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As the regulation pertaining to well-known trademarks re-entered into force with the Industrial Property Law No. 6769, owners of well-known trademarks have been included in the scope of protection again.

According to newly regulated IP Law, relative reasons required for rejection of trademark applications have been indicated in Article 6 of Law No. 6769, and in paragraph 4 of which it is mentioned that trademark applications with the same or similar qualities as the well-known trademarks covered by the Paris Convention are denied upon objection in respect of the same or similar goods or services whereby well-known trademarks are protected primarily in accordance with the articles of the Paris Convention.


Further in paragraph 5 of the said Article, it is indicated that “…Concerning a registered trademark or a prior  filed trademark application, in the events that unfair benefit may be obtained from the trademark due to the level of recognition achieved in Turkey; the reputation of the trademark may be damaged; or the distinctive characteristics of the trademark may be damaged, the trademark application for the same or similar mark is rejected upon objection of the prior trademark’s holder regardless of whether the application was made in the same, similar or different goods or services, provided that it being based on a “justified reason” whereby the protection is granted for the trademarks which became well-known in the Republic of Turkey this time.
The criteria to be considered is whether or not an unfair benefit can be obtained due to the trademark’s level of well-known as well as whether or not the distinctiveness of the trademark will be damaged in the event that the well-known trademark is registered in some way. 


The definitions regarding well-known trademarks are generally described both in the national and international doctrine, as well as in the Supreme Court decisions and also by the Turkish Patent and Trademark Office.

The content of this article constitutes not the criteria for the recognition of well-known trademarks, but the general information in accordance with paragraph 5 of Article 6 of IP Law no. 6769 on the registration of trademarks which are well-known in Turkey on the list of well-known trademarks before the Turkish Patent and Trademark Office, and the benefits that will arise for trademark right holders.
First of all, if any trademark is registered in the list of "specially protected marks", which is referred to as the recognized trademark list by the Turkish Patent and Trademark Office, it is definite that the trademark is a recognized trademark by the Office.


In the case of objections to trademark applications filed before the Turkish Patent and Trademark Office, the fact that the trademark is well-known will be proven without having to prove separately for each opposition/appeal file that the trademark is a well-known trademark. The decision of the Office is accepted as evidence even if it is not binding on the courts, and the opposing party can prove otherwise. The protection of well-known trademarks is more widely interpreted and it is particularly the consumer’s perception of the well-known trademark that is taken into account. 


Although well-known marks provide protection for the area in which they are registered as well-known, they have the right to block the registration of a trademark which that has been identified as well-known in similar goods and services and/or in other goods and service groups those which are likely to be associated with or obtain unfairly benefit from. Various claims, such as the weakening of the distinctiveness of a trademark, or the risk of obtaining unfair benefit, shall also be deemed to have been fulfilled if the conditions arise. (To give an example, a provision was established by Court that the registration of a trademark in the field of textile the said trademark being a well-known and famous trademark in the field of photography will reduce the distinctiveness of the trademark.)


Thus, if there is a risk of obtaining an unfair advantage from well-known trademarks, and if it is considered that the distinctiveness of the trademark will reduce in the event that the trademark is registered in another group of goods or services, the objection of the well-known trademark owner against a third-party application will be accepted and the application will be rejected. Furthermore, when a trademark is recognized as a well-known trademark, the increase in the economic value of the trademark becomes more of an issue especially for the companies. The decision of recognizing a trademark as well-known causes the value of the trademark belonging to the companies to increase as the claim of well-known is now embodied and approved by the official agency. It is important to note that a well-known trademark objection is of upmost importance in the case of malicious applications unfairly exploiting the recognition of a well-known trademark.


In particular; concerning malicious applications there are many forms of applications such as the implementation of secondary modifications while protecting the essential elements of the well-known mark, the use of the figurative element of the trademark with another mark, the use of the general arrangement of the trademark and its distinctive color, texture and similar elements with the aim of addressing the consumer perception of the well-known trademark. When such applications pass the first stage of the examination, they pose great risks for well-known trademarks.


However, since the objections by specially protected trademarks provide more comprehensive protection, the trademark is rejected in such cases even when the conditions with minimum effect in terms of possible modifications that are likely to be associated with the well-known trademark.


In oppositions/appeals to be filed against malicious trademark applications especially if it is based on the trademark’s reputation,  it is necessary to prove that the trademark is well-known with each opposition/appeal and the preparation of the required documentation for such a proving in terms of companies with foreign origin can constitute both legal and bureaucratic problems; it is possible that the Office decides the opposition/appeal to be rejected due to lack of evidence that is required to support the claim of well-known.


In such a case, since the objection proceedings have to be transferred to a judicial stage, it creates negative consequences in terms of both time and money. 
However, by obtaining a grant of specially protected trademark decision regarding the well-known of the trademark, the problem of proving each file separately is removed which can also prevent the loss of rights for the clients.


For this reason, it is advised that the trademarks which are at the stage of benefiting from the scope of special protection are applied to be recognized as well-known trademark before the Turkish Patent and Trademark Office.