In a recent decision that challenged long-standing precedents, the Court of Cassation has concluded that the Turkish Patent and Trademark Office (“Office”) has no authority to create and maintain a registry for recording well-known trademarks.
The background of the case relies upon the fact that the plaintiff’s application to have its trademark recorded as well-known was rejected by the Office’s Re-examination and Evaluation Board (“Board”). The plaintiff filed a cancellation action against the Board’s decision before Ankara Civil IP Court, which decided to partially accept the court action on the grounds that the plaintiff’s trademark is well-known in the relevant business field. The decision was then appealed before the Ankara Regional Court of Appeals, but the appeal was dismissed. Following this, the Ankara Regional Court of Appeals decision was appealed before the Court of Cassation.
On 5 February 2020, the Court of Cassation issued its decision (2019/2980 E - 2020/991 K) that the Office does not have the authority to create a registry for the recording of well-known trademarks according to existing law; in addition, the well-known status must be evaluated on a case-by-case basis. Finally, the Court of Cassation concluded that the plaintiff had no legal interest in applying to the Office to record its trademark as well-known and, subsequently, filed a cancellation action. Accordingly, the Court of Cassation has sent the case back to the IP Court for retrial. The IP Court decided to align itself with the decision of Court of Cassation and ruled for dismissal of the plaintiff’s cancellation action. This time, the plaintiff appealed the decision of IP Court, and the case file is under examination before the Court of Cassation.
The IP Court’s new decision will become final if it is upheld by the Court of Cassation, which is the most probable outcome, because the IP Court had rendered its judgment by complying with the Court of Cassation’s reversal decision.
However, the Court of Cassation concluded in its various former decisions that the Office is authorised to deal with proceedings for the registration and protection of trademarks in a broader sense, and to determine the criteria for well-known trademarks. It further stated that it is not possible to file a court action to determine whether a trademark is well-known prior to an application being filed at the Office and the outcome of the recording application is received. Following these precedents, the Office commenced receiving applications for the recording of well-known trademarks. Before starting this practice, it had once published a special bulletin, in 1997, in which well-known trademarks were announced.
In addition, the Court of Cassation also accepted in its earlier decisions that trademark owners have legal interest in filing court actions for a determination that their trademarks are well-known because this provides broader protection from potential infringement, and discourages applications that would cause confusion and take unfair advantage of the reputation of well-known trademarks. However, with this recent decision, it is accepted that there is no legal interest in filing a court action to cancel the Office’s decision with regard to the recording of a well-known trademark, as the Office is not authorised to maintain such a register.
While the reasoning that well-known statuses should be examined on a case-by-case basis is entirely correct, the Office’s record of well-known trademarks is not binding for the courts in practice, and trademark owners arguing that their trademark is well-known are required to prove their arguments. On the other hand, the regulations did not change, in essence, following the precedents set by the Court of Cassation from 2004, and a fairly established practice has now been developed and implemented over the last 16 years.
Graphic 1 Recorded Well-Known Trademarks Before TÜRKPATENT, TURKEY, 2003-2020
Source: https://www.turkpatent.gov.tr, 13.01.2021
* As of 13 January 2021, 107 well-known trademark applications are pending before the Office.
Albeit criticised heavily in the beginning as not many countries maintain a register for well-known trademarks, the practice has shown that there is benefit for the owners of well-known trademarks in a register being maintained since, otherwise, examiners have to deal with dossiers of evidence when assessing well-known trademark claims, while trademark owners have the burden of proving the well-known status of their marks in each opposition case that they claim well-known status over.
We predict that the finalisation of this decision, subject to our article, will have significant repercussions. It may result in a complete cease of the recording of well-known trademarks, or there may be a new regulation explicitly authorising the Office to record well-known trademarks. If a new regulation is made, it may give the Office an opportunity to improve its system for the recording of well-known trademarks, such as bringing an obligation for well-known trademark owners to renew their well-known trademark recordation every five years, by submitting updated evidence proving that their trademarks are still well-known.