Recent Developments in TURKPATENT's Practice on Recording of Well-known Trademarks

We have previously reported on the Turkish Court of Cassation’s decision concluding that the Turkish Patent and Trademark Office (hereinafter will be referred to as “TURKPATENT” or “the Office”) has no authority to create and maintain a registry for well-known trademarks and discussed possible repercussions of this decision for trademark owners. (Please see https://www.worldtrademarkreview.com/article/court-of-cassation-reopens-debate-recordation-of-well-known-trademarks)

The Turkish Court of Cassation’s decision (No. 2019/2980 E-2020/991 K of February 5, 2020) had been finalized as the Court of First Instance did not resist in its decision. Although the plaintiff appealed the decision of the first instance court, the plaintiff’s appeal was dismissed since the same chamber of the Court of Cassation made the examination. Therefore, the decision of the Court of First Instance rendered in accordance with the Court of Cassation’s decision has become final.

In this article, we will examine how the practice has been shaped in the light of this decision and predict what to expect in the future.

The latest developments since finalization of the decision signal a new regulation

The First Instance Courts and Regional Courts of Appeals have adopted the decision of the Court of Cassation and given dismissal decisions in pending court actions that are of the same nature. In these dismissal decisions, they made reference to the decision of the Court of Cassation and the reasoning was the same: TURKPATENT has no authority ordered by law to keep an official registry for recording well-known trademarks, and there is no legal benefit in initiating a cancellation action against the Office due to the rejection of an application to record trademarks as well-known since the well-known status of a trademark should be proven in a given case where it is argued in accordance with established precedents.

On the other hand, TURKPATENT has continued to maintain its registry for recording well-known trademarks and has accepted and processed applications, and even recorded new trademarks on the well-known trademark registry. The Office has also listed the official fee for filing for determination of the trademarks in its updated 2023 tariff, as in previous years, which is another indication that it will continue its practice.

The newly appointed president of TURKPATENT made a statement regarding the Office’s decision in relation to the well-known trademark register at a consultation meeting with trademark attorneys in Ankara. The President stated that the Office will not abandon the well-known trademark registry practice and has no plan to do so in the future. He stated that they are planning to amend the relevant rules of the legislation by including "holding a specific registry for well-known trademarks" among the duties of the Office in the legislation, which should be sufficient to overcome the reasoning of the Court of Cassation in its decisions, where it found the practice of maintaining a well-known trademark register by the Office as legally groundless. He also emphasized that they had been receiving applications for recording well-known trademarks, even after the decisions of the Court of Cassation, and they recently started to decide on the applications.

Currently, the Courts and the Office have different interpretations and implementations of recording of well-known trademarks. While the Courts follow the decision of the Court of Cassation, the Office has not made any change to its implementation despite the finalization of the decision. It is expected that this difference between the Courts and the Office shall be resolved with a new regulation that will explicitly give the Office authority to maintain the well-known trademark registry.

Considering that TURKPATENT maintains its long-lasting practice, right holders may continue filing applications for determination and recording of the well-known status of their trademarks if there is evidence and if they think that their chances are high. However, if an application for recording of a well-known trademark is rejected, there is no benefit in filing a court action against the decision of the Office unless there is no change in the current legislation, in view of the decisions of the Court of Cassation.

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