When Does Registration Amount to Authorization? Rethinking Article 6ter of the Paris Convention in Turkish Trademark Law

Background

An American multinational television channel filed two trademark applications in Türkiye, where the signs at issue both incorporate a stylized background partially incorporating the national flag of the US with additional verbal elements in the front. Both filings were provisionally refused by the Turkish Trademark and Patent Office (“the Office”) pursuant to Article 5/1(g) of the Turkish IP Code (“the IP Code”) reading as “signs that are to be refused pursuant to Article 6ter of the Paris Convention shall not be registered as trademarks”.

Further to the applicant’s appeal, the Higher Board of Office decided that while the national flag of the US is not identically depicted in the sign, Article 6ter of the Paris Convention grants protection to the protected State against any imitation from heraldic point of view of that State’s flag. In this regard, the sign subject to the appeal was assessed, as a whole, as constituting an imitation of the national flag of the US from heraldic point of view.

With regards to the applicant’s argument that the fact that its trademark had been registered in the relevant country precludes the application of this absolute ground for refusal, the Higher Board stated that the matter must be assessed in accordance with the principle of territoriality, and that the registration in the relevant country does not, in itself, confer a right to registration in Türkiye.

As the Office maintained its position regarding the refusal decisions further to the appeal, the applicant initiated court proceedings to cancel the Office decisions.

Court rulings

The cancellation proceedings were heard before the different IP Courts in Ankara.

One of two cases proceeded smoothly, as the IP Court decided that while the sign at issue constituting an imitation of the national flag of the US from heraldic point of view; it is not justified for the Office to deny registration if the same sign is registered in the US and the relevant State did not see any obstacle in terms of registration of a sign considered to be an imitation of the national flag of the US from heraldic point of view. The Office’s appeals against such decision were dismissed by the Regional Court of Appeals and the Court of Cassation respectively, and the court ruling in favour of the applicant was finalized.

In the other case, heard before another IP Court, it is ruled in the first instance that the Office’s decision is justified. This IP Court decided that the registration in the US does not, in itself, confer a right to registration in Türkiye of a sign considered to be an imitation of the national flag of the US from heraldic point of view. Further to the applicant’s appeal at the next step, the Regional Court of Appeals set aside the IP Court’s decision, and draw attention to the fact that Article 6ter of the Paris Convention prohibits registration of armorial bearings, flags, and other State emblems, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view, “without authorization by the competent authorities”. In this respect, it concluded that if the sign at issue was found entitled to registration in the relevant country, this can be considered as an implicit authorization by the competent authority, and refusing registration of such sign in Türkiye is not justified. The Court of Cassation upheld the Regional Court of Appeals’ decision, and the court ruling was finalized in favour of the applicant as well.

Comment

While there are a number of precedents in Turkish case-law discussing whether the trademark application at issue can be identified under Article 6ter of the Paris Convention, among publicly available decisions of the Turkish Court of Cassation and the Civil Chambers of the Regional Court of Appeals, the discussion at issue and respective final court judgments appear as the only precedents acknowledging registration of a trademark in the relevant country as an implicit authorization by the relevant State.
Certain aspects of the decision may be open to debate, especially whether registration of a trademark in the country of origin can, in itself, be regarded as an authorization by the competent authorities within the meaning of Article 6ter of the Paris Convention, the decision may nevertheless be regarded as justified when considered in light of the purpose and underlying rationale of the relevant rule of law.

The objective of the relevant rule of law is to prohibit the registration and use of trademarks which are identical to or present a certain similarity with the emblems or official signs, for the “sake” of the relevant State. Where the competent authorities of the State whose flag or emblem is at issue have registered the relevant sign as a trademark, it would be difficult to reconcile a subsequent refusal in another country on the ground that such registration was made “without authorization” with the underlying rationale of the provision.

Accordingly, although the distinction between trademark registration and governmental authorization may give rise to a legitimate legal debate, the Turkish Courts’ approach here can be viewed as a reasonable and purpose-oriented interpretation of Article 6ter. Treating the registration in the country of origin as the relevant State’s authorization avoids an overly formalistic application of Article 6ter and gives due weight to the sovereign State’s own position concerning the use of its emblem or flag.