Trade Mark Registration and Infringement — Application and Court Procedure

A comprehensive guide to the trade mark registration process, the TÜRKPATENT application, trade mark rights under Industrial Property Law No. 6769, the opposition procedure, infringement actions and claims for damages.

A trade mark may consist of signs capable of distinguishing the goods or services of one undertaking from those of others and capable of being represented in the register clearly and precisely. Industrial Property Law No. 6769 (SMK) governs trade mark registration, the scope of protection and the legal remedies available in cases of infringement.

What Is a Trade Mark and Which Signs May Be Registered?

Under SMK Art. 4 a trade mark may consist of any kind of sign — including personal names, words, figures, colours, letters, numerals, sounds and the shape of goods or their packaging — provided it distinguishes the goods or services of one undertaking from those of others and can be represented in the register in a manner enabling the subject matter of protection to be understood clearly and precisely.

A word, figure, colour arrangement, sound, movement, three-dimensional shape or a combination of these may be the subject of an application. SMK Art. 5 sets out absolute grounds for refusal — non-distinctive, descriptive, deceptive signs, those contrary to public order or morality and the others listed — and Art. 6 relative grounds based on earlier rights. The type of sign alone does not guarantee registration; the list of goods and services and the context of use are examined.

How Is an Application Made to TÜRKPATENT?

The application is made through TÜRKPATENT's Electronic Application System (EPATS). It contains a representation of the mark, the applicant's identity and address details, a list of goods and services under the Nice Classification and the application fee. The Office first examines the formal requirements and the absolute grounds for refusal. An acceptable application is published in the Bulletin; third parties may oppose within two months of publication. If, after any opposition and counter-statement, the application becomes final, the mark is entered in the register and a certificate is issued upon timely payment of the registration fee.

Since the fees and processing times change annually and according to the scope of the file, a fixed “6–10 months” or an estimated total cost should not be guaranteed. Current amounts should be checked against TÜRKPATENT's 2026 fee schedule.

How Does the Opposition Procedure in Trade Mark Registration Work?

Within two months of publication of an application in the Official Trade Mark Bulletin, interested persons may oppose to TÜRKPATENT under SMK Art. 18, setting out their grounds and evidence. The Office notifies the opposition to the applicant and gives an opportunity to submit observations. In an opposition based on an earlier mark, the applicant may, where the conditions are met, request the opponent to submit evidence of genuine use.

An appeal against the decision of the Office's opposition unit may be made to the Re-examination and Evaluation Board within two months of notification. An action for annulment of the Board's final decision may be brought before the Ankara Intellectual and Industrial Property Civil Court within two months of notification; the standing of TÜRKPATENT and of the applicant or opponent is assessed together according to the nature of the dispute.

What Are the Scope and Limits of Trade Mark Rights?

The proprietor's power of prohibition under SMK Art. 7 covers the use of identical or similar signs for identical or similar goods and services in a manner giving rise to a likelihood of confusion, and the extended protection afforded to well-known marks. The protection is not absolute: the limits in SMK Arts. 7 and 152 apply, such as the honest use by natural persons of their own name or address, descriptive use concerning the kind, quality or intended purpose of goods or services, and use after goods bearing the mark have been put on the market by the proprietor or with their consent. If a mark is not genuinely used in Türkiye within five years, or if use is suspended for five uninterrupted years, it may be revoked in the absence of proper reasons. Since 10 January 2024, revocation requests under SMK Art. 26, including for non-use, have been examined administratively by TÜRKPATENT; appeals against the Office's decisions are reserved.

What Constitutes Infringement?

SMK Art. 29 treats as infringement the uses falling within the prohibition in Art. 7 without the proprietor's consent; commercial acts such as putting on the market, stocking, importing or exporting goods bearing the sign; a licensee exceeding the limits of the contract; and registering the right in one's own name by usurpation. Use of an identical sign for identical goods or services, similarity with a likelihood of confusion, and taking unfair advantage of the repute of a well-known mark are subject to the separate conditions in Art. 7.

The use of a domain name, keyword or trade name is not automatically an infringement in every case; whether the sign is used as a trade mark in a manner producing a commercial effect, any proper reason, the relationship between the goods or services and the likelihood of confusion are examined. The limits in SMK Arts. 7 and 152, such as exhaustion, honest descriptive use and use of a personal name, are reserved.

Infringement Actions and Damages

The rightholder may make the claims in SMK Art. 149: a declaration of infringement, its prevention and cessation; material and moral damages; seizure of the infringing products and means; ownership, alteration of form or destruction; and publication of the final judgment. Material loss covers actual loss and lost profit. Under SMK Art. 151 lost profit is calculated by one of the methods chosen from the rightholder's probable income, the infringer's net profit or a hypothetical licence fee; the court determines it on the concrete evidence.

The court with subject-matter jurisdiction is the intellectual and industrial property civil court; where no such court has been established, the civil court of first instance designated by the Council of Judges and Prosecutors acts. An interim measure requires prima facie proof that the infringement exists or poses a serious and imminent risk.

The Criminal Dimension

SMK Art. 30 does not treat every trade mark infringement as an offence. A person who, by imitation or by creating a likelihood of confusion, infringes another's trade mark right and produces goods or supplies services, offers them for sale or sells them, imports or exports them, or purchases, holds, transports or stores them for commercial purposes, is punished by imprisonment of one to three years and a judicial fine of up to twenty thousand days. Removing without authority a sign indicating trade mark protection, and disposing without authority of another's trade mark right, are separate offences in the article. Investigation and prosecution are subject to complaint. Whether the mark is registered in Türkiye, whether the act constitutes one of the alternative acts in the offence definition, intent, seizure and destruction, and the conditions for effective remorse are examined separately on the facts. Not every finding of infringement in civil proceedings automatically produces a criminal conviction.

International Registration and the Madrid Protocol

Trade mark protection is territorial; a mark registered in one country is protected only within that country's borders. For international protection, separate applications may be filed in each country, or a single application may be made through the Madrid Protocol.

The Madrid Protocol is the international trade mark registration system administered by the World Intellectual Property Organization (WIPO). On the basis of a mark registered or applied for in Türkiye, an application under the Madrid Protocol may be made through TÜRKPATENT. That system enables protection to be obtained in several countries through a single application.

An EU trade mark application through the European Union Intellectual Property Office (EUIPO) also provides protection valid in all EU member states. It is of considerable importance that businesses trading internationally plan their trade mark protection strategies according to their target markets.

Licensing, Assignment and Pledge

A trade mark application or registration may be assigned and may be the subject of a licence or a pledge. Legal transactions must be in writing; the validity of an assignment agreement additionally requires notarial certification. Rights arising from legal transactions not entered in the register cannot be asserted against third parties acting in good faith. A licence may be exclusive or non-exclusive. Unless otherwise agreed, a non-exclusive licensee may not bring proceedings; an exclusive licensee may, unless the contract provides otherwise, bring in their own name the actions available to the rightholder. A non-exclusive licensee may bring proceedings on the statutory conditions where they have given notice to the rightholder through a notary, no action has been brought within three months and there is a risk of serious harm.

Frequently Asked Questions

What is the period for opposing a trade mark?

Two months from publication of the application in the Bulletin.

What happens to an unused mark?

If there has been no genuine use for five years from registration, or use has been suspended for five uninterrupted years, revocation may be sought before TÜRKPATENT in the absence of proper reasons.

How are damages calculated?

In addition to actual loss, lost profit is calculated by one of the methods of probable income, the infringer's net profit or a hypothetical licence fee.

Is an assignment valid without registration?

The assignment agreement must be in writing and notarially certified. Failure to register affects the ability to assert the transaction against third parties acting in good faith.