Protection of a Well-Known Trademark in Light of a Recent General Assembly Decision
Introduction
In today's competitive business environment, the protection of trademarks plays a vital role in maintaining the competitive advantage of businesses and ensuring consumer trust. In this context, the protection of well-known trademarks is of particular importance in preserving the commercial value and reputation of brands. As the level of recognition of a brand increases in society, its distinguishing power, the visibility of the business behind the brand, and consumer trust in the brand also increase. For these reasons, well-known trademarks, which have a fragile structure, benefit from enhanced protection compared to ordinary brands.
In this article, firstly, the concept of a well-known trademark will be discussed, and then, in light of a recent decision of the General Assembly of the Court of Cassation, Article 6/5 of the Industrial Property Law No. 6769 (“IP Law”), regulating the protection of well-known trademarks in different goods and services, will be examined.
Concept of Well-Known Trademark
The concept of a well-known trademark was initially addressed at the international level by Article 6 bis of the Paris Convention for the Protection of Industrial Property (“Paris Convention”), and it is expressed as a mark "well known in that Country [Member State]”. The Paris Convention ensures the protection of these marks in member states even if they are not registered, and member states commit to treating foreign well-known trademark owners equally with domestic trademark owners. This protection provided by the Paris Convention was expanded with the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), and the owner of a well-known trademark was granted the right to request protection of their well-known trademark against marks that are identical or similar to their mark but for different types of goods and services.
As can be seen, well-known trademarks benefiting from enhanced protection constitute exceptions to the principles of trademark law based on registration, territoriality, and class. In Turkey, the protection of well-known trademarks is regulated by Articles 6/4 (protection of well-known marks for the same goods and services) and 6/5 (protection of well-known marks for different goods and services) of the IP Law. However, the concept of a well-known trademark is not defined in international and national regulations; it has been shaped by the opinions of doctrine and judicial authorities.
According to the prevailing view in doctrine, “the concept of a well-known trademark refers to marks known not only locally but also domestically and internationally by relevant circles, albeit not necessarily worldwide; marks belonging to citizens of a member state of the Paris Convention or persons residing in or having commercial or industrial establishments in those countries are understood to be meant.”
On the other hand, in the established jurisprudence of the Court of Cassation, a "well-known trademark is defined as an association that reflexively emerges among people in the same circles, regardless of geographical boundaries, culture, or age, and is tightly linked to a person or enterprise through reliability, guarantee, quality, strong advertising, and widespread distribution.”
Moreover, criteria for determining the well-known status of a mark have not been regulated in the Paris Convention, TRIPS Agreement, or the IP Law. In practice, judicial authorities and the Turkish Patent and Trademark Office (“Turkish Patent Office”) consider many criteria when evaluating the well-known status of a mark. The Court of Cassation emphasizes in its decisions that when evaluating the recognition of a mark, expert examination should be carried out the “WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks” (“WIPO Joint Recommendation”) published by the World Intellectual Property Organization (“WIPO”) in 1999 should be considered. The criteria contained in the WIPO Joint Recommendation, which are widely accepted in practice and doctrine but non-binding, are as follows:
- The degree of recognition of the mark in the relevant sector of society,
- The geographical area where the mark is used, the duration and intensity of use of the mark,
- The geographical area targeted by the mark's promotions, the duration and intensity of promotions,
- The size of the geographical area where the mark is protected by registrations or applications for registration,
- Decisions and practices indicating the recognition of the mark by official authorities, and
- The economic value of the mark.
In addition to the criteria specified in the WIPO Joint Recommendation, the Turkish Patent Office published the "Principles and Practice on the Degree of Well-Knownness of Trademarks" in 2006. These criteria were prepared to be consistent with the criteria specified in the WIPO Joint Recommendation but were more comprehensive.
Protection of Well-Known Trademark
Unlike the repealed Decree-Law No. 556 on the Protection of Trademarks (“Decree-Law No. 556”), under the IP Law well-known marks in terms of the Paris Convention have been included among the relative grounds for refusal in a manner consistent with the Paris Convention, and not as absolute grounds for refusal. Under Article 6/5 of the IP Law, "In cases where, due to the recognition level reached in Turkey, unfair benefit may be gained from the reputation of a registered or previously filed mark, the reputation of the mark may be harmed, or the distinctive character of the mark may be damaged, the application for registration of the same or a similar mark shall be rejected upon the objection of the holder of the earlier mark, provided that there is a legitimate reason, regardless of whether the application is made for identical, similar, or different goods or services."
As can be understood from the text of the article, the following conditions must be met for a well-known mark to benefit from enhanced protection:
- The well-known mark must be registered in Turkey or the application for registration must have been filed before the application of the opposed mark,
- The mark must have reached a high level of recognition in Turkey,
- The subsequent mark must be identical or similar to the well-known mark in a manner that may cause confusion,
- Due to the recognition level reached by the well-known mark in Turkey, at least one of the following risks must exist: (i) the risk of unfairly benefiting from the reputation of the well-known mark by the subsequent mark, (ii) the risk of harming the reputation of the well-known mark, or (iii) the risk of damaging the distinctive character of the well-known mark,
- The person applying for the subsequent mark must not have a legitimate reason, and
- The objection must be made within 2 months from the publication of the subsequent mark application in the Official Trademark Bulletin.
As can be seen, for the application of Article 6/5 of the IP Law, it is not sufficient to establish a connection between the recognition of the mark and the similarity of the conflicting marks. The subsequent mark must unfairly benefit from the reputation of the previous mark or be capable of damaging its distinctive character or reputation. This requirement is referred to in doctrine and judicial decisions as the presence of dilution cases.
In the Court of Cassation's previous decisions, it can be observed that once the recognition of the mark was established, dilution cases were automatically accepted, and the circumstances of the specific case were not examined. However, in recent years, the Court of Cassation has changed its approach, requiring the examination of dilution cases within the framework of the circumstances of the specific case and the presence of objective evidence. Indeed, in the decision of the General Assembly of Civil Chambers of the Court of Cassation (“General Assembly”) dated 15.02.2023 and numbered 2023/84 E., 2023/72 K. ("General Assembly Decision") , it is observed that a decision in line with the new approach was made.
In the case subject to the General Assembly Decision, the defendant applied to the Turkish Patent Office on 28.11.2012 for the registration of the term "Dardanel BiliSİM+shape" as a trademark. Upon the publication of the application, the claimant objected, citing similarity, usage based on precedence, and claims of recognition based on their trademarks with the main element "DARDANEL+shape." The objection was ultimately rejected by the Re-examination and Evaluation Board ("REB"). In the REB decision, it was determined that the trademarks with the term "DARDANEL+shape" belonging to the claimant had reached the level of a well-known trademark due to their use on food products; however, it was found that the application of the defendant for the term "Dardanel BiliSİM+shape" pertained to various machines and devices, engineering, computer and design services, and wholesale and retail sales services of certain goods outside the commercial activities of the claimant.
Following the REB decision, an action for the cancellation of the REB decision and the invalidation of the trademark was filed by the claimant, and the decision of the first instance court accepting the claim was appealed by the Turkish Patent Office. Although the decision of the 11th Civil Chamber of the Court of Cassation was annulled, the Court of Appeal's decision was resisted. Upon the appeal of the resistance decision by the Turkish Patent Office, the file was examined by the General Assembly.
The General Assembly emphasized that when a well-known trademark is used in different sectors, it is necessary to investigate whether the impressions and associations of average consumers are influenced positively among marks, leading to unfair benefits gained from the well-known trademark or damage to the reputation of the well-known trademark. In this regard, reference was made to the decision dated 02.04.2014 and numbered 656/427 of the General Assembly, and it was stated that in light of the conditions and evidence of the specific case, a detailed expert evaluation should be made to determine whether such a connection exists.
However, it was found that the first instance court in the case under review did not sufficiently investigate whether the conditions stipulated in Article 8/4 of the repealed Decree-Law No. 556, corresponding to Article 6/5 of the IP Law, were present. As a result, the General Assembly did not find it appropriate to accept the decision to uphold the case due to the deficiency and lack of suitability for examination in the expert report prepared within the scope of the file.
Conclusion
The principles dominating trademark law, namely the principle of registration, the principle of territoriality, and the principle of limited protection regarding the goods and services covered by the trademark, are most significantly exceptioned by well-known trademarks. This exceptional protection aims to ensure that the reputation and recognition of a well-known trademark are not harmed by similar or identical marks used in different countries and sectors. In this context, the protection of well-known trademarks against brands that are identical or similar to their own but operate in different goods and services is an important regulation. The Court of Cassation indicates that if marks used in different sectors create a positive association in the minds of consumers and affect their purchasing preferences, the well-known trademark should be protected. This protection ensures that well-known trademarks are protected not only in their own sectors but also against unfair competition and dilution in other sectors. Additionally, in line with the current opinion of the Court of Cassation, the General Assembly Decision emphasizes the need for a detailed evaluation of the conditions and evidence of the specific case, considering the status of recognition and the impact of the use of the trademark on consumers. Expert reports need to be comprehensive and suitable for examination to ensure a fair decision. These principles provide a comprehensive framework for trademark owners to protect their brands and combat unfair exploitation.
- Yasaman, Hamdi: Marka Hukuku İle İlgili Makaleler, Hukuki Mütalaalar, Bilirkişi Raporları II, Vedat Kitapçılık, 2005, p. 18.
- See: Court of Cassation 11th Civil Chamber, 24.03.2003, 2002/10575 E., 2003/2752 K., www.lexpera.com; Court of Cassation 11th Civil Chamber, 28.06.2004, 2003/13167 E., 2004/7103 K., www.lexpera.com (A.D. 24.05.2024).
- See: Court of Cassation 11th Civil Chamber, 12.06.2017, 2016/1195E., 2017/3608 K., www.lexpera.com, (A.D. 24.05.2024).
- For the WIPO Joint Recommendation see: https://www.wipo.int/edocs/pubdocs/en/wipo_pub_833-accessible1.pdf, (A.D. 24.05.2024).
- For the Principles of the Turkish Patent Office see: https://www.turkpatent.gov.tr/ozel-korunan-markalar-bilgisi, (A.D. 24.05.2024).
- See: General Assembly of Civil Chambers of the Court of Cassation, 15.02.2023, 2023/84 E., 2023/72 K., www.lexpera.com (A.D. 26.05.2024)
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