Until the Turkish Constitutional Court cancellation of Article 7/1-(i) on May 27, 2015, (published in the Official Gazette dated June 02, 2015 and numbered 29374), the Turkish Patent Institute (“TPI”) was able to reject an application as absolute grounds for refusal that a trademark was similar to an earlier well-known trademark. The cancelled article was providing well-known trademark right holders with an ex-officio protection in the sense of Article 6 of the Paris Convention, even in the absence of any prior trademark application or registration of the well-known trademark in Turkey. With the cancellation of Article 7/1-(i), being a well-known trademark does no longer constitute an absolute ground for refusal of the trademark registration.

The Court cancelled the respective article on the basis of Article 91 of the Turkish Constitution according to which the fundamental rights listed in the Constitution shall not be regulated by Decree-Laws. The Court found that pursuant to Article 35 of the Constitution, the right of trademark ownership is a fundamental right and it is not possible to limit the trademark registration right with a Decree-Law. Therefore, Article 7/1-(i) of the Decree-Law should be cancelled. 

After the cancellation of Article 7/1-(i), well-known trademarks will no longer be included in the ex-officio examination of the TPI. Well-known trademarks shall then only be in the interest of the owner of the well-known trademark and the owner shall decide whether to oppose a trademark application where the conditions of Article 8/4 exist. Pursuant to Article 8/4 referring to TRIPS, the trademark owner is entitled to file an objection based on the allegation that his trademark is a well-known trademark and therefore cannot be used in other goods and services. Therefore, holders of well-known trademarks should closely monitor the Turkish Official Trademark Bulletin for similar trademark applications before they are registered. Otherwise, once a similar trademark is registered, the owner of the well-known trademark should bear the burden of legal action before the Turkish courts in order to revoke this registration, since after a registration, the trademarks cannot be annulled on ground of infringement unless the alleged infringement is dealt with by the court and concluded accordingly. 

This Constitutional Court decision may lead to a cancellation of other IP provisions with the same basis. Therefore, the Turkish IP world, instead of current IP-related decrees, is in need of a new legislation in order to comply with the Constitution and to ensure the proper protection of IP rights.

Gülcan Tutkun Berk, LL.M., Attorney (Istanbul)