GSK Succeeds in Bad Faith Case in Türkiye
This article examines a lawsuit concerning the use of a trademark, after it was registered in Türkiye by a third party, with the aim of threatening infringement proceedings against the company that is the rightful owner of the mark and evaluates how the courts protect the genuine rights holder against bad faith registration.
Background
The dispute concerned the bad faith registration of a trademark that had previously been registered in Türkiye in the name of Stiefel Laboratoires, Inc., an affiliate of GlaxoSmithKline Plc, the global pharmaceutical group (GSK).
GSK had been commercially using the “Clindoxyl” trademark since 2010 in Türkiye, particularly in connection with acne treatment products, with a valid marketing authorisation from the Turkish Ministry of Health.
Although the trademark was applied for in 2006 by GSK and registered in Class 5 in 2007, the protection lapsed in 2016 due to an unintentional failure to renew.
In 2019, the defendant obtained registration for the “Clindoxyl” trademark in Class 5. Within 10 days of the registration, it sent a cease-and-desist letter to GSK Türkiye, accusing the company of trademark infringement with the threat of collecting its products on the market based on the recent trademark registration for “Clindoxyl”.
GSK immediately responded with a formal letter, reminding the defendant that it is the genuine right owner of the “Clindoxyl” trademark and demanding assignment of the trademark. However, the defendant asked for payment of a significant amount to assign the trademark to GSK.
As this is a clear indication of bad faith, GSK decided to initiate an invalidation action against the defendant and alleged that the defendant acted in bad faith by knowingly exploiting the lapse in registration to take advantage of GSK’s established brand reputation and commercial presence.
The defendant denied the bad faith claims, arguing that GSK did not have a valid registration for this trademark and that the goods fall into different trademark classes as the defendant aims to use the trademark in terms of room fragrances in Class 5 while GSK’s use should be accepted for goods in Class 3.
Decision
The first instance court ruled in favour of GSK and decided to invalidate the defendant’s trademark, with satisfactory reasoning (Izmir IP Court, Merit No. 2020/80, Decision No. 2021/95, Dated 16.06.2021).
The Court concluded that GSK is the genuine right owner of the “Clindoxyl” trademark since it was understood from the evidence in the file that it has used the trade mark both in Türkiye and abroad long before the application date of the defendant’s trade mark and it is not coincidental that the defendant chose to register the exact same “Clindoxyl” trademark, which is highly distinctive. Therefore, the defendant aimed to gain unfair benefit from this trademark although she was aware of the genuine right owner.
The defendant’s appeal was rejected by the Regional Court (Izmir Regional Court, Merit No. 2021/1077, Decision No. 2024/421, Dated 13.03.2024). Upon the defendant’s second appeal, the Court of Cassation upheld the decision, confirming the invalidation of the defendant's trademark (11th Civil Chamber of the Court of Cassation, Merit No. 2024/3134, Decision No. 2025/1450, Dated 04.03.2025).
As a result, GSK succeeded in the invalidity of the bad faith registration, which will no longer serve as the basis of a potential infringement case and was also creating an obstacle to the registration of its own trademark.
Following the finalised court decision, the trademark was declared entirely invalid with retroactive effect by the Turkish Patent and Trademark Office, which will enable GSK to register its own trademark.
Comments
This ruling sets a strong precedent for protecting trademark holders against bad faith registrations in Türkiye, especially in cases where a lapse or gap in registration is exploited by third parties. It affirms that trademark rights are rooted not only in formal registry entries but also in actual use, commercial recognition and ethical conduct in trade.
By citing earlier jurisprudence and reminding about the duties of a diligent trader before applying for a trademark registration, the court drew a clear line between opportunistic filings and legitimate registrations.
Recognising the importance of genuine and earlier use, this decision contributes to the development of trademark jurisprudence in Türkiye and serves as a robust legal tool for preventing misuse of the registration system through bad faith.