Trademark Registration and Trademark Infringement -- Application and Litigation Process

A trademark is a sign that serves to distinguish the goods or services of one enterprise from the goods or services of other enterprises. Registering a trademark provides the trademark owner with strong legal protection and makes it possible to assert trademark rights against third parties. The Industrial Property Code No. 6769 (IPC) comprehensively regulates the acquisition and protection of trademark rights and the legal remedies available in case of trademark infringement. In this article, we will examine in detail the trademark registration process, TURKPATENT application, opposition procedure, trademark infringement lawsuits, and compensation claims.

What Is a Trademark and Which Signs Can Be Registered as a Trademark?

Pursuant to IPC Art. 4, a trademark may consist of any sign, including words including personal names, figures, colors, letters, numbers, sounds, and the shape of goods or their packaging, that serves to distinguish the goods or services of one undertaking from those of other undertakings. For a trademark to be registrable, it must be distinctive and capable of being represented in the register.

Types of trademarks that can be registered include: word marks (such as Nike, Apple), figurative/logo marks, letter and number marks, color marks (single color or color combination), sound marks (melody, jingle), three-dimensional marks (shape of the product or packaging), motion marks, hologram marks, and combinations thereof.

However, not every sign can be registered as a trademark. Absolute grounds for refusal are regulated in IPC Art. 5, and relative grounds for refusal in Art. 6. Absolute grounds for refusal include signs devoid of distinctive character, signs used by everyone in the field of trade or belonging to a particular professional group, signs containing shapes that are necessary due to the nature of the goods, signs that may mislead the public, and signs contrary to public order.

How Is a Trademark Registration Application Made to TURKPATENT?

A trademark registration application is made to the Turkish Patent and Trademark Office (TURKPATENT). The application process consists of the following stages:

Step 1 - Preliminary Research: Before filing a trademark application, it is of great importance to research whether similar or identical trademarks exist. Existing registered trademarks and applications can be queried in TURKPATENT's online trademark research database. Additionally, international trademark databases (WIPO Madrid system) should also be checked. Preliminary research is critical for preventing applications that carry a risk of refusal.

Step 2 - Completing the Application Form: The application form is completed through TURKPATENT's online application system (EPATS) or physically. The application specifies the representation of the mark, the identity/trade registry information of the applicant, and the list of goods and services (according to the Nice Classification).

Step 3 - Goods/Services Selection with Nice Classification: Trademarks are divided into 45 classes according to the international Nice Classification (classes 1-34 for goods, classes 35-45 for services). The applicant specifies the goods and services for which they will use their trademark by selecting from these classes. Class selection determines the scope of protection of the trademark.

Step 4 - Payment of Application Fee: The application fee determined by TURKPATENT is paid for the trademark registration application. The fee varies according to the number of classes selected. The basic fee applies to one class; an additional fee is paid for each additional class.

Step 5 - Formal Examination: TURKPATENT examines whether the application complies with formal requirements. If deficiencies are found, the applicant is given a two-month period for completion.

Step 6 - Substantive Examination: Following the formal examination, TURKPATENT examines the application in terms of the absolute grounds for refusal in IPC Art. 5. If one of the absolute grounds for refusal is found, the application is refused. An objection against the refusal decision can be filed with the Re-examination and Evaluation Board (YEDK).

Step 7 - Publication and Opposition Process: The application that passes the substantive examination is published in the Official Trademark Bulletin. Within two months from the publication date, third parties may file an opposition. The opposition may be based on the relative grounds for refusal in IPC Art. 6 (confusion with a prior registered trademark, well-known trademark, unauthorized application by an agent, etc.).

Step 8 - Registration: If no opposition is filed or if the opposition is rejected, the trademark is registered and a Trademark Registration Certificate is issued. Trademark registration is valid for ten years from the application date and can be renewed for ten-year periods.

How Does the Opposition Procedure Work in Trademark Registration?

Opposition is possible at two stages in the trademark registration process: opposition upon publication and lawsuit against the YEDK decision.

Opposition Upon Publication (IPC Art. 18): Within two months from the publication of the trademark application in the Official Trademark Bulletin, interested parties may file an opposition. The opposition is filed with TURKPATENT, and the grounds for opposition and supporting documents are submitted. Opposition grounds are generally based on the likelihood of confusion with a prior registered trademark, exploitation of a well-known trademark, or claims of bad faith.

Lawsuit Against YEDK Decision (IPC Art. 20): Within two months from the notification of TURKPATENT's or YEDK's decision to refuse the trademark application or reject the opposition, a lawsuit may be filed at the Ankara Intellectual and Industrial Property Rights Civil Court. This lawsuit is filed against TURKPATENT and, in necessary cases, against the trademark applicant.

What Is the Scope and Limits of Trademark Rights?

The registered trademark owner has the exclusive right to use their trademark pursuant to IPC Art. 7. The scope of trademark rights includes: preventing others from using the trademark on goods or services identical or similar to the goods or services covered by the registration, preventing unauthorized use of the trademark, prohibiting the import or export of goods bearing the trademark, and carrying out licensing and assignment transactions.

However, trademark rights also have certain limitations. Pursuant to IPC Art. 14, a registered trademark may be revoked if it has not been put to genuine use within five years from registration (revocation for non-use). Additionally, the trademark becoming a generic name (genericism) is also a ground for revocation. Under the principle of exhaustion of trademark rights, trademark rights are deemed exhausted over goods placed on the market with the trademark owner's consent.

What Constitutes Trademark Infringement?

Pursuant to IPC Art. 29, the following acts are considered trademark infringement:

Using the trademark or its indistinguishable equivalent without the trademark owner's permission, using a sign identical or similar to the registered trademark on identical or similar goods/services in a manner likely to create confusion, using a sign identical or similar to the registered trademark on different goods/services in a manner that unfairly benefits from the reputation of the trademark or damages its repute, expanding rights granted through licensing without authorization, placing on the market, commercially possessing or offering for sale goods bearing the trademark, and unfairly using the trademark as a domain name on the internet or in any other manner.

Trademark Infringement Lawsuits and Compensation

In case of trademark infringement, the legal remedies available to the trademark owner are regulated in IPC Art. 149-150:

Declaration of Infringement Action: The determination of the act constituting trademark infringement is requested. This action is important for documenting the infringement act.

Cessation (Injunctive) Action: The cessation of the ongoing infringement act is requested. Provisional injunctions may also be requested in this action.

Prevention of Infringement Action: The prevention of infringement acts that have not yet occurred but carry a risk of occurrence is requested.

Material Compensation Action: Compensation for material damage suffered due to trademark infringement is requested. Material compensation can be calculated in three ways: actual damage, lost profits, and profits obtained by the infringer (IPC Art. 151). The trademark owner can choose one of these three calculation methods.

Moral Compensation Action: Moral compensation may be claimed in cases where the trademark's reputation is damaged or the trademark owner's personal rights are violated due to the infringement act.

Seizure and Destruction of Infringing Products: Pursuant to IPC Art. 149, the seizure of infringing products, removal of trademarks from them, or destruction of the products may be requested.

The competent court in trademark infringement lawsuits is the intellectual and industrial property rights civil court. In places where this court does not exist, the civil court of first instance is competent. The authorized court is the court at the plaintiff's place of residence or the place where the infringement act was committed.

Criminal Aspect of Trademark Infringement

Pursuant to IPC Art. 30, acts of trademark infringement also constitute crimes. A person who infringes on another's trademark right is punished with imprisonment from one to three years and a judicial fine of up to twenty thousand days. Unauthorized removal of signs related to trademark protection also constitutes a crime.

The production, sale, or import of counterfeit goods is also subject to criminal sanctions. In practice, trademark infringement crimes are generally investigated and prosecuted upon complaint. The trademark owner may pursue both civil and criminal proceedings simultaneously.

International Trademark Registration and the Madrid Protocol

Trademark protection is territorial; that is, a trademark registered in one country is only protected within that country's borders. For international trademark protection, separate registration applications can be made in each country, or a collective application can be made through the Madrid Protocol.

The Madrid Protocol is an international trademark registration system managed by the World Intellectual Property Organization (WIPO). Based on a trademark registered or applied for in Turkey, a Madrid Protocol application can be made through TURKPATENT. Through this system, trademark protection in multiple countries can be obtained with a single application.

An EU Trademark application made through the European Union Intellectual Property Office (EUIPO) also provides valid trademark protection in all EU member states. It is of great importance for businesses engaged in international trade to plan their trademark protection strategies according to target markets.

Trademark Licensing, Assignment and Pledge

A registered trademark, as an asset value, may be subject to various legal transactions:

Trademark Licensing (IPC Art. 24): The trademark owner may grant the right to use the trademark to third parties through a license agreement. A license may be granted as exclusive or non-exclusive. While an exclusive licensee can file trademark infringement lawsuits, a non-exclusive licensee does not, as a rule, have this right.

Trademark Assignment (IPC Art. 148): A registered trademark may be assigned for all or part of the goods or services covered by the registration. The assignment transaction must be recorded in the TURKPATENT register.

Trademark Pledge: A registered trademark may be pledged as security for a debt. The pledge is recorded in the TURKPATENT register, thereby becoming enforceable against third parties.

Disclaimer: This article has been prepared for general informational purposes and does not constitute legal advice. It is recommended that you consult a lawyer specialized in intellectual property law for specific situations you may encounter regarding trademark registration, trademark infringement lawsuits, and intellectual property rights.