Violation of trademark rights

Signs used to distinguish the goods or services of a business from the goods or services of other businesses are called trademarks. Trademark right is not a right specific to merchants. Therefore, it is possible for people who are not traders to use the trademark.

Türkiye has become a party to many international agreements that have brought regulations in line with European countries in terms of trademark-related provisions. Previously, trademark-related provisions were regulated by Decree Law No. 556. However, since the Decree Law no longer met the need, the Industrial Property Law No. 6769 came into force on 10.01.2017 and abolished the Decree Law No. 556.

In the Civil Code No. 6769, trademark is defined as "Any sign, including personal names, words, shapes, colors, letters, numbers, sounds and the shape of the goods or their packaging, provided that they enable the goods or services of an enterprise to be distinguished from the goods or services of other enterprises and can be shown in the registry in a way that ensures a clear and precise understanding of the subject of the protection provided to the trademark owner."

As can be understood from the expression of all kinds of signs, the law does not limit the signs that can be trademarked. In addition, it is regulated in the text of the law that abstract signs such as color, sound, taste and smell can be used as trademarks. The law requires the trademark to be distinguishable.

FUNCTIONS OF THE BRAND

A brand is a sign that gives identity to the product or service. Therefore, it can be said that the most important function of the brand is differentiation.

The brand also has a warranty function. People are concerned about the quality of all products, production standards, etc. cannot be expected to know or control the matters. For these reasons, individuals turn to brands they know. This function is the warranty function of the brand.

QUALITY OF TRADEMARK RIGHT

Trademark right is a right that has an economic value. Therefore, it is among the property rights. Trademark right is an industrial property right. It is among the constitutionally guaranteed rights. Trademark right is a superior right that can be asserted against anyone because it is an absolute right.

It may be subject to legal transactions such as trademark transfer, license, guarantee, and lien. It is subject to a 10-year protection period. It can be renewed every 10 years.

In addition, the law has introduced legal and criminal regulations for the protection of trademark rights.

REGISTRATION OF THE BRAND

Trademark right is acquired by registration. According to Article 7 of the SMK, trademark protection is obtained through registration. Registration is made in the registry kept within TURKPATENT and open to everyone. A trademark right owner must have registered in order to benefit from the protection of the trademark right.

The principle of priority applies in the registration of trademark rights. According to Articles 5 and 6 of the SMK, subsequent applications for a sign that has already been applied for will be rejected. Therefore, by applying to the registry, signs that have not yet been registered are also protected.

Exercise of the rights arising from trademark registration belongs to the trademark owner. In case some actions are carried out without the permission of the trademark owner, the trademark owner is given the right to request the prevention of the actions with Article 7 of the Civil Code.

Who Can Own Trademark Rights?

According to Article 3 of the Civil Code;

"a- Citizens of the Republic of Türkiye,

b- Natural or legal persons who have settlements or engage in industrial or commercial activities within the borders of the Republic of Turkey, c- Persons who have the right to apply within the provisions of the Paris Convention or the Agreement Establishing the World Trade Organization dated 15/4/1994,

d- In accordance with the principle of reciprocity, persons who are nationals of states that provide industrial property rights protection to nationals of the Republic of Türkiye benefit from the protection provided by this law.

REASONS FOR REJECTION OF TRADEMARK REGISTRATION

Article 5 of the Civil Code regulates the absolute grounds for rejection, and Article 6 regulates the relative grounds for rejection.

Absolute Reasons for Rejection

Absolute reasons for rejection are regulated in Article 5 of the SMK. In case of the existence of the situations listed in the law, the registration application is rejected. TURKPATENT institution ex officio examines the existence of absolute rejection reasons in the registration application. No objection is required for the review to take place.

According to Article 5 of the SMK;

The following signs are not registered as trademarks:

a) Signs that cannot be trademarks within the scope of Article 4.

b) Signs that do not have any distinguishing features.

c) In the field of commerce, signs that contain signs or designations that indicate the type, variety, qualification, quality, quantity, purpose, value, geographical source, or indicate the time when the goods are produced, services are provided, or indicate other characteristics of the goods or services, either exclusively or as an essential element.

ç) Signs that are identical or indistinguishably similar to the trademark that has been registered for the same or the same type of goods or services or for which a registration application has been made at a previous date.

d) Signs containing signs or designations used exclusively or as a main element by everyone in the field of commerce or used to distinguish those who belong to a certain profession, art or trade group.

e) Signs that exclusively contain the shape or another feature of the goods that arise from their nature, or the shape or another feature that is necessary to achieve a technical result or that gives the goods its intrinsic value.

f) Signs that may mislead the public on matters such as the nature, quality or geographical origin of the goods or services.

g) Signs to be rejected according to Article 6 bis of the Paris Convention.

ğ) Other signs that are outside the scope of Article 6 of the Paris Convention, but are of public interest and have become public knowledge in terms of historical and cultural values, and signs containing coats of arms, insignia or designations that have not been granted registration permission by the competent authorities.

h) Signs containing religious values or symbols.

ı) Signs contrary to public order or general morality.

i) Signs consisting of registered geographical signs or containing registered geographical signs.

Relative Reasons for Rejection

Relative reasons for rejection are listed in Article 6 of the law. The existence of reasons for rejection can only be examined by the institution upon objection. The institution does not have ex officio inspection authority.

According to Article 6 of the SMK;

- If there is a possibility of confusion, including the possibility that a trademark applied for registration may be associated by the public with the trademark registered or applied for at a previous date, due to its identity or similarity with the trademark registered or applied for on a previous date, and the identity or similarity of the goods or services it covers, the application is rejected upon objection.

-The application made by the commercial agent or representative for the registration of the same or indistinguishably similar trademark in his/her name, without the permission of the trademark owner and without a justified reason, is rejected upon the objection of the trademark owner. -If the right has been obtained for an unregistered trademark or another sign used in trade before the application date or the priority date, if any, the trademark application is rejected upon the objection of this sign owner.

-Trademark applications that are identical or similar to well-known trademarks within the context of Article 1 bis 6 of the Paris Convention shall be rejected upon objection in terms of the same or similar goods or services.

-In cases where an unfair benefit may be gained from a trademark that has been registered or whose registration application has been made on a previous date, due to the level of recognition it has reached in Türkiye, the reputation of the trademark may be damaged or its distinctive character may be damaged, the registration application of the same or similar trademark shall be rejected upon the objection of the owner of the trademark of the previous date, regardless of whether the application is made for the same, similar or different goods or services, provided that it is based on a justified reason.

-If the trademark applied for registration includes a person's name, trade name, photograph, copyright or any intellectual property right belonging to someone else, the application will be rejected upon the objection of the right owner.

-A trademark application that is identical or similar to the common trademark or guarantee trademark and includes the same or similar goods or services, made within three years from the expiry of the protection period due to non-renewal of the registered trademark, is rejected upon the objection of the previous right owner. -A trademark application that is identical or similar to this trademark and includes the same or similar goods or services, made within two years from the expiration of the protection period due to non-renewal of the registered trademark, is rejected upon the objection of the previous trademark owner, provided that the trademark has been used within this two-year period.

-Trademark applications made in bad faith are rejected upon objection.

TERMINATION OF TRADEMARK RIGHT

In the Industrial Property Law, it is regulated that the trademark right will expire in 3 cases. These situations are cancellation, invalidity, non-renewal and abandonment.

BRAND CANCELLATION

The cancellation decision is made by TURKPATENT. The institution can make the decision only upon request. Article 26 of the SMK regulates the circumstances in which an annulment decision will be made. According to the relevant article;

- Within five years from the date of registration of the trademark, the trademark owner should not use it seriously in Türkiye for the goods or services for which it is registered, without a justifiable reason, or its use should be suspended for five years without interruption.

- The trademark becomes a common name for the goods or services for which it is registered as a result of the trademark owner's actions or failure to take the necessary precautions.

- As a result of the use made by the trademark owner or with the permission of the trademark owner, the trademark misleads the public about the nature, quality or geographical source of the goods or services for which it is registered.

- Use contrary to Article 32. In such cases, the relevant persons may request the cancellation of the trademark from the Institution. The cancellation request is effective against everyone starting from the time the request is submitted. Upon the cancellation decision, the trademark is deleted from the registry.

INVOLUTION OF THE TRADEMARK

Invalidity cases are regulated in Article 25 of the SMK. In case of the existence of rejection cases regulated in Articles 5 and 6 of the Law, invalidity will come to the fore. The decision of invalidity is given through litigation. The right to file a lawsuit for the invalidity of the trademark is granted to those who have an interest, the public prosecutor and relevant institutions or organizations. The opposing party in the invalidity lawsuit is the person in whose name the trademark was registered on the date of the lawsuit or their successors. TÜRKPATENT cannot be cited as a defendant in a trademark invalidation case.

The decision of nullity is effective against everyone. With the decision of invalidity, the protection rights regarding the trademark are deemed to have never arisen. The decision takes effect from the date of application.

EXPIRATION OF PROTECTION AND FAILURE TO RENEW THE BRAND WITHIN THE DURATION

SMK has determined the protection period of the brand as 10 years. The application date at the beginning of the 10-year period is taken as basis. The renewal of the brand is done every 10 years. The right to request renewal belongs to the trademark owner. The period for making a request is 6 months before the protection period expires. If the trademark owner does not request renewal within the specified periods, the trademark right will expire.

In addition, the trademark owner can waive his rights partially or completely by applying to the institution. The application is made in writing. Renunciation has consequences starting from the date the renunciation is recorded in the registry. License holders registered in the registry and, if any, persons on whose behalf an action has been taken on the trademark right must also consent to renunciation. Otherwise, giving up will not produce any results.

If the trademark registration application is withdrawn before registration, the provisions regarding withdrawal apply.

PROTECTION OF TRADEMARK RIGHTS

Trademark rights are of great importance for rights holders. Violation of the trademark right, which is among the property rights because it is a property right, means violation of the property right. For this reason, the SMK includes legal and criminal sanctions in case of trademark infringement.

WAYS TO PROTECT TRADEMARK INFRINGEMENT

Acts deemed to be infringement of trademark rights in Article 29 of the Civil Code;

a) Using the trademark in the ways specified in Article 7 without the permission of the trademark owner.

b) Imitating the trademark by using the trademark or an indistinguishably similar one without the permission of the trademark owner.

c) Selling, distributing, otherwise commercializing, importing, exporting, keeping for commercial purposes, or making a proposal to make a contract regarding the products bearing the trademark used by infringement, even though he knows or should know that the trademark is imitated by using the trademark or an indistinguishably similar one.

ç) Expanding the rights granted by the trademark owner through license without permission or transferring these rights to third parties.

If the situations listed above occur, the trademark owner will be able to benefit from legal protection. In addition, the defense that "the use of a registered trademark does not constitute infringement", which was established by the jurisprudence of the Supreme Court of Appeals during the Decree Law No. 556, lost its validity with the entry into force of the Civil Code No. 6769. With the decision of the Istanbul Regional Court of Justice dated 2018, it was ruled that the use of the registered trademark can be prevented by injunction.

It is possible to list the legal remedies that the trademark owner can apply as follows;

1-A ban lawsuit may be filed to stop acts that constitute trademark infringement.

2- The authorized person may request the detection of rape incidents.

3- Interim measures may be requested.

4- A compensation lawsuit may be filed to compensate for the damages.

5- If the party that is vindicated as a result of the case has an interest, it may request that the final decision be announced in a daily newspaper or similar means.

6- Criminal action may be taken due to rape.