In the Turkish legal system, lawyers practicing the profession provide services in various fields of law. However, some specialize in specific areas by focusing more on them and are often referred to by the public as, for example, trademark lawyers. However, these lawyers are not limited to providing services solely in trademark law. Lawyers who have extensive knowledge and experience in the fields of trademarks and patents and who have established a reputation in these areas are known as trademark and patent lawyers.
Trademark and patent lawyers are expert attorneys well-versed in trademark law and adept at closely following current developments, achieving successful outcomes in their work. Additionally, trademark and patent lawyers represent individuals in this field and provide legal consultancy. To provide legal services in this area, it is not sufficient to merely be a law school graduate; passing the Trademark Representative exam after graduation is also required.
While providing services in this field, trademark and patent lawyers often work in connection with commercial law. They must possess extensive knowledge of the sub-branches of commercial law. Furthermore, a trademark lawyer must be highly knowledgeable in intellectual and industrial property rights, diligently keeping up with updates and offering superior services.
What Cases Do Trademark and Patent Lawyers Handle in Turkish Law?
A trademark and patent lawyer provides legal consultancy and representation services for all disputes and matters falling within this field. A good trademark lawyer is one who is well-versed in the relevant legislation, keeps up with new developments, and achieves successful results in the services they provide through their experience. Common cases and matters encountered in the field of trademark and patent law include the following, although it should be noted that they are not limited to these examples.
- Ensuring the legal execution and monitoring of trademark registration processes,
- Carrying out necessary legal work for the protection of trademark rights,
- Pursuing legal remedies against the rejection of trademark registration rights,
- Providing legal consultancy services related to patent rights,
- Offering legal representation in cases involving infringements of trademark and patent rights,
- Representing clients in compensation lawsuits for material and moral damages due to trademark and patent infringements,
- Handling non-infringement determination lawsuits,
- Managing procedures related to the transfer of trademark and patent rights,
- Dealing with unfair competition lawsuits,
- Conducting legal actions against trademark rights violations,
- Properly handling trademark renewal, address, or title change procedures,
- Managing trademark pledges, licenses, and foreclosure processes,
- Preparing, drafting, and terminating contracts in the field of trademark and patent law.
WHAT IS TRADEMARK RIGHT IN TURKISH LAW? – HOW IS IT OBTAINED?
Trademark right refers to the legal protection granted to a symbol, logo, sign, or image that represents a person or a company and distinguishes their products or services from others. The owner of the trademark secures legal protection by registering the trademark and prevents others from using it without permission.
In Turkey, trademark rights are regulated by the Industrial Property Law No. 6769. According to Article 4 of this law:
“A trademark may consist of all types of signs, including names of persons, words, shapes, colors, letters, numbers, sounds, and the shape of goods or their packaging, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and can be represented in the registry in a way that allows the clear and precise understanding of the scope of protection afforded to the trademark owner.”
In the Turkish legal system, trademark rights can be acquired in two ways:
- Registration of a New Trademark: By selecting a trademark that has not been used before and registering it in accordance with the proper procedures. This form of registration establishes the trademark right and is of a constitutive nature, meaning the right is acquired through the act of registration.
- Ownership by First Use: The trademark belongs to the person who first uses it and makes it widely recognized in the market. This person is referred to as the “true owner” in legal doctrine. In this case, the trademark right exists prior to registration, and the subsequent registration merely serves a declarative purpose.
How is the Trademark Registration Process Conducted in Turkish Law?
In the Turkish legal system, registering a trademark is essential to acquire trademark rights. To ensure the registration process is conducted properly and successfully, it is advisable to seek support from an attorney specializing in this field. Working with an attorney who is knowledgeable in trademark law and experienced in this area offers several benefits, including:
- Managing the legal process and procedures of trademark registration on your behalf,
- Anticipating potential objections and taking appropriate actions,
- Evaluating the originality and eligibility of the trademark for registration,
- Preparing and completing the trademark registration process in compliance with regulations.
Trademark registration applications must be submitted to the Turkish Patent and Trademark Office (Türk Patent). Legal protection begins from the date of registration. If the application meets all the requirements, a formal examination is conducted, and provided no issues are identified concerning absolute grounds for refusal, the application is published in the Official Trademark Bulletin. After the trademark is registered, its use becomes essential.
Article 9 of the Industrial Property Law regulates the use of trademark rights. According to this provision:
“A trademark that has not been seriously used by its owner in Turkey for the goods or services for which it has been registered within five years from the registration date, without a justified reason, or whose use has been interrupted for five consecutive years, shall be subject to cancellation.”
Signs that cannot be registered as trademarks under Turkish law.
There are certain limitations to consider when registering a trademark. The chosen trademark symbol or sign must comply with the law. Otherwise, the registration application may be refused on absolute or relative grounds. The Industrial Property Law regulates the absolute and relative grounds for refusal of trademark registration.
Absolute grounds for refusal of trademark registration.
Article 5- (1) The following signs shall not be registered as trademarks:
a) Signs that cannot be registered as trademarks under Article 4.
b) Signs that do not possess any distinctiveness.
c) Signs that exclusively or primarily include designations indicating the type, variety, nature, quality, quantity, purpose, value, geographical origin, or the time when goods are produced or services are provided, or other characteristics of goods or services.
ç) Signs that are identical or indistinguishable from a previously registered trademark or a trademark with a pending application for registration in relation to the same or similar goods or services.
d) Signs that exclusively or primarily include designations used by everyone in trade or those that serve to distinguish members of a particular profession, art, or trade group.
e) Signs that exclusively include the shape or other feature of a product that occurs naturally or is necessary to obtain a technical result or represents the intrinsic value of the goods.
f) Signs that mislead the public regarding the nature, quality, or geographical origin of the goods or services.
g) Signs that are rejected according to Article 6bis of the Paris Convention.
ğ) Signs that, although not covered by Article 6bis of the Paris Convention, concern public interest and have become widely known in terms of historical and cultural value, including coats of arms, badges, or designations that have not been authorized for registration by the competent authorities.
h) Signs that include religious values or symbols.
ı) Signs that are contrary to public order or general morality.
i) Signs consisting of or including a registered geographical indication.
(2) If a trademark has been used before the application date and has acquired distinctiveness as a result of this use in relation to the goods or services subject to the application, the registration of this trademark cannot be rejected under paragraphs (b), (c), and (d) of the first paragraph.
(3) A trademark application cannot be rejected under paragraph (ç) of the first paragraph if a notarized document showing the explicit consent of the previous trademark owner for the registration of the application is submitted to the Institution. The procedures and principles regarding the consent document are determined by regulation.
Relative grounds for rejection in trademark registration
ARTICLE 6- (1) A trademark application will be rejected upon objection if there is a likelihood of confusion due to its identity or similarity with a previously registered trademark or a trademark whose application was filed earlier, and the similarity of the goods or services it covers. This includes the possibility of being associated with or confused with the prior trademark by the public.
(2) An application for the registration of a trademark that is identical or indistinguishable from another trademark, filed by a commercial agent or representative without the trademark owner’s permission and without a valid reason, will be rejected upon the objection of the trademark owner.
(3) If rights have been acquired on an unregistered trademark or another sign used in commerce prior to the application date or, if applicable, the priority date, the trademark application will be rejected upon the objection of the sign owner.
(4) Trademark applications that are identical or similar to well-known marks under Article 6bis of the Paris Convention will be rejected upon objection, if they concern the same or similar goods or services.
(5) A trademark application for a mark that is identical or similar to a registered or earlier filed trademark, due to the well-known status of the trademark in Turkey, may be rejected upon the objection of the previous trademark owner, if the application could result in unfair advantage, harm to the reputation of the trademark, or damage to its distinctiveness, regardless of whether the application covers the same, similar, or different goods or services, unless there is a valid reason.
(6) If the trademark application includes the name, trade name, photograph, copyright, or any other intellectual property rights of another person, the application will be rejected upon the objection of the right holder.
(7) A trademark application made within three years from the expiry of the protection period due to the non-renewal of a collective or certification mark, and which is identical or similar to the collective or certification mark and covers the same or similar goods or services, will be rejected upon the objection of the previous right holder.
(8) A trademark application made within two years from the expiry of the protection period due to the non-renewal of a registered trademark, and which is identical or similar to the registered trademark and covers the same or similar goods or services, will be rejected upon the objection of the previous trademark owner within this two-year period, provided the trademark has been used during this time.
(9) Trademark applications made in bad faith will be rejected upon objection.
Trademark Infringement in Turkish Law
We mentioned that legal protection begins with the registration of a trademark. The Industrial Property Law protects the rights of the trademark owner in case of an infringement. In the event of trademark infringement, the trademark owner can resort to legal means to benefit from legal protection. Therefore, trademark infringement has both criminal and legal consequences.
Acts considered as trademark infringement (Industrial Property Law, Art. 29);
- Imitating the trademark or using a mark that is indistinguishable without the permission of the trademark owner,
- Selling, distributing, otherwise introducing to the market, subjecting to importation, exporting, possessing for commercial purposes, or proposing to enter into a contract for products bearing a mark that is imitated, knowing or should have known that the mark is being infringed,
- Unauthorizedly extending the rights granted through a license by the trademark owner or transferring these rights to third parties.
Under the Industrial Property Law No. 6769, the protection of trademark rights is valid for a period of ten years following the registration date. However, this period can be renewed every ten years through registration. Even if the trademark is not renewed and becomes an unregistered mark after ten years, various protections under the Industrial Property Law are still applicable. Even if the trademark is not renewed, objections can still be made against similar or identical trademark applications for a period of two years.
According to Article 6/8 of the Industrial Property Law, “A trademark application made within two years following the expiration of the protection period due to the non-renewal of the registered mark, which is identical or similar to the mark and covers identical or similar goods or services, shall be rejected upon the objection of the previous trademark owner, provided that the mark has been used within this two-year period.”
Many actions that infringe upon trademark rights not only bring about compensation obligations under the Industrial Property Law but are also considered crimes, subjecting the offender to criminal penalties. In the event of a trademark infringement, the Industrial Property Law No. 6769 prescribes penalties ranging from one to three years of imprisonment and judicial fines of up to 20,000 days.
What is Patent Right in Turkish Law – How to Obtain a Patent?
Patent right is a method used to protect the rights of a scientific or technological invention and the rights of the inventor over the work, and the document that shows this right is called a patent. As stated in Article 82/1 of the Industrial Property Law, “Patents are granted to inventions in all fields of technology, provided that they are new, involve an inventive step, and are industrially applicable.”
The patent holder has the right to prevent third parties from using the patented invention. The use, production, or sale of a patented work without the permission of the patent holder is prohibited.
To obtain a patent, an application must be made to the Turkish Patent and Trademark Office (TÜRKPATENT) with the necessary documents. It is very important to seek legal support from a specialized lawyer to ensure that the application and legal process proceed in accordance with the procedure and are completed in a shorter time. If the patent is not granted after the evaluation by the authorities, a certain period is given to make the necessary adjustments, and then the application can be made again. If deemed appropriate, the patent certificate will be granted. The conditions for obtaining a patent are regulated in Article 82 of the Industrial Property Law.
The Importance of a Trademark and Patent Attorney in Turkish Law
Trademark and patent law is a highly complex field that requires expertise. For any procedures and legal processes related to trademark or patent rights, it is essential to seek support from a lawyer specializing in this area. It is advisable to choose an experienced lawyer who specializes in this field, stays updated with the latest developments, and possesses a broad legal knowledge.
Working with a trademark attorney offers numerous advantages. Since potential legal issues and conflicts in trademark and patent registration applications can be anticipated, the lawyer will develop a strategy accordingly. As a result, the rights holder avoids potential disputes and completes the procedures successfully in a short period.
Antalya Trademark Lawyer – Antalya Patent Lawyer
Like many cities in Turkey, Antalya has many lawyers specializing in trademark and patent law. However, what is important is to find a lawyer who is knowledgeable, experienced, and up to date with the latest developments in this field. Working with a lawyer to carefully follow the legal process of trademark and patent applications and successfully complete them provides many advantages for citizens. Additionally, a citizen often seeks a lawyer they can trust, and sometimes they research online or ask around for recommendations.
In our law firm in Antalya, we have been resolving many legal issues for a long time. With our team of lawyers who are experts in trademark and patent law, we provide legal consulting and representation services to our clients. If you would like to receive legal support from us, you can contact us through the contact section or make an appointment.
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