Protection Scope of Weak Trademarks
According to Article 4 of the IP Code a sign should be distinctive in order to benefit from trademark protection. Distinctiveness is an essential factor in determining the scope of protection of a trademark, and the protection scope of trademarks differs according to the distinctiveness level of the component(s) that form the trademark. The trademarks composed of non-distinctive components, or components where the distinctiveness is weak, are called “weak trademarks.”… »
Accuracy Assessment on Decisions of the Office
The assessment of accuracy of the Office’s decisions has always been a controversial issue under Turkish trademark law. A recent decision issued by the 2nd IP Court of Ankara that opposed the Court of Appeal’s (“CoA”) decision, constitutes a remarkable precedent, illuminating the issue. The owner of earlier trademarks, which are also recorded as a well-known trademark by TÜRKPATENT, filed a lawsuit in opposition against a later-dated, and confusingly similar application. The… »
Registered Use Defense in Infringement Actions
As per the settled Court of Appeals (“the CoA”) precedents established during the Trademark Decree-Law era – which ended upon enactment of the new Intellectual Property Code No. 6769 (“IP Code”) on January 10, 2017, it was accepted that use, which was based on a registered trademark, cannot create infringement, regardless of whether this use creates confusion and infringement with a senior trademark registration. As a result of these precedents, use based on a registered… »
Avoiding Genericide of a Trademark
Article 42/1(d) of the former Decree Law set forth that an invalidation action could be filed against a trademark if it becomes a common name of the goods or services it was registered for as a result of the trademark proprietor’s behaviours. The same rule was preserved in the IP Code under Article 26/1(b) as grounds for revocation, instead of invalidation, and with different wording. As per Article 26/1(b), the Office may revoke the trademark upon request, if the trademark… »
The Impact of Non-Use Defence in Criminal Cases
As per the IP Code, trademark protection provided by this law is obtained through registration. However, although registration is necessary to protect the rights of trademark owners and to claim their rights against third parties, this may be insufficient. Indeed, a trademark must be genuinely used in Turkey with respect to goods and services for which it is registered. However, if the trademark is not genuinely used within five years from registration, or if its use is… »
Recent Practice on Color Marks in Turkey
One of the major changes brought by the IP Code that came into force on 10 January 2017 is on non-traditional marks and, especially, on color marks. Although it was also possible to register color marks prior to the change of legislation, in practice, the use of an internationally recognized color code within the application form was not possible, hence color codes were mentioned by a separate petition, and the applications were considered as “device trademarks” within the… »