Well-known Trademark Concept and Determination of Well-known Status

The right to a trademark is an absolute right that grants exclusive authority to its owner. The owner of a trademark can prevent others from using it, can assert their right against anyone who violates it, and can obtain financial benefits by using or authorizing its use.

In a decision by the Court of Cassation, it is stated that "as for whether trademark rights can be subject to legal transactions; the trademark right on intangible assets is an absolute right and, due to its economic value, is included in the company's assets. In addition, trademark rights can be the subject of various legal transactions."[1]

The Principle of Registration

In terms of the rights it grants to the owner of the trademark, registration has a constitutive effect. The owner of a trademark can assert their rights against third parties starting from the publication of the registration. Article 7 of the Industrial Property Law explicitly states that 'Trademark protection provided by this law is obtained through registration.'

A registered trademark can only be invalidated by a court decision, except in cases where it has not been renewed. The Turkish Patent and Trademark Office (TPTO) cannot cancel or revoke a registered trademark. This is the established position of the Court of Cassation.[2]

Concept of Well-Known Trademark

Well-known trademarks are one of the exceptions to the principle of registration. These trademarks are protected even if they are not registered. A well-known trademark cannot be registered for the same goods or services under another name without the owner's permission, even if it is not registered in Turkey. If it would result in unfair advantage or damage to the reputation of the trademark, registration may also be refused for different goods and services. Otherwise, an invalidation action may be filed. The protection of well-known trademarks without registration is limited to these cases.

Although the definition of a well-known trademark is not included in the Paris Convention or the Industrial Property Act, the Court of Cassation defined a well-known trademark as "an impression that arises reflexively from the minds of people in the same environment, regardless of geographical boundaries, culture, age difference, which is strongly associated with a person or enterprise, guarantee, quality, strong advertising, and widespread distribution, and without distinction between customers, relatives, friends, and enemies."[3]

Tekinalp stated that a well-known trademark refers not only to trademarks that are established in one or a few regions of a country, but also to trademarks owned by individuals who are citizens of a member state of the Paris Convention or who are resident or have a commercial or industrial enterprise in one of those countries, and which are known by relevant circles both domestically and internationally, even if they are not globally known.[4]

In determining the element of recognition, according to the criteria established by the WIPO Panel of Experts, market share, distinctive features, and the global distribution of registered countries are also evaluated.[5]

In the decision of the 11th Civil Chamber of the Court of Cassation dated 10.4.1997 and numbered 1920/2708, and in the decision on correction of the ruling dated 23.06.2000 and numbered 5459/5902, it was ruled that, in accordance with Article 6 of the Paris Convention, even if the relevant mark is not known and registered in Turkey, the mark can benefit from protection, and the "Kokpit" mark was invalidated.

The Supreme Court reiterated its belief in the "Dolce Vita" mark in its decision dated 20.11.1998 and numbered 7711/8024, stating that "such marks that are generally recognized by everyone, even if not known worldwide, would be accepted under this provision if they are known in member countries of the Paris Convention, including some of those member countries. It is sufficient for the mark that requests protection to be generally known in Turkey, and it is not mandatory for the mark to be used in our country in order for it to benefit from Article 6 of the Paris Convention."

Well-known Trademark in Industrial Property Act

In the Industrial Property Act, it is regulated that trademark applications with the same or similar characteristics as the well-known trademark will be rejected upon objection and this issue is considered as a relative ground for refusal. Article 6/5 of the Industrial Property Act, which regulates the protection scope of well-known trademarks in Turkey, states that "In cases where an unfair advantage can be obtained due to the level of recognition reached by a registered or previously filed trademark in Turkey, the reputation of the trademark may be damaged or the distinctive character may be impaired, the application for the same or similar trademark shall be rejected upon the objection of the owner of the earlier trademark, regardless of whether the application is made for the same, similar or different goods or services, subject to a justifiable reason."

According to Article 6/6 of the IPA, "If the trademark application includes someone else's name, trade name, photograph, copyright or any intellectual property right, upon the objection of the rights holder, the application shall be rejected."

Well-known Trademark in the Context of the Paris Convention

Under Article 6 of the Paris Convention, trademarks that are considered well-known by the public should not be registered by others in a way that could cause confusion. If a factory or a commercial trademark imitates, reproduces or translates the mark, and if the laws of the member country allow it, the competent authority should reject or cancel the registration upon request. Similarly, in accordance with the Paris Convention, the Industrial Property Act provides that applications for trademarks with the same or similar characteristics to well-known trademarks should be rejected on relative grounds if they are applied for the same or similar goods or services. (Article 6)

Well-known Trademark in the Context of TRIPS Agreement

As a result of the inadequacy of the regulation introduced by the first recital of Article 6 of the Paris Convention over time, there was a need to make a regulation in this regard under the TRIPS Agreement. The deficiencies of the Paris Convention regarding well-known trademarks were attempted to be addressed with Article 16 of the TRIPS Agreement. The most important innovation brought by TRIPS is the application of the first recital of Article 6 of the Paris Convention to service marks and the provision of protection for well-known trademarks for goods and services outside their scope.[6]

Malicious Registration of a Well-Known Trademark

Although there is no clear definition of malicious application, applications made for the purpose of not actually using the mark, but rather reserving and later selling or using the marks for blackmail purposes should be evaluated in this context.

Similarly, the Court of Cassation has also considered in its decision dated 6.7.1988 and numbered 1734/5146 that "every well-known trademark covered by the 1st Duplicate of Article 6 of the Paris Convention should be regarded as a malicious act for a person who knows this quality to register the same or similar mark. If there is malice, the invalidity action is not subject to a time limit.[7]

In the context of trademark law, malice means that the person who applies for registration knows or could have known at the time of application that the sign he or she wishes to register is a mark belonging to someone else domestically or abroad or a sign that someone else uses and has rights over, and registers it without obtaining permission from the owner of the underlying mark.[8]

In Turkey, malice poses a problem for trademarks that are claimed to be well-known but not officially recognized as such. Research should be conducted on the well-known status of the mark in question. In this case, it would not be appropriate to directly accuse the applicant of malice. The mark should be a well-known mark, and the presence of malice should be clear.

The registration of a food, beverage, or clothing mark by a person who cannot produce these products may be regarded as an indication that this person will use the mark for bargaining purposes.

Proof of Well-known Status and the View of the Court of Cassation

The Court of Cassation is of the opinion that a direct lawsuit cannot be filed to determine the well-known status of a trademark, and that an application must first be made to the Turkish Patent and Trademark Office (TPTO). "Since the determination and registration of the well-known status of a trademark will have consequences such as preventing possible infringements in the future, preventing confusion, and benefiting from the reputation of the trademark, it is necessary to acknowledge the legal interest of the rights holder in such a determination. Therefore, the trademark owner can request the registration of their trademark as a well-known trademark in the TPTO's register. However, in the present case, the determination of the trademark's well-known status is directly sought through a lawsuit without a well-known trademark application having been filed with the defendant.

However, in Turkey, where the TPTO is the only authorized institution for trademark registration, it is not appropriate to seek this result directly through a lawsuit without making an application to the TPTO. There is essentially no legal interest in filing a lawsuit directly against the TPTO without waiting for the examination result that will be given by the TPO Presidency regarding the trademark's well-known status before completing the registration procedure by applying to the TPTO for the reputation of the trademark."[9]

Dirikkan stated that the well-known status of a trademark cannot be considered as a well-known fact within the scope of Article 187 of the CCP, and that it cannot be accepted that a trademark is well-known without any examination or evidence. Due to the nature of well known status, which does not have a fixed structure, it is necessary to determine whether the trademark is well-known in every dispute.[10]

WIPO Criteria

In 1995, the "Expert Committee on Well-Known Trademarks" was established within WIPO to identify the criteria to be taken into account in determining the well-known status of a trademark. The criteria identified by the committee are as follows:

• The degree of knowledge or recognition of the trademark among the relevant public in the sector;

• The length, degree, and geographical area of use of the trademark;

• The duration, degree, and geographical area of promotion of the products or services for which the trademark is used, including advertising and presentations at trade fairs or exhibitions;

• The length and geographical area of other registrations and/or registration applications that affect the recognition or use of the trademark;

• The evidence of effective protection of the trademark, especially the degree to which it has been recognized as a well-known trademark by administrative or judicial authorities in countries where it is used;

• The economic value of the trademark.

The recommendation decision states that there is no requirement for registration or use of a trademark in the requested country for it to be protected as a well-known trademark. Additionally, if a trademark is recognized in at least one relevant sector of society in the contracting state, it is considered a "well-known mark", and whether it will be recognized as such if only known is left to the discretion of the contracting state.

The meaning of the "relevant sector" limited as the environment in which well-known status is determined in Article (1)(b)/1 of the WIPO recommendation decision is explained in Article (2) of the same decision. Accordingly, the relevant sector is specifically referred to as (i) the actual or potential customers of the products on which the trademark is used, (ii) the persons in the distribution channels of the products on which the trademark is used, and (iii) the business circles related to the products on which the trademark is used, and it is stated that being well-known in the relevant sector is sufficient for the recognition of a trademark as a well-known mark. According to Articles 2/2-(a) and (b) of the WIPO recommendation decision, a trademark's recognition in any of these sectors is sufficient for the recognition of a trademark as a well-known mark.[11]

Other Indicators That Can Be Used in Determination of Well-known Status

It is not possible to say that WIPO criteria are the only criteria that can be considered when determining whether a trademark is well-knwon or not. In addition to the WIPO criteria, other criteria that can be considered depending on the specific circumstances of each case may also be relevant.[12]

• Date of creation and registration of the trademark, as well as the lack of use
• Number of stores opened through licenses or franchises
• Number of branches
• Daily average number of visitors to the website
• Frequency and number of searches for the trademark in internet search engines
• Market share

TPTO Criteria Related to the Level of Distinctiveness of Trademarks

TPTO bases its well-known brand review on the following criteria:

1. The duration of the trademark's registration and use (detailed information about the brand's history).

2. The geographic area and scope of the trademark's registration and use (domestic and international registrations).

3. The prevalence of the product and/or service the brand is used on, market share, and annual sales volume.

4. The characteristics of promotion activities related to the brand (especially those in Turkey) (promotion period, continuity, geographic area, scope, promotion budget, nature of promotion (TV commercials, local newspaper ads, promotions targeting only children, etc.).

5. Are there any non-advertising activities that could be beneficial for brand promotion? (Publications in newspapers, magazines, TV, etc., display of branded products at fairs, etc.)

6. Is there a court decision showing the brand's notoriety, or what are the brand owner's effective efforts to protect the brand? (Besides the well-known status decision, court decisions, ongoing trademarks, unfair competition cases, objection numbers, etc.)

7. How original is the brand, and what is its distinctiveness?

8. If there are public opinion polls on the brand's recognition, what are the results?

9. Characteristics of the brand owner firm (size of the company, number of employees, paid-up capital, revenue, profit, distribution channels it has nationwide and worldwide: branches, franchises, service network, taxes paid, export volumes, market domination, etc.)

10. Does the brand identify with the product or service it is used on? When the brand name or logo is seen, does it immediately recall a particular product? Does the brand name or logo indicate a certain quality or status regarding the product or service it is used on?

11. Are there any documents or awards related to the product carrying the brand or the brand owner firm (quality certificates such as TSE, TSEK, ISO, quality award, environmental award, blue flag, etc.)?

12. What are the distribution channels of products carrying the brand (in addition to the brand owner firm's own distribution channels), and what are the import and export opportunities for these products?

13. If the brand has been subject to a sale or a value appreciation has been made on the brand, what is the brand's monetary value? Has the brand's monetary value been shown in the brand owner's annual balance sheet?

14. How extensive is the product and/or service portfolio covered by the trademark registrations? (for example, a trademark registered only for "sodas" versus a registration covering all electronic devices).

15. If the brand is a well-known brand among the public, how long has it maintained this level of recognition?

16. Are there any acts of infringement against the brand's notoriety? Is the brand being imitated by third parties? (density of similar applications, whether the brand is being used unjustly by third parties on the market, etc.) If the trademark is being used by third parties, does this use harm the well-known trademark owner in terms of its shape, geographical and commercial spread?

17. Is the trademark vulnerable based on the nature of the product or service on which it is used (for example, a car brand vs. a gum brand) or based on the nature of the potential and actual user base (a product brand for doctors vs. a product brand for children)?

18. Any type of document related to proving the aforementioned or proving that a trademark is well-known.

Elements of a Well-known Trademark According to Court of Cassation

1. Being registered in many countries

According to the Court of Cassation, a trademark being registered in many countries is sufficient for it to be recognized as a well-known trademark. However, according to Tekinalp, WIPO registration should not be evaluated within this scope.[13] WIPO registration allows registration in many countries with a single application, but the trademark may not be registered even though it is well-known and the relevant goods and services are searched for in many countries.[14]

2. The product itself evoking the brand name

If a product automatically brings a certain brand to mind, it shows that the brand is a well-known trademark.

3. Being known within the industry

If a brand is known by the actors in the relevant industry, it should be recognized as a well-known trademark.

According to the established decisions of the Court of Cassation, the recognition of well-known trademarks should be determined by expert examination. The recognition determination can be subject to a case; if the Turkish Patent and Trademark Office has not recognized the well-known status or refused to include a certain brand in the list of well-known trademarks, a recognition determination case can be filed.[15]

Rights Provided by a Well-known Trademark

Well-known trademarks provide owners with protection against obstacles to registration, invalidation, and unauthorized use of the mark, as well as ensuring that the mark is used by the rightful owner in Turkey.[16]

• If an identical or similar trademark to a well-known trademark in Turkey has already been registered, the well-known trademark can still be registered in Turkey without requiring the cancellation of the existing mark.[17] The owner of a well-known mark can prevent the registration of identical or similar marks, even if their own mark is not registered in Turkey.[18]
• If the trademark is registered in Turkey, it gives the owner the right to file a nullity lawsuit.
• The owner of a well-known trademark can import or have imported goods bearing the trademark, even if the trademark is registered in someone else's name in Turkey.
• Well-known trademarks provide that, in accordance with the Industrial Property Act and the Paris Convention, trademark applications of the same or similar nature as well-known trademarks will be rejected on objection, with respect to the same or similar goods and services.
• The owner of a well-known trademark can request registration of the trademark in their own name, without requesting the cancellation of the trademark that has already been registered in someone else's name.
• If a well-known trademark is registered for the same goods and services, the owner of the well-known trademark can file a nullity lawsuit against the registered trademark. The statute of limitations for this lawsuit is five years, starting from the registration date. If there is malice in the trademark registration, the nullity lawsuit is not subject to any time limitation and can be filed at any time.[19]

Conclusion

Well-known trademarks have a higher level of protection in many countries around the world than what is prescribed for other trademarks. While there are different ways of defining the elements of well-known status, criteria used to determine the concept are similar. Protected interest is to prevent unfair advantage and damage to the reputation of a well-known trademark by taking advantage of its recognition in society. A brand can create the same quality and trust perception all over the world only in this way. In recent years, regulations in Turkey have been amended to align the trademark legislation with international standards.

 

 

Hürhan Sarı, LL.M.

 

 

 

References

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[1] Court of Cassation 11th Civil Ch., E.2001/844, K.2001/3429 9.4.2001,

[2] Court of Cassation 11th Civil Ch., 226/1196, 10.02.2000

[3] Court of Cassation 11th Civil Ch., 5647/1704, 13.03.1998

[4] Tekinalp Ü. Intellectual Property Law, 5th edition, 2012, p. 411.

[5] Court of Cassation 11th Civil Ch., 2001/8773, 31.01.2000

[6] ÇOLAK, U. "Well-Known Trademarks under Article 6bis of the Paris Convention", C.4, No.2004/2, p.29.

[7] Tekinalp Ü., Intellectual Property Law, 5th edition, 2012, p. 383

[8] Tekinalp Ü., Intellectual Property Law, 5th edition, 2012, p. 427

[9] Court of Cassation 11th Civil Ch., 2005/13979E, 2007/827K., 25.1.2007

[10] Dirikkan a.g.e. p. 134

[11] Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO September 20 to 29, 1999 https://www.wipo.int/edocs/pubdocs/en/marks/833/pub833.pdf [s.e.t. 24.11.2022]

[12] Çolak U. Turkish Trademark Law, Expanded and Updated 3rd Edition, 2016, p. 198.

[13] The decisions of the Supreme Court 11th Civil Chamber numbered 1734/5146 and dated 06.07.1998, 2516/6833 and dated 24.06.2003, 1083/142 and dated 12.02.2001, 8324/8955 and dated 16.11.2000, 4610/5701 and dated 25.06.2001, and the decision of the Court of Cassation General Assembly of Civil Chambers numbered 11-578/703 and dated 19.11.2003.

[14] Tekinalp Ü., Intellectual Property Law, 5th edition, 2012, p. 412

[15] Court of Cassation 11th Civil Ch., 2003/12431, 24.06.2004

[16] Çolak U. Turkish Trademark Law, Expanded and Updated 3rd Edition, 2016, p. 184

[17] Court of Cassation 11th Civil Ch., 2762/4717, 25.05.2000

[18] Court of Cassation 11th Civil Ch., 5663/6784, 18.09.2000

[19] Tekinalp Ü., Intellectual Property Law, 5th edition, 2012, p. 414