MALICIOUS REGISTRATION AND SANCTIONS UNDER INTELLECTUAL AND INDUSTRIAL PROPERTY RIGHTS 16 December 2020

1. WHAT IS THE TRADEMARK?

Trademark is defined as the marks that distinguish the goods or services of an enterprise from the goods or services of other enterprises. Trademark right and protection of this right are regulated within the scope of the Industrial Property Law ("Law"). Marks that can be trademarks are specified in Article 4 of the Law. According to this the trademark can consist of all kinds of marks, words, including personal names, figures, colors, letters, numbers, sounds and the shape of the goods or their packaging. However, according to the Law, the trademark must have the conditions to distinguish the goods or services of an enterprise from the goods or services of other enterprises and to be demonstrated in the registry so that the subject of the protection provided to the trademark owner is clearly and precisely understood.

2. PROTECTION OF THE TRADEMARK WITH REGISTRATION

It is stipulated in Article 7 of the Law that a trademark must be registered in order to be protected. In this respect, the protection of trademarks is based on registration and the rights arising from the trademark registration are exclusively owned by the trademark owner. Registration applications are made to the Turkish Patent and Trademark Office ("Office"). First of all, the form of application is examined by the Office. In this context, it is examined whether the application is made by the persons who can benefit from the protection provided by the Law (art.3) and whether it meets the application requirements (art.11) stipulated in the Law. In the absence of any deficiencies in terms of form, the existence of absolute grounds for refusal regulated in Article 5 of the Law shall be taken into account by the Office ex officio.

On the other hand, in order for the trademark to be registered, the relative grounds for refusal stipulated in Article 6 of the Law should not exist. However, relative grounds for refusal are examined upon the objection of the related persons. Therefore, the Office does not have the authority to automatically examine the relative grounds for refusal.

If the application is not rejected as a result of the examination made by the Office in terms of formal matters and absolute reasons for refusal, it is published in the Trademark Bulletin. Objections to be made especially in terms of relative grounds for refusal must be submitted to the Office in writing and with justifications within two months from this publication of the trademark application.

3. MALICIOUS REGISTRATION AND SANCTIONS TO BE APPLIED

According to the generally accepted understanding in the Court of Cassation practice and trademark law; applications and registrations for the purpose of making unfair use of someone else's trademark by misusing the trademark protection provided due to the registration or for the purpose of backing up, trademark trade or blackmail by not actually using it are considered as malicious registration. Therefore, malicious trademark registration is expressed as acting against the good faith while registering the trademark. Thus, cases such as registering a mark that is known to be used by someone else without registration as a trademark or registering a trademark even though someone knows the registration barriers are considered as malicious registration.

Before the mentioned Law on the protection of trademarks, the Decree Law No. 556 on the Protection of Trademarks (“Decree”) was in force. Although the bad faith was regulated as a ground for objection in terms of this Decree, the malicious registration was not considered as a separate cause of nullity. However, in the doctrine, the malicious registration was accepted as a cause of nullity. In the judicial practice, first of all, malicious registration was not seen as a reason for nullity, but after a decision of the Court of Cassation dated 2008, this matter was accepted as a reason for nullity. According to this decision: 

“Nullity request based on the claim that the trademark registration was made in bad faith, which is not included in the limited number of nullity reasons regulated specifically in Article 42 of the Decree Law, should be evaluated systematically and principles of the Decree Law and within the framework of article 2 of the Turkish Civil Code ("TCC") which is a general provision and basic principle. According to Article 2 of the TCC, “Everyone has to abide by the good faith while exercising their rights and fulfilling their debts. The order of law does not protect the obvious abuse of a right." ... Even if this matter is not regulated as a nullity reason in Article 42 of the Decree Law, achieving the same result is in accordance with the spirit of the Decree, since it is not possible to protect bad faith in accordance with Article 2 of the TCC, which is a general provision and basic principle.”[1]

In this respect, although the nullity of the malicious registration is not explicitly stated in the Decree; It was decided to be null and void by the courts because it violated the good faith. In the Law that annulled the Decree, the subject of malicious registration was considered, beyond doubt, among the reasons for both relative refusal and nullity.

As a result of the malicious registration application being considered among the relative grounds for refusal regulated in Article 6 of the Law, if the concerned parties object to the application made in bad faith, the registration application may be rejected by the Office. In addition, malicious registration explicitly (art.25) is among the reasons for nullity in the Law.  Because in accordance with the 25th article of the Law; In the event that there is one of the absolute grounds for refusal or the relative grounds for refusal despite the registration made, it is predicted that the court will decide the trademark to be null and void. According to the Law; nullity of the trademark may be requested from the court by those who have interests, public prosecutors or state institutions and organizations. It is stated that the persons registered as trademark owners at the time of the lawsuit or their legal successors will be shown as a party to the lawsuit to be filed. The nullity decision will be taken effect from the date of the trademark application. Thus, the protection provided by the Law to the trademark whose nullity is decided is deemed to have never arisen. Finalized decisions regarding the nullity of the trademark will rule against everyone. After the finalization of the nullity decision, the court sends this decision to the Office ex officio and then the trademark is canceled from the registry.

In addition, it should be noted that, as a rule, the trademark owner cannot claim own trademark as a reason for nullity, if the trademark owner has been silent for five consecutive years although trademark owner knows or should have known that a subsequent trademark was used (art.25 / 6). However, if the subsequent trademark registration is in bad faith, this provision will not be applied and the loss of rights as a result of the silence of the trademark owner will not occur.

As a result; In terms of malicious registration application, the real right holders can request the rejection of the application from the Office within two months following the publication of the trademark application by using their right of objection. In case the trademark is registered despite the bad faith, the nullity case of the trademark can be filed and the trademark can be canceled from the registry.