that afforded by the trademark infringement provisions, because such acts would fall within the scope of the unfair competition provisions under the Commercial Code.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">In light of the above, before initiating a civil court action based on trademark infringement and unfair competition, the possible existence of additional factor(s) that may be considered as acts of unfair competition which do not fall within the scope of the IP Code should be assessed carefully.&lt;/span>&lt;/p>&lt;hr>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;em>First published by WTR in 17.03.2023.&lt;/em>&lt;/span>&lt;/p>

In a recent decision that challenges longstanding precedents, the Court of Cassation has ruled that, in cases where trademark infringement has been found, it is no longer possible to accept that the same infringing act also creates unfair competition.

Lawyers Mutlu Yıldırım Köse

Mutlu Yıldırım Köse

Court of Cassation Overturns Longstanding Precedents on Cumulative Protection Afforded by Trademark Infringement and Unfair Competition Provisions