COEXISTENCE AGREEMENT UNDER TRADEMARK LAW 22 December 2020

1. Coexistence Agreement

Agreements called "coexistence agreements" in trademark law; it is made between two or more trademark owners of the same or similar trademark, and allows trademarks to coexist peacefully without the possibility of confusion. In Turkish law, the coexistence agreement of trademarks appears within the scope of the Industrial Property Law No. 6769 ("IPL"). Accordingly, the coexistence agreement within the framework of the IPL is foreseen as consenting to the registration of the trademark application.

As a rule; regarding the same or the same type of goods or services, the marks that are same or indistinguishably similar as the registered or previously applied trademark are considered among the absolute grounds for refusal in trademark registration pursuant to Article 5/1 of the IPL. Therefore, the registration application of the marks that are identical or indistinguishably similar as the registered trademark will be rejected ex officio by the Turkish Patent and Trademark Office ("Office") and these marks will not be registered as trademarks.

However, an exception based on the consent of the previous trademark owner has been stipulated in the provision of Article 5/3 of the IPL. According to this; it has been accepted that a trademark application cannot be rejected by the Office, if a notarized document is presented showing that the previous trademark owner expressly consented to the registration of the application. Thus, with the consent given by the previous trademark owner, it was possible to register the same trademark for the same goods or services on behalf of two different undertakings. In the preamble of IPL, it was stated that with the aforementioned provision, it was aimed to protect the will of the applicants for coexistence in the market. In this way, the legislator provided superiority to the will of the parties and concluded that the registration of the same trademarks in terms of the same goods and services does not require ex officio rejection if the parties agree. For this reason, the registration of the marks that are same or similar as the registered trademark will be possible if the previous trademark owner consents to the use of the trademark by another person during the registration process. Otherwise, the registration application of the marks that are same or similar as the registered trademark will be rejected by the Office.

As a result of the opportunity to consent to the registration of the trademark application brought within the scope of the IPL; the second trademark bearing the same or similar mark with the previous trademark can be registered and will benefit from the protective provisions provided under the IPL. In this respect, the previous trademark owner will not be able to withdraw this consent. With the express consent to the registration of the application, it will be possible to protect and use both trademarks together. Therefore, as a result of the coexistence right provided to the second trademark owner, both trademarks will be legally present in the market.

It should be noted that; the legal basis of the coexistence agreement in Turkish law is the consent to the registration of the trademarks that are same or indistinguishably similar as the registered trademark in the provision of article 5/3 of the IPL. However, the essential component of the coexistence agreement and the rights and obligations of the parties are not regulated in the provisions of the IPL. In this respect, it can be accepted that the parties can freely determine the terms of the coexistence agreement, taking into account the principle of freedom to contract. However, considering the limits of the freedom of contract in accordance with the Turkish Code of Obligations; it is not possible to conclude contracts that are against the mandatory provisions of the law, immorality, contrary to public policy, violation personal rights or whose subject is impossible.

2.  Rules and Procedures Regarding Consent

It is sufficient to state that the consent foreseen in the article 5/3 of the IPL should be notarized and it was stated that the rules and procedures regarding consent will be regulated by a regulation. In this respect, the procedures and rules regarding the form, substance and presentation of consent have been regulated within the framework of Article 10 of the Regulation on the Implementation of Industrial Property Law ("Regulation").

Pursuant to Article 10/1 of the Regulation, the consent has to be arranged in the form of a signed form accepted as valid by the Office and approved by a notary. It was also stated that the consent in question should include the following components:

1. Identity and contact information of consented applicants.
2. If the consent form is submitted at the application stage, sample of the trademark subject to consent; if is presented at the objection stage, the application number subject to consent
3. Identity and contact information of the consenting trademark owners and the previous application subject to consent or trademark application or registration numbers.
4. Consented goods or services and their category numbers.
5. If the consent form is signed by an attorney on behalf of the application or trademark owner; a notarized power of attorney containing the power of consent or a notarized copy of the said power of attorney.

In case of deficiency of the aforementioned components, the applicant is given a period of two months to correct the deficiencies in accordance with the Regulation Article 10/2. If the aforementioned deficiencies are not corrected within the time limit, the request is deemed not made. If the consent form is not submitted to the Office although there is a request for consent; In this case, a deficiency notification is not made and the request is deemed to have not been made.

In accordance with Article 10/3 of the Regulation, the consent may be submitted to the Office together with the application form or in case of an objection to the decision, until the decision on the objection is made. In this sense, the consent cannot be withdrawn. At the same time, the consent must be unconditional.

As a rule, it is sufficient for the previous trademark owner to give consent to the trademark application. However, if there are exclusive licensees registered in the Registry regarding the previous trademark, the written permissions of the license holders must also be submitted in order for the trademark application to be accepted (Regulation Article 10/4). It is sufficient to have this permission given by the license holders in writing.

At the same time, it is clearly stated in Article 10/6 of the Regulation that a separate consent is required for each trademark application. Therefore, it is not possible to issue consent for more than one trademark application or for a general consent.