IF YOUR TRADEMARK IS REGISTERED IN THE NAME OF ANY OTHER PERSON IN TURKEY
Recently, we live in a period with globalization of trade and increased commerce among the countries.
The developments, especially in the area of internet, ensure globalization in the commercial field.
It is currently possible for you to introduce your products, trademark in the World via Internet and find new customers from any place of the World.
As is known, trademark is an industrial property right. Many trademarks are the most important capital of the establishment at the present time.
Trademarks provide right of ownership and legal protection for countries where they are registered in accordance with the trademark law.
If your trademark is not registered in the country where you engage in a business, you may be stuck in a difficult situation legally.
Even it may not be possible for you to engage in a business if your trademark is registered in the name of other persons/firms in the countries where you carry out a commercial activity.
Turkey is a developing country in terms of trade and;
Turkey’s population is 80 million with a number of Tourists being 40 million per year and a market for 120 Million persons.
Number of its Fairs and Commercial Events per year is above 1.000 and it is the 15th economy in the world with a market size of 1 Trillion 300 Billion.
It has the third largest internet market of the World with 20 million internet users.
Number of registered trademarks in Turkey is 900 thousand and 100 thousand trademark registrations per year are realized in recent periods. Approximately 10 thousand foreign (international) trademarks are registered in Turkey annually.
Firms to engage in a business activity in Turkey should firstly have their trademark registered with the Turkish Patent Office (TURKPATENT).
For arranging registration of your trademark in Turkey, you must search if your trademark is eligible for being registered with the TURKPATENT firstly.
You may personally make trademark similarity inquiry on the website of the TURKPATENT or make with the professional support of the Trademark and Patent Firms operating in Turkey.
If your trademark is eligible for being registered with the TURKPATENT as a result of the inquiry, you should make an application for trademark.
However, if it is found in such inquiry that a trademark which is similar to or identical with your trademark is registered in the name of another firm in Turkey, it would be legally inconvenient for you to engage in a business on the Turkish market in this case.
In this case, you are required to obtain permission of the registration holder in Turkey and cause trademark registration to be null and void/cancelled in order to engage in a business with your trademark in Turkey.
It is firstly required to consider registration date of the trademark in order to file an action for nullity of trademark in Turkey because the limitation of time for 5 years may have expired in accordance with the Turkish Law. Although the limitation of time for 5 years does not apply to malicious registration of trademark, it is required to prove bad faith legally.
Another important point is that if the firm which registered the trademark in Turkey is malicious.
Such firm may have used the trademark in good faith and casually and have registered it in its own name.
It is frequently encountered that there are casual similarities in trademarks consisting of words commonly used throughout the World (lion, wolf, world, star, Halley, mellissa, flower, micro, beautiful, natural ... etc.).
In such cases, it is very difficult to mention that the trademark registered in Turkey has been obtained in violation of the law and in bad faith. Evidence supporting the fact that the registration was obtained in bad faith is required (e.g. the facts that you have a business relationship with the registered firm, that your trademark is well-know).
If your trademark has been registered by another firm in Turkey casually and in good faith and is used actually, it is difficult to get a result by filing an action for nullity/annulment. In such case, it is more logical to contact with the firm in Turkey and purchase the trademark or get license to use the trademark.
However, if the trademark was registered in Turkey in bad faith, it is possible to render the registered trademark null and void/annulled in Turkey if your trademark does not consist of generic words throughout the World and thus if it is not possible to mention about casual similarity.
As encountered frequently, if you have a business relationship with the firm which registered your trademark in Turkey and even if such firm is your distributor, since bad faith is obvious in this case, it is possible to get a positive result by filing an action for nullity/annulment.
On the other hand, some persons/firms identify trademarks developing, growing throughout the World through fairs and Internet and register them in their own name in bad faith like in Internet domain names. If you encounter with such case, it may be possible for you to cause the trademark which was registered in bad faith to be annulled by proving that your trademark is a trademark Well-known, growing on the international market.
We would like to express with the experience gained by us in the field of patent, trademark registration and law since 1996 that it may not be sufficient to only know trademark, patent law for an attorney but it is also very important to know registration process of trademark, patent especially because getting a positive result is conditional upon the knowledge of trademark registration process practically and knowledge of weaknesses/gaps of the Turkish Law and Turkish Patent Office.
ELTUTAN Law & USTA Patent Office
Lawyer Emine Artar Eltutan