Recent Update On Well-Known Trademark Protection In Türkiye

Well-known trademark registry of the Turkish Patent and
Trademark Office (“Office”) became a discussion topic
after the Turkish Court of Cassation decided in 2020 that the
Office has no authority to create and maintain a registry for
well-known trademarks. (Turkey well-known trademark registry is again open
for debate)

First instance IP courts and regional courts of appeals have
adopted this decision immediately and changed their practice,
whereas the Office has continued to maintain its registry for
recording well-known trademarks.

In one of its decision rendered in 2023 (dated February 1, 2023
and numbered 2023/83 E. 2023/7 K.), which the authors were made
aware of recently, the General Assembly of the Court of Cassation
ruled that even though the Office created a registry to record the
trademarks which are well-known according to its examination, it is
not entitled to create such a registry under existing laws and the
well-known status of a trademark should be proven in each case as
it is not a stable fact.

In addition, the General Assembly ruled that the courts are not
entitled to render a decision about determination of well-known
status in a way that will constitute a final verdict on the
well-known status. It means that the courts could examine and
decide whether a trademark is well-known or not as a prior issue
only, while deciding on the claims of the claimant that are based
on well-known trademark argument. In other words, the courts are
not authorised to determine whether a trademark is well-known or
not as part of the verdict where their decisions on the claims of
the claimant are explained.

The decision of the General Assembly is binding for the courts
and the courts are expected to decide in line with this decision in
cases where well-known status of the trademark would be
decided.

On the other hand, throughout 2024 the Office has not changed
its practice, and it is still possible to file an application for
determination and recordation of well-known status of a trademark
by the Office. Although the Office has announced official fees for
such applications also in January 2024, there has not been any
change in the legislation as discussed in our previous article. (Debate on well-known Trademark Registry Expected
to be Resolved Soon)

While this issue remains unsolved, the Court of Cassation
rendered a decision (dated January 25, 2024 and numbered 2022/4067
E. 2024/620 K.) after the decision of General Assembly’s
above-mentioned decision where there are references to well-known
trademark register of the Office and scope of protection that a
well-known trademark recordation provides with regard to goods and
services. It seems that the Court of Cassation overlooked the
General Assembly’s decision as the date of both decisions are
close and the courts shall follow the General Assembly’s
guidance in the future cases.

The Office is expected to announce its new official fees for
2025 soon, including the fee for filing an application for
determination and recordation of well-known status. Meanwhile, the
right holders and practitioners are eager to know whether there is
a new regulation that will enter into force to give the Office
authority to maintain the well-known trademark registry. This
contradictory situation on well-known trademark registry should be
resolved with a clear and definite solution.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.