EMERGING ISSUES IN TURKISH INTELLECTUAL PROPERTY LAW potx

EMERGING ISSUES
IN TURKISH INTELLECTUAL PROPERTY LAW
Published by Suluk & Kenaroglu Law Offıce at Smashwords
Copyright © 2011 by Suluk & Kenaroglu Law Offıce
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TABLE OF CONTENTS
PREFACE
ABBREVIATIONS
I. TURKISH INTELLECTUAL PROPERTY LAW SYSTEM
In General
Revision Studies On Legislation
Proceeding Procedure
The Process of Preliminary Injunction
The Position of Experts in Lawsuits
The Obligation of Securing Deposit for Foreigners
The Principle of Cumulative Protection
Exhaustion Principle and Parallel Importation
Loss of Rights due to the Remaining Silent
Customs Applications in the Fight against Counterfeit Goods and Piracy
II. TRADEMARK LAW
In General
The Obtainment of Trademark Right and Genuine Holder-Ship
Uniqueness Principle in Trademark Law
The Notion of Bad Faith and Its Place in the Turkish Trademark Law
Well-Known Trademarks
Pharmaceutical Trademarks
Unconventional Trademarks
Trademark Crimes

III. PATENT LAW
In General
Utility Models
Pharmaceutical Patents
Data Exclusivity and Supplementary Protection Certificate
Compulsory License
Patent Infringement and Criminal Measures
IV. DESIGN LAW
In General
Spare Part Designs
Invisible Designs
The Partial Invalidity of Designs
V. COPYRIGHT LAW
In General
Collecting Societies
Copyright Agreements
Indemnity for Copyright
Architectural Work
TV Program Formats
Notice and Take Down Procedure
Right of Retransmission
VI. UNFAIR COMPETITION LAW
In General
Unregistered Inventions and Unfair Competition
Unregistered Designs and Unfair Competition
FOREWORD
Law is national, in other words it is local and each law system is peculiar to itself. The dizzy
developments in the information age result in incredible alterations regarding IP law. Although the rules of
law bear a national character, the alterations in this area hold global character at some degree via international
agreements. Nevertheless, despite all the harmonization endeavors via international agreements, IP law is still

preserving its national character. Although a crucial ground is covered by force of Common Market, the
national character even in EU is not completely ruled out. Briefly, the nationality in IP law is still too
dominant.
In these days even the medium sized firms have commercial activities, such as manufacturing, sales
and marketing outside of their own countries. Therefore, the commercial players that carry on business in the
international arena cannot stand against the protection of IPRs in the international scale.
According to the IMF records, when purchasing power parity is predicated on, with the 932 billion $,
the Turkish economy is the 16th biggest economy of the world and on the other hand, Turkey, with the % 8.9
growth rate, is the second most growing country, after China, in the world. Thus, it seems not possible for
companies having business in international area to neglect Turkish market.
Compared to previous years, with the consolidation of the economy and the awareness in the
community, Turkey has begun to reserve crucial amounts of share to the R&D studies. According to the data
for 2008, Turkey has spent approximately 5.4 billion $ to R&D and the rate of this amount to the national
income is 7.3 per thousand. The aim of the government for 2013 is to pull this rate to 2%. It has been
transferred a considerable amount of share to R&D from the public budget in recent years and the transfer
will be continued. In other words, the R&D studies are in the tendency of a fast increase and the increase will
be even faster in the near future.
As a matter of fact, with respect to trademark, patent and design applications filed within the Turkish
Patent Institute, the interest of both the local and foreign firms has increased particularly in Turkey. Today in
Turkey, it is made over seventy thousand trademark applications per year and it is on the third rank in Europe
regarding trademark applications. Twelve thousand of the all trademark applications have been filed by
foreign applicants. It should be taken into the account that total number of the annual trademark applications
was around only sixteen thousand in 1995. The number of patent applications, which were approximately one
thousand five hundred in the mentioned year, has escalated to seven thousand in 2009. On the other hand,
total amount of the annual design applications has reached to thirty thousand in the recent years. These
numbers confirm our finding on the fact that Turkey has become a very important market for companies
having business in the international area.
In the study that you are holding now, after the general issues on nearly all areas of IP law, we
focused on the emerging issues and problematic subjects. Some of the problems, examined in this study, arise
as such by its nature, just like the problems in well-known trademarks while the others occurred because of

the applications peculiar to Turkey, such as the protection of unregistered innovations or designs under unfair
competition regulations for an unlimited period of time.
Our study has been prepared more of by taking the IP problems that the foreign companies have
experienced in Turkey into consideration. The readers will on one side be introduced to the problematic areas
of Turkish execution; on the other side will be able to observe the variations from the general executions in
the world.
ABBREVIATIONS
App/Appr: Approximately
art: Article
bis: Additional
CU: Customs Union
ECJ: European Court of Justice
EEA: European Economic Area
EPC: European Patent Convention
EU: European Union
FRAPA: Format Recognition and Protection Association
FSEK: Copyright Code
INN: International Nonproprietary Names
IP: Intellectual Property
IPC: International Patent Classification
IPRs: Intellectual Property Rights
MarKHK: Trademark Degree Law
MESAM: Musical Work Owners’ Society of Turkey
Nr: Number
PCT: Patent Cooperation Treaty
PRAFA: The Format Recognition and Protection Association
PLT: Patent Law Treaty
R&D: Research and Development
SME: Small and Medium Sized Enterprise
SMEs: Small and Medium Enterprises

SPC: Supplementary Patent Certificate
TL: Turkish Liras
TLT: Trademark Law Treaty
TPI: Turkish Patent Institute
TRIPs: Agreement on Trade Related Aspects of Intellectual Property Rights, Including Trade in
Counterfeit Goods
TV: Television
UCC: Universal Copyright Convention
UK: United Kingdom
UPOV: International Convention for the Protection of New Varieties of Plants
USA: United States of America
WCT: WIPO Copyright Treaty
WIPO: World Intellectual Property Organization
WPPT: WIPO Performances and Phonograms Treaty
WTO: World Trade Organization
I. TURKISH INTELLECTUAL PROPERTY LAW SYSTEM
1. IN GENERAL
The protection of Turkish intellectual property rights (hereinafter IPRs) goes back to the time of
Ottomans. The Patent Code dated 1879, which was adapted from the French Patent Code dated 1844, is the
sixth patent code of the world. On the other hand, the first Turkish Copyright Code was regulated in 1850
while the first Turkish Trademark Code was regulated in 1872 by the influence of French law. The process of
codifications on the subject matters continued after the foundation of Turkish Republic in 1923 as well.
In recent years Turkey has made crucial reforms in IP legislation with the effect of globalization. The
year 1995 could be accepted as a milestone in this context. Starting from 1995, depending on liabilities
derived from the 1/95 EU - Turkey Association Council Decision, Turkey has entered a rapid course of
harmonization of her legislations with the EU law and the international agreements. As a result of these
endeavors a series of legislations entered into force in the areas of both copyright and industrial rights. In this
context, in 1995 and the forthcoming years the legislations date back to the time of Ottomans, such as
copyright, patent and trademark have completely changed. Again in 1995 the regulations on designs, utility
models and geographical indications were entered into force for the first time. The regulations on integrated

circuits and plant variety protection were implemented in the forthcoming years.
However, the implementation process created some serious problems, since the regulations were
made through decree laws rather than codes. On the other hand, although 15 years has passed over the
implementations, the gaps and lapses in the related regulations have not been obviated yet. As a result,
currently Grand National Assembly of Turkey is still working on the draft codes on the related areas of IP
law. The drafts are still waiting to become law and to enter into force.
Turkey became a party to some conventions and international agreements, such as Paris in 1925 and
Bern in 1952. Starting from 1995 Turkey approved the other fundamental agreements, such as WTO/ TRIPs,
PCT, Madrid Protocol, Hague, Rome, WCT and WPPT.
In this context, as soon as the preparations on the draft laws become law, the Turkish IP legislation
would become totally harmonized with the international standards. Thus it is approved by all authorities
when the subject matter was laid on the table during the accession negotiations with EU that the background
of the IP laws of Turkey are appropriate to the international standards. However it is also acknowledged that
the problems are pilled up on the matter of actualization/enforcement of the rules.
Furthermore, Turkey has also developed in the administrative structure along with the law reform.
The Turkish Patent Institute (hereinafter TPI), which was founded in 1994, has a modern structure.
Nevertheless there has been no improvement in the structure of the Turkish Copyrights and Cinema
Administration, which is under the auspices’ of Ministry of Culture. The relevant institution is in the shape of
a classic governmental body. The common problem of both institutions is the absence of qualified examiners
and experts.
The disputes over IP were being subjected to the authority of the general courts for long time. As a
result of the technical and legal expertise that the law requires, in 2001 the specialized courts of IP were
founded. Since then the specialized courts have been handling the IP related cases. Currently there are more
than 20 IP courts in Istanbul, Ankara and Izmir. In the other cities county courts are authorized to handle IP
cases. Especially in the recent years both the number and the quality of the court decisions have been
increasing and the case law has been developing rapidly with the decisions of both first-degree IP courts and
the Supreme Court. The contribution of the education of some judges of the IP courts in the foreign countries
is very big in this sense.
The numbers of the active trademark and patent agencies have also increased after 1995. Today there
are hundreds of patent and trademark agencies all around Turkey. This rapid increase is relatively unhealthy

although it aims to satisfy the needs of the sector. Although the sector necessitates experts in the fields, the
trademark attorneys that have no prior law education or patent attorneys that do not posses technical
background a far away from solving problems, rather they become the problem. Today, the number of the
active patent attorneys, who posses technical background, is less then 100. Similarly there is a very little
amount of trademark attorneys in the field that posses a law degree. Unfortunately, this is one of the biggest
weaknesses of the system.
A special interest to the IP law education in the recent years is also observed. The IP law classes that
used to be elective have become compulsory lectures at some universities. Moreover there are considerable
amount of academic articles published and again both official and private enterprises arranging various
different activities on the subject matter.
As it was already marked in the “Foreword”, the number of trademark, patent and design applications
have incredibly increased in the recent years. In addition to the applications and the registrations and the
disputes passed to the courts are in the tendency to accelerate too. The reason could be deemed as the fact that
now the local firms are discovering the importance of the protection of IPRs and the interest of the foreign
firms is increasing as well.
The mentioned positive developments reflect to the process of legal remedy. For instance, in the area
of IP law disputes the Supreme Court manages to conclude approximately one thousand and five hundred
cases in a year. Furthermore depending on the increase in workload new IP courts are being founded in every
day.
As to the developments in copyright area, the collecting societies founded in the field of copyright
law and especially society of musical works have begun to prepare their tariffs and to collect considerable
amount of royalties from the users. They also play a crucial role in the fight against piracy.
Briefly, it can be expressed that there has been essential improvements in the Turkish IP system
compared to the pre 1995 regulations, despite some shortcomings and flaws. These improvements are not
only in the legislative, administrative or judicial phases but also the interest of the related sectors is increasing
every single day.
2. REVISION STUDIES ON LEGISLATION
a) General Information
As mentioned above (see In General) Turkey has renewed its IP legislation in 1995 and also made
codifications for the first time in relation to the several aspects of IP such as; design, utility models and

geographical indications. Therefore it could be said that the year 1995 is a milestone for the Turkish IP law.
Codification activities have been continued also after 1995 and the process has not been completed
yet. There are many reasons for the legislation studies not to maturate. First of all, the issue has a very
dynamic structure by the effect of globalization. Truth to say, many countries have to make serious
amendments in their legislations with the approval of TRIPs. In order to be adapted to the new developments,
the legislation studies of the countries have turned into a never-ending endeavor. Secondly, reasons specific
for Turkey also slow down the maturation of process. For instance, in 1995 the legislation with respect to
patents, trademarks, designs and geographical indications were regulated by the government through decree
laws, instead of acts, in order to quickly fulfill the international obligations. However, it has caused crucial
negative legal consequences to regulate such areas by decree laws. For instance, the Constitutional Court has
cancelled most of the criminal provisions of the decree laws, only because they were not regulated by acts.
These cancellations hinder seriously the fight against piracy and counterfeiting. Nevertheless, the Parliament
has not promulgated the necessary legal regulations yet except limited provisions regarding trademarks.
On the other hand, the legislative revision studies should be separated into two categories as
copyrights and industrial rights. Because management of the copyrights is in the hands of Ministry of Culture
and Tourism, industrial rights are in the hand of TPI. Therefore different experts, who are totally independent
from each other, must be executing the legislative studies in relation to these two fields.
b) Copyright
The Copyright Code Nr. 5846, dated to 1951, was in sleep for a long time so to speak. Since the right
owners had not prosecuted their rights sufficiently, the Code could not find an application field until 1995.
For example, although it was acknowledged in the Code to establish collecting societies, the first collecting
society was finally established, with a delay of 35 years, in 1986. Here the biggest factor is the state of being
indifferent to their rights by the right owners.
The first amendment in this Code had been made in 1983. But the main amendments were made in
1995 and afterwards. 5 out of 6 amendments, which is the total number of amendments so far, were made
after the mentioned date. With the ones in 1995, 2001 and 2004 almost one third of the Code were amended.
Thus the Code, which was adopted from the German Copyright Code, dated to 1901, has become a ragbag.
By conscious or unconscious interferences, supplementations against the philosophy of the code were made
and the systematic of the Code has damaged.
Lastly, the Ministry of Culture and Tourism is in the preparation of a new amendment consist of 40

articles. It is easy to forecast that the systematic of the Code will be damaged even more, since the draft has
also been prepared with the same method. Here the thing to do is to take the opinions of the related
environment and write down the amendment text with the participation of the academicians, who have
studies on the copyright field.
c) Industrial Rights
Today’s legislation regarding trademarks, patents, utility models, designs and geographical
indications consist of the decree laws put in force in 1995. The legislative studies, which were rushed in order
to fulfill the international obligations were transformed into executive acts by a night and codified as decree
laws. Of course the legal consequences of the wrongful road followed were very heavy. Most of the
regulations enacted by decree laws, actually, should have been legislated by acts. For example, according to
the Turkish Constitution Law the courts may only be founded by an act. However, the intellectual and
industrial courts in Turkey have been founded by decree laws and their status is still arguable today.
Although 15 years have passed from these regulations, the decree laws have not been transferred into
acts. Today there are four separate codification studies with respect to patents (including utility models),
trademarks, designs and geographical indications. It is not expected for these studies to become enactments in
the short run. The authorities that took this into consideration have prepared a separate draft consist of 6
articles in order to fill the gap that was created by the cancellation decision of the Constitutional Court. In this
draft, the criminal and civil sanctions in relation to patents (including utility models), designs and
geographical indications are dealt.
3. PROCEEDING PROCEDURE
a) Competent Court
In the resolution of disputes regarding Turkish IP law, the legislator, which took into consideration
the technical and expertise dimensions of the disputes, proposed the establishment of IP courts to carry out
the duty in this field. For that purpose IP Civil and Criminal Courts were established in 2001 and they consist
of only one judge. Depending on the increase of the disputes in this field, the number of the established IP
courts in Istanbul, Ankara and Izmir are increasing as well every single day. In the mentioned three cities
until now more than twenty IP courts has been established. In the cities, where there has not been a IP court
founded yet, the Civil and Criminal Courts of First Instance are in charge in the capacity of IP courts.
The judges, who command the IP courts, come from a law background and the technical issues are
solved by the assistance of experts.

In the IP related disputes the case that is filed by the right owner, according to the qualification of the
case, may be filed either in the court where the plaintiff or the defendant is resided or in the place, where the
action subject to the case was committed or the effects of the act were took place. In the cases that will be
filed against the right owner by third parties the court in the domicile of the defendant is the only competent
court.
In the situation, which either the plaintiff or the defendant does not reside in Turkey, the competent
court is the court authorized to handle the court actions for the address, which is the address of the attorney of
the plaintiff/defendant’s office, registered in TPI records. If the record is deleted then the courts in Ankara,
where the headquarters of TPI is placed are authorized.
b) The Proceeding Procedure
In IP cases, invalidation of a present registration, cancellation of a given verdict, determination of the
infringement occurred, determination of the absence of the infringement, assignment of the right as a result of
usurpation, prevention of the infringement, annulment of the consequences of the infringement, compensation
for the damages occurred, seizure of the products and instruments that are subjected to infringement,
acknowledgement of the property right to the right owner on these products and instruments or their
annihilation and announcement of the ruling to the public can be claimed. Each of the mentioned claims can
be subjected to an independent court action, but it is also possible to file a court action with all the mentioned
claims.
The written proceeding procedure is recognized as the general procedure for the civil and criminal
court actions in Turkey and the proceedings in IP cases are carried out according to the general proceeding
procedure.
In the criminal cases, investigation and prosecution are subjected to a complaint by the right holder in
principle. In other words, a public action cannot be filed ex-officio, unless the person, whose rights are
violated, files a complaint against the infringers. There are also some exceptional cases, such as banderol
crimes, that are ex-officio investigated and prosecuted by the public prosecutors and the courts.
The right owner may withdraw his/her complaint or renounce his/her action any time before the
verdict is finalized. The case drops with the withdrawal of the complaint or the renouncement of the case. In
the cases, where there is more than one perpetrator, the case drops totally even when the complaint is
withdrawn only for one or several perpetrators. A person, who withdraws his/her complaint or the case, may
file a complaint or a case again with respect to the same issue. Therefore, withdrawal of the case depends on

the permission of the defendant. However, the plaintiff does not require the permission of the perpetrator to
renounce the right of filing a complaint or a case regarding the mentioned violation. Yet the person, who
renounces his/her right, is not entitled to file a case or a complaint on the same issue later on. The case will
drop in the event of waiver of the right, just like it happens in the abandonment or withdrawal.
In civil suits, the right owner may request the transfer of the property right of the counterfeit products
and instruments to him/her. In the criminal suits, it is not possible to grant the property right of the products
and instruments to complainant. In practice, the civil and criminal cases are filed usually simultaneously. The
possession of the counterfeit products is generally given either to complainant or to perpetrator in their
capacity of trustee. In the proceeding phase, it can be alleged by both parties that the products that are
subjected to examination are not the same with the ones that were seized. In order to eliminate this prejudice,
to give the possession of the products that are claimed to be counterfeit to the court safety room is the most
appropriate solution.
On the other hand, just like in the general procedure, preliminary injunctions can be demanded in
criminal and/or civil courts actions based on IPRs. The preliminary injunction issue in IP cases will be
separately examined below.
c) Burden of Proof
The burden of proof is generally on the plaintiff. However there are some exceptions of this general
rule. For instance, in the invalidation actions based on the non-use of the trademark, the burden of proof is on
the defendant. In other words, in the invalidation actions based on non-use ground, it is sufficient for the
plaintiff to claim that the trademark has not being used. If the trademark has actually being used, it is
expected from the defendant to prove it. Otherwise, it is deemed as the plaintiff proved his/her case and the
case would be accepted. Besides these exceptions, the burden of proof is always on the plaintiff.
d) Evidences
The IP actions are subjected to written proceeding procedure in principle. Therefore, the parties have
to prove their claims especially by written information and documents. Within this context, lots of materials,
such as the commercial books, invoices, catalogues, brochures, e-mails can be submitted to the file as
evidence.
During these cases the parties can call witnesses or submit affidavits to the file under the
circumstances that the court accepts such materials as evidence. However since the affidavit application is
uncommon in Turkish law, the evidence value of the affidavits, especially the ones that are submitted are

low.
The parties may demand from the court to assign an expert or an expert panel for examination of the
file and use the expert report as evidence. Furthermore, the parties can also obtain reports with regard to a
pending court action from the experts which are not assigned by the court. However, of course the reports
that are prepared by private experts upon request by one of the parties are not considered equal with the
reports prepared by the experts appointed by the courts. Most of the courts do not take these private reports
into consideration. Some judges do not even permit the submission of these kinds of reports to the files.
e) Duration of the Proceeding
The duration of a civil or a criminal court action filed before the IP courts is approximately 1 to 3
years in Turkey. There are several reasons under this lengthen period of time. For instance; the courts
generally appoint an expert panel for examination of the file and when the report is lacking or not adequate or
upon the objections by the parties, it sometimes become compulsory to appoint a second or even a third
expert panel for re-examination of the file. Thus, duration of the expert examination(s) on the file takes
around 1 to 2 years.
Upon the appeal of the verdict held by the IP court, the duration of the appeal examination before the
Supreme Court takes approximately 15 to 18 months. Additionally, re-examination of the decision of the
Supreme Court can also be demanded and the re-examination phase usually takes 6 to 8 months. Briefly, the
approximate duration of the finalization of an IP court decision including the appeal and the re-examination
phases takes 1 to 5 years.
f) Cost of the Proceeding
The cost of proceedings and the attorney fees in Turkey are very low compared to European
countries. According to the data of WIPO Magazine, February 2010 Edition, for a patent case it is paid
approximately 100.000 Euro in Spain, 80.000-150.000 Euro in France, 750.000-1.500.000 Euro in UK as
attorney fees, whereas in Turkey approximately 10.000-50.000 Euro is requested as an attorney fee.
The official costs of proceedings are also very low in Turkey. For instance, the official filing fee of
an invalidation action is less than 100 Euro. In the further phases of the proceeding, the file is sent to a panel
of experts, consist of 3 people. The fee for the expert panel is approximately 750 Euro. In the case, when the
file is sent to a new panel of experts, the mentioned amount shall be paid for the new expert examination as
well. On the other hand, the official cost of appealing an action is approximately 100 Euro.
As in action for damages, in the cases, in which the matter of dispute is a certain amount of money, a

certain percent of that amount, namely % 0.60 is deposited in the treasury of the court as the legal fee.
Lastly, it should be mentioned that the party who loses the case covers all the legal fees and
proceeding expenses, except the attorney’s fee that is paid to the winning party’s attorneys. In the case that
the opposing party is represented by an attorney, the losing party condemns to pay a certain amount of legal
attorney fee in favor of the opposing party’s attorney.
4. THE PROCESS OF PRELIMINARY INJUNCTION
Pursuant to the art.103 of the Code of Civil Procedure, when there is a risk that the action in dispute
might create an important danger or cause an irreparable damage, then the judge has the right to decide for a
preliminary injunction against the defendant at the beginning of or during the court action. Nevertheless the
preliminary injunction cannot be held in a way that provides the outcome of the main judgment. This article
is the basis of the preliminary injunction procedure in the civil law disputes.
IPRs are protected by private legislations. As a part of these private legislations the procedure of
preliminary injunction is also specifically regulated. As a consequence, it is possible within the system to
achieve faster and wide ranging preliminary injunction decisions in the scope of IP law. The incentive of this
special regulation for IP law is the fact that in almost every infringement of any IPR, there is always a big
risk of irreparable damage.
For instance, on the contrary to the above-mentioned art.103, the art.77 of the Trademark Decree
Law states that a preliminary injunction decision shall measure up to the ability of providing the effectiveness
of the main judgment. In this context the owner, whose trademark right has been damaged has a right to
demand preliminary injunctions, such as the cessation of the acts of infringement of the trademark rights of
the plaintiff, the seizure of the infringing goods or ordering the placement of security for damages to be
compensated.
This regulation in trademark law can also be found in the Turkish Copyright Code. According to the
art.77 of the Turkish Copyright Code the owner of a work shall demand preliminary injunction on the same
context and by the same procedure with trademark owners. Similarly the art.64 and 65 of Design Decree Law
and art.151 and 152 of Patent Decree Law contain the same regulations on the subject matter.
The disputes on IPRs are in the duty of IP courts. Therefore the IP courts in the IPR disputes shall
handle the proceedings for the preliminary injunction. However, depending on the general rules of procedure
law it is seen that the preliminary injunctions claimed prior to the civil court actions (ex-parte) can be
requested from the general courts and thus the decisions sometimes are held by the general courts as well.

A preliminary injunction request can be filed before the filing of the main court action (ex-parte) or
within the plaint petition at the time of the filing of the main action or during the trial at the first instance
phase. It is allowed to file the request until the end of the first instance proceeding. If there is a preliminary
injunction request prior to the filing of the main action, the subsequent court action (main action) must be
filed within 10 days after the issuance of the preliminary injunction.
All the evidences that will be submitted during the main court action must be submitted in advance
when the request of preliminary injunction is filed. If the preliminary injunction request is ex-parte filed
before the main court action, all the evidences that have already been submitted together with the preliminary
injunction request must be re-submitted to the main file. This process prevents the advancement of the case
and thus the decision and also brings extra costs. Therefore if there is not a very crucial and/or specific
situation there is no need to request an ex-parte preliminary injunction prior to the main action and it would
be better to file the request within the plaint petition for the main action. When the preliminary injunction is
requested with the main case, it also takes one to two months to get an injunction. But at least this request
does not affect the process of the case, since the examination on preliminary injunction request does not stop
the regular flow of the proceedings.
Both in the preliminary injunctions requested before or after the filing of the main action, the judge
may seek for an expert report if it is required. The expert examination is another element that postpones the
issuance of the final decision on the preliminary injunction request. Nevertheless the IP courts generally
prefer to obtain at least one expert report.
The duration of examination on preliminary injunction requests varies from 1 to 2 months to 8 to 10
months, which depends on the way the judge follows. The process may be concluded in 1 to 2 months if the
judge decides to continue to the proceeding in the absence of the defendant, without sending any notification
to him/her and also decides not to seek an expert report. However if the notification has made to the
defendant and both of the parties has been called out to the courts and the judge decides to send the case file
to an expert then this period may be lengthen to 10 months. If the action is also considered as a criminal act
than it is preferable to file a criminal complaint to the public prosecutor other than requesting a preliminary
injunction case when the length of the preliminary injunction proceeding in the civil courts are considered.
The preliminary injunction decisions that are held within at least 2 months can be obtained in 2 to 3 days
from the public prosecutor.
The judge can rule in favor of preliminary injunction either gratuitously or by obliging the plaintiff to

secure a deposit in return. When the deposit is obligatory that the party who got the preliminary injunction
decision in favor must secure the amount of deposit in Turkish Liras in cash or lay up the letter of guarantee
to the court’s pay office. The letter of guarantee can only be issued by the national banks of deposit. In
practice it is not possible for a foreign enterprise that has neither a domicile nor an official branch in Turkey
to obtain a letter of guarantee from the Turkish deposit banks. As a result the foreign firms may only secure a
deposit in cash.
The deposit will be held in the pay office of the court until the decision of the first instance court is
become final and binding. Yet if the case is dismissed in the end of the proceeding and the defendant suffer
damages, for example because of the preliminary injunction preventing him from use of the trademark, the
defendant is entitled to file an independent court action in order to compensate his/her damages from this
deposit. However it has to be mentioned that the rejection of the main case does not necessarily mean that
the preliminary injunction decision was unlawful and/or the defendant has been suffering damages because of
this decision. The defendant is obliged to prove that he/she had suffered losses precisely because of the
unlawful preliminary injunction and to submit solid evidences to show the size of his/her damages.
Since the secured deposit is not being valued in any ways, the amount of money that was secured
loses its value as the time passes in the course of proceedings. This is the most essential element that impels
the firms to think twice before requesting a preliminary injunction. The amount of the deposit may vary
according to the volume of the enterprises of the both parties and/or the context of the commercial activity
that will be prevented by preliminary injunction. This amount can be a couple of thousand or of hundred
thousand Turkish Liras. In the special cases such as an infringement of a pharmaceutical patent, the million
Turkish Liras can be requested as the guarantee. Within this year in one of the cases where our firm is
representing the plaintiff, it was held to a preliminary injunction against the biggest Turkish national bank by
the IP courts under the obligation of securing an amount of 150.000 Turkish Liras (app. 75.000 Euro) as a
deposit. As a result the use of the trademark in consideration has been ceased as a precautionary measure.
This amount is one of the highest amounts that have been appraised by the IP courts so far.
In the light of this information it can be stated that the procedure of preliminary injunction carries a
fundamental value in the area of IP law and may be deemed as a very important legal instrument for the
aggrieved party. Especially when the duration of the lawsuits is taken into account, it is an essential
advantage to solve a dispute at the very beginning of the lawsuit by requesting preliminary injunction.
5. THE POSITION OF EXPERTS IN LAWSUITS

The courts seek the assistance of the experts for the subjects that necessitates special or technical
knowledge and the experts are considered as the assistants of the judge.
Following the collection of evidences the court sends the case file to the experts. In general, the
courts order from the experts to submit a report considering the claims and the defenses. In practice it is
rarely seen that the judges describe the duties in relation to what the experts will examine. However the
application where the judges clarify the scope of the examination and the duties of the experts is more
incisive.
In practice a lawyer, a designer/an engineer/an artist, according to the relevant dispute and a financial
advisor or a sector expert are inducted as a panel of experts.
Both parties have the right to object to the ascertained experts within three days after the appointment
of the panel of experts is learned. If the court finds the objection reasonable, than another expert is appointed
instead of the objected one. As long as the objection is made depending on a solid ground, it is usually
accepted by the courts.
The duration that has been given to the experts to submit their report is approximately 2 months.
However in practice mostly the deadline is always exceeded and the case files generally return from the
experts within 6 to 10 months.
In the case of a delay the court shall demand, by sending a cahier, the submission of the report by the
request of one of the parties. A criminal complaint may be submitted by the courts when the experts do not
obey the date set forth in the cahier for the submission of the report. In this situation the court asks also for
the return of the case file without any examination.
The parties can also object to the expert reports. If the report is not adequate, in the meaning of not
clearing the necessary points or if there are contradictions in the report, then the parties may demand
according to the situation either to obtain an additional report from the same experts or to appointment of a
new panel of experts for a second report. The courts have a wide range of power of discretion in this matter
and can accept the objection(s) of the parties or deny the request if it finds the report adequate. However the
Supreme Court reverses the first instance decisions when they are based on an inadequate, incomplete,
contradictory expert reports or the reports not suitable to audit.
To prepare a false report is a crime. If there is a doubt on the objectivity of the experts, the court or
one of the parties can file a criminal complaint against the experts. The experts stand trial just like the judges
in the high criminal courts for the negligence or the misconduct of the duty.

There are three people in the expert panels in general. It is usually assessed 1.500 TL (750 Euro) in
total as the fee of three experts, approximately 500 TL for each. However this amount may vary according to
concrete case and can be raised to the amount of 4.500 TL (2.200 Euro). As there is a possibility that the case
file may be sent to a second or even a third panel of experts according to the situation this cost can be
doubled or tripled.
The party who lost the case pays also the expert fees. However it must be mentioned that the plaintiff
pays the fees of experts in advance after the court appoints the panel of experts. In the case of plaintiff
winning the case the amount of money that plaintiff has paid as the expert fee will be collected from the
defendant at the end of the trial.
In the practice of Turkish Law, the IP courts seek the assistance of experts nearly in every single case
related to copyrights, patent, trademark and design law and unfair competition. The Supreme Court obliges
the examination of experts even in the matter of similarity among trademarks and depends on the reason that
the disputes regarding IP law necessitate special and technical knowledge. In our opinion the judges of the IP
courts should be entitled to decide whether the trademarks constitute a likelihood of confusion or not.
Likewise in design cases the judge of the IP court can act like an informed user and examine whether the
designs are similar or not. Briefly the courts should not be held obliged to send the case files to experts unless
they find it indeed necessary.
Since the practice of Turkish IP law is relatively new, yet neither the lawyers nor the sector experts
possess adequate knowledge. On the other hand it is not usually possible in the big cities for the appointed
experts to come together and prepare the report as a panel. Furthermore the specialized and/or sector expert
usually faces difficulties in defining what to examine, without the guidance of the legal expert. Even if they
make the right definition, they generally examine the facts according to their own knowledge, rather than the
fundamental principles mentioned in the relevant codes. For instance in a design case, although the law does
not require an aesthetic feature for a design material, aesthetic feature is sought for the design material to
enjoy the design protection and they can examine the relevant designs from technical angles rather than
confining the similarity with the visual properties of the designs.
Depending on these drawbacks in the expert examinations the cases regarding IPR drag on. Plus the
IP courts generally obtain an additional report or a second report by forming another panel of experts.
Furthermore if a contradiction between two reports is occurred, then just to overcome this contradiction
between the first and the second report a new report may be requested by forming a third panel. Although the

expert report is not binding for the judge according to the Supreme Court, the situation is deemed as a reason
to reverse the judgment when the judge sought the expert report but held the decision on the contrary of the
report. According to the Supreme Court to reach to a decision depending on an expert report, which is not
suitable to audit is another reason to reverse the judgment. The 11th Civil Chamber of the Supreme Court is
currently responsible for the disputes of IP law and it is determined that approximately 65 cases out of a
hundred are subjected to reversal. Because of all these reasons it takes more than five years (including the
appeal phase) for an IP case to be concluded. Despite all these endeavors the rightfulness of the judgments
are still arguable. The negative contributions of the expert reports are considerable in these unlawful
decisions.
As to the solution of the problem, the habit of sending every single case to the experts must be
abandoned. In order for the expertise institution to work effectively, the people who are going to be experts
should be educated. In this context, it can be stated that there is need for an expertise institution.
6. THE OBLIGATION OF SECURING DEPOSIT FOR FOREIGNERS
a) In General
As a general rule there is no requirement to secure a deposit or bond of any kind for the plaintiff,
follower or intervener (real and/or legal person), who has a domicile in the country of filing. Nevertheless
there are exceptions of this rule where foreign plaintiffs are obliged to secure deposit upon initiation of a
court action. In case the court rejects the court action, the security is used to compensate for court and
enforcement fees and the defendant's damages. The amount of the security is determined by the court.
Generally, the amount can be deposited in the form of cash, securities, real property (mortgage) or bank
letters of guarantee (bond). Although it seems like the procedure of deposit seems to be settled, it is
experienced that problems may arise by reason of their foreign nationality or of lack of domicile or residence
in the country, especially when the IP cases considered.
In Turkey this matter is subjected to several codes and of course regulated according to the
international agreements that have been already signed. On this matter, first thing to concentrate on is the
Turkish Judicial Code, nr.1086. Art.97 of the Code states that; it is obligatory to secure a deposit for real and/
or legal person that have filed a court action or made a demand before the courts and enforcement offices and
have no domicile in Turkey. Citizenship does not have an importance in this context. Therefore even the
Turkish citizens that are not resided in Turkey shall secure a deposit. Having said that, it has to be reminded
that this obligation is only for the plaintiff and the ones who start an executive proceeding. Therefore neither

the domicile nor the nationality of the defendant has an effect in regards. Here the point to take into account
is that the defendant has to claim the obligation of securing the deposit against the plaintiff. The claim is
considered as a preliminary objection, which brings the second attention point: It must be asserted with the
courts before the judge begins to explore the merits of the case.
The Turkish International Private and Civil Procedure Code, No: 5718 comprise a similar clause on
art.48. The variation from Turkish Judicial Code art.97 regarding the merits of the rule is that the obligation
of securing deposit in International Private and Civil Procedure Code is based on the nationality instead of
domicile criteria. Thus even the foreigners that have a domicile in Turkey are not qualified to be exempted
from this obligation. The exemption is expressed on the second paragraph of the article as the principal of
reciprocity. In accordance with this principal; in order to be deemed as released from this obligation, there
has to be an agreement among the countries that hinder the obligation of deposit reciprocity. The list of the
bilateral agreements that Turkey has signed with other countries can be asked from the Ministry of Justice.
However this clause in International Private and Civil Procedure Code has obviated by the Hague
Convention on Civil Procedure 1956 (hereinafter Hague Convention). According to the art.17 of the Hague
Convention there may be no security, bond or deposit of any kind imposed by reason of their foreign
nationality, or of lack of domicile or residence in the country, upon nationals of one of the contracting states,
having their domicile in one of these States, who are plaintiffs or parties intervening before the courts of
another of those States. As a result nationals from the contracting states of the Hague Convention shall be
exempted from this obligation for the cases filed in Turkey.
b) Deposit in IP Cases
Although the general rules are mentioned above, when it comes to the regulations for IP rights, there
may be some misunderstandings in relation to procedural regulations and the obligation of securing a deposit.
These problems emerge from the wrong interpretation of the international agreements such as TRIPs and
Paris Convention. The national treatment clause has accepted in both of these agreements in relation to the
laws regulating IP. According to the national treatment clauses stated in art.2 and art.3 of Paris Convention
and art. 3 of TRIPs; nationals of any party state shall, as regards the protection of IP, enjoy the advantages in
all the other countries of the party states, which their respective laws now grant to their nationals (The
Principal of National Treatment). Consequently, this provision accepts that all the nationals of the contracting
states will have the same protection and the same legal remedy against any infringement of their rights,
provided that the conditions and formalities imposed upon nationals are complied with. However in the

following paragraphs it is decided that the provisions of the laws of each of the contracting states relating to
judicial and administrative procedure, to jurisdiction and to the designation of an address for service or the
appointment of an agent, which may be required by the laws on industrial property are expressly reserved.
However in some cases, mostly regarding trademarks, the Turkish Supreme Court has ruled in favor
of the foreign plaintiff by exempting him from the obligation of deposit, depending on the national treatment
principle. But unfortunately, this application is not very consistent. During years the Supreme Court has
changed its point of view many times. For instance, in two separate decision dated to 2001 and 2006, the
Supreme Court ruled that the foreign plaintiffs are obliged to secure a deposit according to the art.32 of the
International Private and Civil Procedure Code. The Supreme Court did not even mentioned principle of
national treatment. Nevertheless in 2006 again it was held that on grounds of the execution of the national
treatment principle the foreign plaintiffs are not under the obligation of securing deposit. The Supreme Court
upholds still this approach and expressly stated this point of view in its decisions dated to 2007 and 2008 by
expressing that according to the national treatment principle acknowledged in TRIPs and Paris Convention,
there is no obligation for the foreigners to secure deposit.
It is obvious that the obligation of securing deposit is an institution related to judicial procedure and
also the aim of these agreements are to harmonize the merits of the application of IP law not the judicial or
the administrative procedure. Therefore it is not a proper application of these rules to rely on these
agreements to abolish the obligation of deposit.
As a conclusion, with the exception of Hague Convention and the bilateral agreements that recognize
the principal of reciprocity among the contracting states, it can be easily declared that the ones who file or
follow up or intervene in a case in Turkey have the obligation to secure a deposit. This procedural rule is
enforceable for all types of cases as well as IP. The deposit that is demanded during the filing is an institution
related to the procedural law. Therefore it is not possible to state that the principal of national treatment in
TRIPs and/or Paris Convention shall dissolve the obligation to secure a deposit for a foreigner. In other
words; the articles regarding national treatment among the contracting states in TRIPs and Paris Convention
does not hinder the art.32 of International Private and Civil Procedure Code that obliges the foreigners to
secure a deposit; nevertheless art.17 of the Hague Convention does.
7. THE PRINCIPLE OF CUMULATIVE PROTECTION
An intellectual creation can fulfill the protection conditions of more than one applicable law that
regulates IP. For instance, design law can protect the original design of a car; patent law can protect an

invention which provides fuel saving by bringing an aerodynamic feature to the car by the help of design.
Moreover if this design indicates the producer of the car, the trademark protection is also available to depend
on. Briefly, if the requirements for protection of an intellectual creation by different IP laws are met at the
same time, then the owner of the right has the possibility to be protected by all of them. This principle is
called as the principle of cumulative protection. Therefore the IPRs could be compared to chains engaged.
The cumulative protection principle is specifically regulated in the Turkish IP legislation. For
example, the art.4 of the Turkish Copyright Code orders that it does not prevent an intellectual creation to be
protected by copyright law when even it is enjoying design protection under the condition that all the
requirements of copyright protection are met. Again, there is a similar regulation in the art.1 of the Design
Decree Law. Correspondingly in the art.169 of the Patent Decree Law states that under the condition that all
the requirements are met; an intellectual creation that already enjoys utility model protection can also be
protected as a design.
The subject matter is usually submitted to the court by the design law cases. The Supreme Court
reaches to decisions expressing the designs that are neither new and individual nor registered shall be
protected under the rules of unfair competition according to the labor theory. As a result of the influence of
ongoing applications, the rules of unfair competition are interpreted commonly and widely.
It can also be said that the application of cumulative protection principle can sometimes go to
extremes. For instance even when a right forfeits because the term is expired or the renewal fee has not been
deposited, it is still possible to enjoy protection depending on the unfair competition law. As a matter of fact,
the Supreme Court acknowledges both in its previous and latest decisions that a design may be protected by
unfair competition even if it has not been registered at all or the term of protection has expired.
On the other hand it is very common for an intellectual creation, which is a subject matter of an
industrial right to benefit from the copyright protection. There are crucial outcomes of the embracement of
the cumulative protection principle in the scope of copyright law. The term of protection for utility models is
10 years and for a design material it is 25. However the term of protection in copyright law is life plus 70
years. For example, a vase that also posses an artistic quality enjoys protection of 25 years originating from
design law, where as copyright law provides a protection of life plus 70 years. Again except the right of
attribution there are no moral rights acknowledged for industrial property rights. On the contrary the moral
rights carry a big importance in the Turkish copyright law since it belongs to the continental law system. In
case of an infringement to the industrial rights; the amount of claims for damages are limited to the actual

damage occurred. Nevertheless in copyright law a compensation of three times of the damages may be
demanded when the rights are infringed. Briefly to depend copyright protection, which has superiority over
industrial property rights in regards to term of protection, the scope of protection and the amount of
compensation is generally in favor of the right owner.
The Supreme Court interprets the term of applied art widely. For instance, in one of its decisions
dated to 2006, they recognized a design of a coffee table as a work of fine arts. In another decision in 1996
the plates that are hanged on walls and a model of wine bottle were accepted as the works that are qualified
for copyright protection.
As a conclusion, the principle of cumulative protection has a very widespread application field. In
case of a dispute it is very beneficial for right owners to keep this principle in their minds. As the Supreme
Court mentioned in one of its decisions dated to 2008, the court shall only examine the case file according to
the ground(s) that the plaintiff based in his/her case petition on. Even in the presence of the conditions, the
court can not held a decision based on a right that the plaintiff did not claimed at the first place.
8. EXHAUSTION PRINCIPLE AND PARALLEL IMPORTATION
The right owner, who has an IP right on the products, after he sells the products for the first time,
cannot intervene with the further sales. For instance, the wholesaler that buys ADIDAS labeled shoes can sell
these original shoes to the retailers and the retails can sell them to consumers. The wholesaler does not need
permission from the owner of the trademark “ADIDAS” while selling these to a retailer. Yet the wholesaler
would have gained the property of the shoes by paying their price. The legal status of the sub-sellers, who
bought the shoes from the wholesaler, is not different. This situation, where the right owner (in this case the
right owner of the ADIDAS) may not interfere with the further sales after the first sale of the products, is
called the principle of exhaustion in terms of IP law. This principle is also known as the first sale doctrine.
Although both in the doctrine and in the decisions of Supreme Court the exhaustion of the rights is
mentioned, actually the right subsists abstractly but it disappears in relation to the products, which are soled.
Thus the Sebago decision of ECJ in 1999 points out this matter.
In order this principle to be applied two criteria shall exist together: i) the product must be put on the
market by the right owner or with his/her permission (for example by a licensee) and ii) the products, which
are subjected to further sales, must be original. In other words, if the product is put on the market without
permission from the owner of the IP right, the exhaustion principle is not applied. Similarly, when the
original product is put on the market by altering or worsening, the right is not exhausted; on the contrary this

act constitutes a trademark infringement.
One of the most arguable matters in the IP law is for sure the principle of exhaustion. The principle
of nationality is acknowledged in general in the matter of exhaustion of a right. In other words, the right of
the one, who sells the product that possess an IP right for the first time, is exhausted only within the borders
of the country, where the sale is occurred. So may the product, which is put on the market by the permission
of the right owner in one country, be exported into another country? With respect to this question it can be
mentioned of three types of exhaustion:
National Exhaustion: After a product that possesses an IP right is put on the market in a country by
the right owner or with his/her permission, the right owner cannot prevent the circulation of that product
within that country. Turkey has acknowledged the national exhaustion principle except for the integrated
circuits for which the international exhaustion is acknowledged.
Regional Exhaustion: In this type, the principle of exhaustion is applied by accepting a region as a
country. Within EU, the regional exhaustion is acknowledged. According to this principle, when a product is
put on the market with the permission of the right owner in any country of EU, which currently has 27
member countries, the right exhausts within the whole region. Moreover, the countries within the European
Economic Area (EEA) have been included to this region as well.
International Exhaustion: In this situation, when a product, that possesses an IP right, is put on the
market anywhere on the world by or with permission from the right owner, the right exhausts and the right
owner cannot prevent the sale of that product in another country. In case of the acceptance of this principle,
for instance a product, which is put on a market in South Africa by its owner, can be sold in Turkey without
the permission of the right owner.
It carries a crucial importance which type of principle is acknowledged, since the international
companies can divide the countries into different markets and price them out whereby national or regional
exhaustion. Here the notions of parallel importation and re-importation come into consideration.
Parallel importation is the importation of a product, which has been put on the market in another
country with the permission of the right owner, to a market, in which the right is protected. The case, where a
product that possesses an IP right is put on the market in the country of the right owner by the right owner
himself, then exported to abroad and then imported back to the right owner’s country is called re-importation.
In re-importation the product is first put on the market in the territory (for example in Turkey), than exported
to another country (for example to Germany) and afterwards imported back to the country, where it was first

put on the market (to Turkey).
According to the national exhaustion, it is possible for the right owner to prohibit the parallel
importation; however it is not possible for him to prohibit re-importation.
The national exhaustion principle acknowledged in Turkish IP legislation has turned into a different
shape during the legislative applications. The Supreme Court has acknowledged a different system, which
stands in between national and international exhaustion. The action of putting on market even one product
with the permission of the right owner in Turkey causes the right to exhaust regarding the same products that
is put on the market in abroad. Therefore, the products that are put on the market in abroad can be imported to
and sold in Turkey without permission from the owner of the trademark by the third parties. Actually this
application corresponds neither to national nor to international exhaustion. Thus, both in national and
regional exhaustion the right exhausts only with respect to the concrete products that has been put on the
market with the permission of the right owner in the related country or region. In other words the right does
not exhausts abstractly; like it is stated in the Sebago decision of ECJ. Because with respect to the
international exhaustion, it is adequate for a product to be put on the market in anywhere in the world. In the
national exhaustion, the exhaustion is occurred restricted to that country, in which the action of being put on
the market has substantiated. However, according to the Supreme Court’s case law if one in number from the
related products is put on the market in Turkey with the permission of the right owner the right to exhaust
regarding the same products that is put on the market in abroad.
According to the Dexter and Police decisions of Supreme Court, dated to 1999, the right, in relation
to the products subjected to the right, would be exhausted when these products for the first time put on the
market in Turkey by the right owner or with the permission of the right owner and this exhaustion also
includes the products that are put on the market in abroad by the right owner or with the permission of the
right owner. In other words, the owner of the trademark right cannot prevent the importation of these
products to Turkey, which have been already put on the market in abroad.
The Turkish Competition Board has dealt with the case regarding the Police labeled sunglasses as
well and the board reached to the same conclusion with the Supreme Court by referring to its decision dated
to 1999. The Supreme Court persists on its opinion in the forthcoming years.
With respect to copyright the situation is relatively different. In general copyright does not exhaust
except the right of distribution. Regarding distribution right, national exhaustion principle is explicitly and
definitely accepted (Art.23/II of the Copyright Code).

If the author used his/her distribution right by the assignment of the property of particular copies of
the work (by sale or donation), the resale of these copies within the borders of Turkey does not infringe the
distribution right of the author. Here the right exhausted is not the distribution right itself abstractly, but the
distribution right on the original or the copies, which has been put on the market. If the distribution is made
within the frame of the permit given by the author, the right exhausts. For instance, if the distribution is
restricted with a contract with regarding number or region, a distribution against these restrictions does not
constitute the right to be exhausted. Because in this case the copies subjected to distribution have been put on
the market without the permission of the right owner.
The exception of the exhaustion of the distribution right is the right to rent and lend. In other words,
renting and lending do not constitute exhaustion. For instance, a person, who bought a DVD of a movie can
sell or donate the original DVD to someone else. On the contrary, he/she is not entitled to rent the DVD to
someone else. To subject a pirated DVD to activities like utilization or sale is in any case an infringement of a
right.
Downloading is not in the context of distribution right. Therefore, in this case the exhaustion does not
occur. For instance, person, who purchased and downloaded a song from the Internet, is only entitled to enjoy
this song; he/she may not sell this via Internet or by any other means.
9. LOSS OF RIGHTS DUE TO THE REMAINING SILENT
Every right must be exercised within the frame of good faith. Within this, the good faith of the right
owner is required and the good faith of the third parties is protected. The case of loss of rights due to the
remaining silent is acknowledged to protect the good faith of the third parties, whose rights will be damaged
due to the enjoyment of the rights after remaining silent for a long time and also their trust to the present
situation.
In this context, the owner of the IP rights is not entitled to exercise the right after all without
reasonable grounds, if he/she formed the opinion, by not exercising it for a long time that he/she will not
enjoy the right. Yet to file an action against the infringement of the right after remaining silent for a long time
would be considered as bad faith, since the abuse of the right of action would not be protected just like the
abuse of the other rights. The case of not requesting the invalidation of an unlawfully registered right for a
certain period considered within this context. In other words, in case of an aggression to an IP right not
asserting the right for a long time accepted as a loss of right.
In Turkish IP Law, the institute of loss of rights due to the remaining silent based on the equity

principle and originates from the principle of good faith stated in the art. 2 of the Civil Code. The Supreme
Court refers to the principle of acting like a prudent businessman (due diligence) as well in its decisions.
If the right owner has a reasonable ground for the delay, then there will not be any loss of right. In
this case, the infringer must prove that the right owner has no reasonable grounds for not exercising his/her
rights for a long time and the enjoyment of the right after such a long time will prejudice his interest.
The issue is regulated with respect to trademarks in the source law, EU law, and the period of
remaining silent is determined as 5 years. In Turkish substantive law, there is no special regulation regarding
the issue. In accordance with the source law this term is determined as 5 years in the Draft Trademark Code.
Although there is no substantive regulation, this principle is used frequently in the Turkish case law.
The term of remaining silent is specified according to every concrete case. For instance, in a decision of
Supreme Court dated to 2000, the Supreme Court found a period of 10 months of remaining silent adequate
for the loss of rights due to the remaining silent. Yet in the concrete case the plaintiff remained silent for
approximately ten months to its neighbor company, which is using plaintiff’s trademark and trade name.
Although this period is variable due to the concrete case, in practice it is applied as 5 years.
In a decision of Supreme Court in 2005 it was held that; “the defendant has used the word
“Çiftlik/Farm” by transforming the word into the essential component of the trademark…the case, which is
filed after remaining silent to this use of the defendant for a long time does not comply with the art.2 of the
Civil Code. The grounds of the court, which are in the same direction is right and the decision shall be
approved only based upon this ground”
The Supreme Court based its ruling in the case, where the well known Italian brand GAS was in
question and the owner of the brand Grotto SPA filed a nullity action, to the following grounds along with the
reason that the trademark GAS is not well known in Turkey: “… the case is filed 10 years after the
defendant’s registration date of the trademark and the plaintiff did not object to the use of its trademark
within this period either…”.
In 2007 Supreme Court ruled as; “… the trademark in question was registered on behalf of the
defendant on 16th of May 1990 in class 25 as a trademark, the case is filed after 14 years, the defendant had
worked with the plaintiff between 1987 and 2001 and there is no proof showing that the trademark was
registered in bad faith to be used as an instrument for blackmail or for the assignment of the trademark
against payment in the future, …the case filed after such a long time is not appropriate…”
The Supreme Court stated as following in another case dated to 2007; “only in the case of an implicit

permission by behavior to the infringement of a right, the issue of whether the invalidation of the trade name
used in good faith for a long time by the opponent, would be subjected to an action or not, shall be
deliberated and assessed by law according to the art.2 of the Civil Code.”
It is experienced serious loss of rights in practice, since the courts are applying the principle
frequently. The courts apply the principle both in the invalidation and the infringement cases. When the
results are examined, for the right owners it is not a choice but a necessity in Turkey to act both against
unlawful registrations and infringements. Otherwise the rightful owner/ genuine holder of the right may lose
the case, where he/she is right, because of the late intervention.
10. CUSTOMS APPLICATIONS IN THE FIGHT AGAINST COUNTERFEITING GOODS
AND PIRACY
a) Tracking Procedure in the Customs
The determination, prevention and cessation of the IP infringement are not only possible inland
according to the Turkish law, but it is also possible within the customs areas. The right owners, who want to
benefit from this protection can apply to the General Directorate of Customs and request for the recordal of
the related right and tracking the plagiarized or counterfeiting goods that infringe the mentioned right in the
customs.
The application can be made directly by the right owner or their attorneys and is submitted to the
General Directorate with an application form and the documents (like the copies of the trademark or design
registration certificates) proving that the applicant is the right holder attached. In the application made by
attorneys a notarized and legalized power of attorney must be submitted as well.
The application made by the right owner is taken into preliminary examination by the General
Directorate. If there is no incompleteness, the tracking process is set to begin and the right owner is informed
about the process. The General Directorate generally accepts the applications after the preliminary
examination, but for some applications it is possible for the Directorate to ask for additional information and
documents that are not mentioned in the legislation.
Separate applications have to be made for the tracking of every single IP right. For instance, if the
right owner has more than one registered trademark in Turkey, he has to make separate applications for each
of them. However one application can be filed for the serial trademarks or designs. The tracking being started
as a result of the application lasts for one year and the application has to be renewed every year in order for
the tracking to continue.

After the application, in case of the determination of any goods that infringe the right subjected to the
application in the customs, the General Directorate of the Customs seizes the related goods and informs the
right owner to initiate the necessary legal process. After this information the right owner must file a court
action against the infringement within the legal period and also take a preliminary injunction decision from
the court for the seizure of the goods that were caught by the General Directorate of the Customs until the end
of the proceedings. If the necessary action is not filed and the required preliminary injunction decision from
the court is not submitted to the General Directorate of the Customs within the legal period, the General
Directorate releases the goods that were temporarily seized.
Therefore reaching to the desired purpose by requesting tracking within the customs is bounded to
the filing of the court action following the application to the customs administration and to the decision of
preliminary injunction. When the right owner files the necessary action within the period, the courts usually
held the preliminary injunction decision in favor of plaintiff. Therefore, when the right owner takes the
necessary legal actions by doing his/her part, it can be said that the right is protected in an adequate levels.
b) Free Zones
The free zones are the areas that stay within the borders of the country that are geographically settled,
but deemed as out of the customs frontier with respect to external trade, taxes and customs legislations. It is
granted broader exemptions and promotions for the industrial and commercial activities in the free zones
compared with the ones granted to those within the country. In other words the free zones are accepted as
extra-territorial just with respect to financial liabilities, such as taxes, duties and fees.
Except from the Exchange regime and the provisions enumerated in the art.12 of the Free Zone Code,
Turkish legislation is executed within the free zones as well. In the mentioned article the IP legislation is not
mentioned. Yet according to the IP legislations, the IP rights are also protected within the free zones.
However until 2004 the free zones were left out of the scope of protection regarding IP rights by the Supreme
Court decisions. The Supreme Court was in the point of view that the importation made to the free zone
cannot be acknowledged as the importation made to Turkey. Therefore it was adopted that the IP
infringement in the free zones cannot be heard before the Turkish Courts on grounds of nationality principle.
This opinion was against the policy that reflects IPRs must be protected effectively and moreover it was not
proper for the legislation.
We are of the view that the free zones are acknowledged as extra-territorial only in relation to
financial liabilities, such as taxes, duties and fees. In other words, the Supreme Courts execution that accepts

these zones extra-territorial by depending on the regulations made with respect to export-import regime was
not incisive. Fortunately, the Supreme Court has changed the mentioned point of view afterwards and it has
begun to accept the free zones as inland after 2004 as well. As a consequence, currently the Supreme Court
has the opinion that the violation of rights occurred in the free zones are deemed to be occurred within the
territory.
c) Transit Pass
According to the Trademark Decree Law, it is an infringement of a trademark right to sell, distribute
or put the commercial use by any other means or place into a customs area, subject to a transaction approved
by the customs or to a use of the products carrying a trademark without the authorization of the trademark
right owner.
It is accepted both by the doctrine and the case law that the transit pass of the products that are
subjected to an unauthorized use will constitute a trademark infringement. For instance, in the Leon Case that
was subjected to a Supreme Court decision in 2004; it was filed an action by the trademark owner after it was
discovered that the cigarettes, which were declared to the customs under the label of “Leon”, wanted to be let
into Turkey, were actually the bear the well-known trademarks “M. and M. Light” and thus they were seized
by the customs administration. The defendant asked for the denial of the case by expressing that he is not the
proprietor or a representative, he was only responsible with the carriage of the goods and containers
according to the instructions that arrived to the port and the cigarette shipment in dispute was subjected to a
transaction in relation to be sent to abroad in transit, without being put in the market inland. Despite these
defenses, the case was accepted and it was held that the goods subjected to the transit pass constitute a
trademark infringement too.
On the other hand, the Supreme Court reflects the opinion in many decisions regarding transit pass
that it may be held in favor of a compensation for damages when it is requested along with the cessation of
the infringement. The proof of the actual damage is not required for the determination of the compensation
and also it is not necessary for the goods seized within the free zone to be put in the market in Turkey. The
Supreme Court acts from the assumption that the damage was occurred even if the goods had not been put in
the market yet and it is in the opinion that even when the actual damage cannot be determined, the amount of
the compensation can be estimated by the judge by taking into consideration the circumstances in the
concrete case.
II. TRADEMARK LAW

1. IN GENERAL
The first regulation regarding Turkish Trademark Law, which was brought into force during the
Ottoman period, is Trademark Regulation dated 1872. This regulation on trademarks stayed in force until the
first decades of the Republic and then replaced by the Trademark Code of 1965. The Code of Trademarks
was prepared on the basis of international treaties, which Turkey was a party and mostly adapted from the
Swiss legislations of that period.
After Turkey has become a party to the international treaties, some serious amendments were
necessary to be made in the Trademark Code. The need for amendment increased due to the fact that the law
was not sufficient to solve practical problems and due to harmonization process with European Union. In
compliance with the undertakings given in the harmonization period, a target deadline was set to finalize the
law amendment; however, required amendments were not completed in the set period of time. The
government, which was persistent on making the promised revision, prepared a decree law covering the same
matters. With this Decree Law nr. 556, dated 1995, Trademark Code of 1965 was repealed in one night.
Today, the mentioned Trademark Decree Law constitutes the basis of Turkish Trademark Law.
At the international area, Turkey is member to numerous international agreements concerning
trademarks. The major ones of these agreements are Paris Convention, TRIPS, Madrid Protocol and TLT.
Although the Trademark Decree Law is mainly in harmony with the related international regulations,
it draws heavy criticism for not possessing the characteristics of a regular code. Besides being criticized for
its above-mentioned character, the fact that Trademark Decree Law has been partially cancelled by the
Constitutional Court for the very same reason and still, its force causes serious problems. Currently, there are
some ongoing studies for preparing a draft Code of Trademarks, which would replace the current Decree
Law. Nevertheless, this draft does not seem likely to enter into the force in the near future.
On the other hand, the problem concerns not only the infrastructure of the legislation; but there are
also serious issues concerning the enforcement. Even though the fundamental principles regarding trademark
law are regulated by the Decree Law, most of them are differently shaped by the Supreme Court decisions.
Yet Supreme Court’s approach diverges from the legislation on many occasions. For example, according to
art.7/i of the Decree Law and art.6bis of the Paris Convention, a trademark that is well-known in a foreign
country who is member to the Paris Convention, shall be protected in Turkey as well, even if it is not
registered in Turkey. While this protection acknowledged in the legislation, is provided for identical or
similar goods and services, the Supreme Court, in most cases, has ruled that these trademarks shall be

protected in Turkey also with respect to different goods and services. Such differences between legislation
and practice make it harder for law to carry a foresee-ability. In order to make predictions related to any
certain matter, it has become almost essential to wait until Supreme Court establishes a consistent practice on
that matter. Moreover most fundamental approaches that are embraced by the Supreme Court may vary in
time and also may conflict with each other within the same period. Today many conflicting judgments of
Supreme Court create inconvenience for practitioners and right-owners.
The important differences between the legislation and the practice stand out when we examine the
trademark registration proceedings. This time the fact that legislation provisions are interpreted differently by
TPI abolishes the foresee-ability. For instance, art.8/b of the Decree Law requires rejection of the applications
filed for a trademark which is identical or confusingly similar to senior trademark application and/or
registration covering same or similar goods and services. However, in the decisions that TPI grounded on this
article, TPI rejects the latter application only with respect to “identical” goods and services. Just like the
judicial decisions contradict within themselves, the fact that TPI decisions contradict with each other is
another problem. It is possible to see in one opposition file, it is decided that opponent’s trademark on which
the opposition was based is well known; it can be decided after a short while in another opposition file that
the same trademark does not considered to be a well-known. The reason of this and similar contradictive
decisions are explained by the fact that the trademark examiners at TPI have different personal views. Despite
all these, it should also be mentioned that the substructure and the applications of TPI have improved
crucially in the recent years.
In this study on one hand we have tried to mention the basic principles of Turkish trademark law and
the interpretation of these principles in practice by Supreme Court and the doctrine, on the other hand we
have tried to indicate crucial developments and current problems of the emerging issues. Therefore, although
the themes examined within this study may seem independent from each other, they were brought together
since they are basically related to the current developments and problems of Turkish trademark law.
2. THE OBTAINMENT OF TRADEMARK RIGHT AND GENUINE HOLDER-SHIP
In Turkish law there are two ways to obtain a trademark right. First of all, a trademark never used
before could be picked and registered. In this possibility, the registration has a constituent effect for the
acquisition of a trademark right. In the second possibility, the right on a trademark belongs to the person, who
used the trademark for the first time and made the trademark familiar within the market without registration.
In the doctrine this person is called “genuine holder” and here the trademark right has emerged before the

registration and thus the registration made to the record has an explanatory effect. The unregistered trademark
means the sign, which is not registered to a record, but being used de facto in the sense of a trademark.
The trademark right acquired by registration provides its owner a conditional right. In cases, where
the genuine holder of a trademark is someone else, the right holder’s right derived from the registration will
continue until the genuine holder files a cancellation action and then registers the trademark on behalf of him/
herself.
In practice it is frequently seen that a third party registers a trademark that belongs actually to
someone else. Although the third person, who registers the trademark, might act unaware, generally he/she is
in bad faith. In order to rule out this possibility, the Decree Law grants the genuine holder the right to oppose
to the application filed for registration of the trademark by a third party (art.8/3). The right to oppose is
acknowledged not only against the identical trademarks, but also against the confusingly similar trademarks.
The opponent shall submit the evidence to TPI that proves the genuine holder-ship. In case of the refusal of
the opposition, the opponent may file a cancellation action against the refusal decision.
However, most of the time the genuine holder is not aware of the fact that a third person has made an
application for the registration of his/her trademark. Thus the opportunity to oppose to the mentioned
application within the publication period expires and it is decided for the registration of the trademark on
behalf of the third person. In this possibility the Decree Law grants the opportunity to file an invalidation
action against the mentioned registration to protect the genuine holder (art.42). The invalidation action should
be filed before the IP courts within 5 years after the registration of the trademark. Nevertheless, the action is
not subjected to a time limit when the third person, owner of the registration, is in bad faith.
The conditions of the application of the genuine holder-ship principle are set forth in detail explicitly
both in the doctrine and case law:
First of all, there must be a similarity or likelihood of confusion between the trademarks. Secondly,
the genuine holder must have been started using the trademark before the application date of the third person
or, if there is a priority date, before the priority date. It is subjected to the Supreme Court decisions whether
the use shall be accrued within Turkey or not. The Supreme Court, in a decision dated to 1999, stated that; the
protection provided to unregistered trademarks is not only related to the trademarks, which are being used de
facto in Turkey and made familiar, it is also valid for the trademarks, which have been registered and being
used in the member states of the international agreements that Turkey is a party, but has not been registered
in Turkey yet. The Supreme Court did not seek for the foreign trademark to be well known either. On the

contrary, the Supreme Court has referred to the nationality principle as one of the fundamental principle of
Turkish trademark law and sought the condition of being used in Turkey in order to be entitled to claim
genuine holder-ship on a trademark in a decision dated to 2000. The further decisions of the Supreme Court
are in the same direction as well.
Thirdly, the genuine holder must use the sign as ”trademark.” The Supreme Court expressed in a
decision dated to 2002 that an unregistered sign must be used in the course of trade in a way, which is
peculiar to trademark law.
Fourthly, another argument on the issue is whether the notoriety condition shall be sought in relation
to genuine holder-ship or not. To apply the principle of genuine holder-ship, it was sought in the Trademark
Code, in force prior to the Trademark Decree Law, that the trademark must be used and made familiar on the
market prior to the application date of the third person. In order to speak of the presence of notoriety, it was
expected for the trademark maybe not to reach to the degree of being well known but to certain degree of
familiarity. Nevertheless, the notoriety criterion was not mentioned explicitly in the Decree Law. The
Supreme Court reaches to various decisions in regards. In a decision of 1999 it is sought for the notoriety by
expressing “the priority right on the trademark belongs to the person, who created, used and is using and
made it familiar on the market.” A decision from 2002 was in the contrary. The Supreme Court continues to
opine different views in the forthcoming decisions. However, it is accepted in the doctrine that the notoriety
criterion shall be sought.
The degree of notoriety is disputable as well. In the doctrine, in order to acknowledge the genuine
holder-ship the products and services that the trademark is used on must have started to be known by its
customers in a specific place, region or a market. Therefore, it can be said that the notoriety is a state of
familiarity, which does not reach to a degree of being well known.
Another problem occurs, when the person, who registered the trademark unlawfully on behalf of him/
herself, tries to use the rights derived from the registration against the genuine holder. It is often experienced
that the ones, who registered the trademark on behalf of them, prevent the genuine holders to enter the market
with the mentioned trademark. Yet from a legal point of view, as long as the registration continues, the
trademark belongs to the owner of the registration. The owner of the registration may restrain the third party
uses of the trademark, including the use of the genuine holder. However in a decision of Supreme Court dated
to 2001, the Supreme Court stated that the registration owner might not restrain the use of the trademark of
the genuine holder. In accordance with the decisions of Supreme Court in regards, the genuine holder may

ask for a preliminary injunction by applying to the court, in case the unlawful registration owner tries to
prevent the use of the trademark of the genuine holder and ask for the prevention of the use of the rights
derived from the registration against him/her. When the adequate evidence is submitted to the court, the
courts generally accept these demands.
Consequently, the persons in bad faith want to benefit from the notoriety and advantages of the
investments made to the trademark by the genuine holder by especially registering the unregistered foreign
trademarks in Turkey on behalf of themselves. Therefore the principle of genuine holder-ship is a crucial
instrument that provides a protection to the persons, who have not registered their trademarks in Turkey,
against the third parties.
3. THE UNIQUENESS PRINCIPLE IN TRADEMARK LAW
According to the uniqueness principle in trademark law, there can only be one owner of a trademark
in relation to same or same type of goods or services. In other words, a trademark may not provide a second
independent and/or individual right for the same or same type of goods or services. Therefore it is not
possible for a sign, which is identical or confusingly similar to a registered trademark, to be registered on
behalf of someone else for the same or similar goods and/or services.
The uniqueness principle in trademark registration has mentioned in more than one article in
Trademark Decree Law and the Supreme Court asserts that the principle is directly in relation with the public
benefit. The legislator intended to protect the function of origin indication of a trademark and prevent the
customers from being mistaken in relation to the trademark and/or trademark owner by acknowledging the
mentioned principle.
According to the principle the letter of consent is not acknowledged in the Turkish registry system. In
other words, even the owner of the earlier dated application/registration of an identical or similar trademark
grants a written consent, it is not allowed to register the latter identical or similar trademark for the same or
same type of goods or services. On the other hand there are obstacles derived from the uniqueness principle
in the partial assignment of a trademark or in the assignment of some trademarks of a trademark series. As it
is known, partial assignment of a trademark in respect of some goods and services or assignment of some
trademarks in a trademark series is possible. However according to this principle, it is not allowed for a
trademark to be assigned partially for the same or similar goods or services. For instance, it is not possible to
assign trademark X for the corn oil, which is actually registered for sunflower oil, corn oil, butter and
candies. However it may be assigned partially in relation to candies. Similarly, it is not allowed for a partial

assignment in case a trademark series that covers same or similar goods and services. For example, it is not
possible to assign some of the trademarks X MAN, X WOMEN, X KIDS, X PREMIUM, of which all are
registered on underwear.
The Supreme Court also applies the uniqueness principle prevalently. In the QUARTZ decision in
2004, J-MOTION decision in 2006 and SUN PET decision in 2007, the Supreme Court has taken this
principle into consideration.
However, the Supreme Court has softened this principle on grounds of “constitution of antecedent
rights by use of the trademark” and “loss of rights due to the remaining silent”. Thus the Supreme Court, in a
decision dated to 2008 regarding an invalidation action filed against trademarks ECE TOFF and ECE LADY
of the defendant, it has been accepted that both parties have an antecedent right on the trademark, in which
ECE is the essential part and the invalidation action was rejected. As the rationale the Supreme Court
expressed that the defendant has used the sign ECE in his/her trademarks before and after the registration and
by placing this sign into the disputable trademarks the defendant comprised a trademark series. Therefore it is
ruled that the ECE trademark series, which is used with an original writing and style, does not constitute
confusion with the plaintiff’s trademark. Consequently it is allowed for the both parties to use the trademark
ECE on the same goods.
Again in the ÜLKER DONUT decision dated to 2008 the Supreme Court allowed the existence of
the trademarks that belong to both parties together by stating that; the plaintiff, whose trademark application
was rejected due to the presence of the trademark ÜLKER, has an antecedent right on the trademark ÜLKER
as well, both parties are the right owners and there is no likelihood of confusion between the trademarks, in
which the sign ÜLKER is the essential part.
The Supreme Court has determined in the DİRGENLİ decision in 2004 that the logo in the
defendant’s registered trademark creates confusion with the plaintiff’s trademark but ruled that the plaintiff
lost his/her right to file an invalidation action against the registered trademark of the defendant due to
remaining silent for long years. Thus it is allowed for the both parties to use the same trademark on the same
goods and services.
Again in another decision dated to 2006, the Supreme Court decided that the word ÇİFTLİK has been
used as the essential part both in the plaintiff’s and the defendant’s trademarks and the invalidation action
filed by the plaintiff after remaining silent for a long time would not comply with the principle of good faith.
In another decision dated to 2007 the Supreme Court rejected the case expressing that the defendant has been

using the trademark in dispute for 14 years and the case filed after such a long time is not acceptable.
As a result, in Turkish law the uniqueness principle in trademarks is acknowledged and this principle
is softened by the decisions of Supreme Court on grounds of “loss of rights due to remaining silent” and
“antecedent rights deriving from the use of the trademark by the parties”.
4. THE BAD FAITH ISSUE AND ITS PLACE IN THE TURKISH TRADEMARK LAW
There are two ways that bad faith can appear in the meaning of trademark law:
In the first possibility; the use of the trademark itself could be in bad faith. For instance, the owner of
a registered trademark uses his/her trademark in a different way from its registration in order to create
confusion with a competitor’s trademark.
In the second possibility; the bad faith could appear in filing of an application for registration of a
trademark. In this case, the aim of the applicant is to have registration for a trademark on which he does not
have any right and which is identical or confusingly similar to somebody else’s trademark which has already
been registered and/or used in the market.
In practice, bad faith applications filed by the local firms for registration of the foreign trademarks
having high commercial value are commonly experienced and causing serious problems for the genuine
trademark holders.
According to the art.35 of the Trademark Decree Law it is possible to oppose against a trademark
application on the basis of bad faith. Depending on the aforementioned article, there have been countless
opposition actions by this time which have been filed against the trademark applications filed in bad faith.
TPI has rejected lots of the mentioned applications due to the oppositions, without requiring any further
ground, expressing that the applications have been filed in bad faith. For example, the trademark UGG, which
has a great commercial value and is registered in abroad, but does not have a registration or use in Turkey (at
the filing date of the third party’s application) was tried to be registered by a local firm to TPI. The genuine
owner of the trademark filed an opposition against the local application and the application was rejected by
the TPI on ground of bad faith.
In the oppositions based on art.35 of the Decree Law, it is not required to submit an absolute proof of
the bad faith of the applicant to the file and it is sufficient for the opposing party to put forward the evidences
showing bad faith in a way that they present the truth real-like. Additionally, the opponent is not requested to
prove the bad faith claim with most solid evidences, but to show that the applicant was aware that the
trademark was owned by a third party and still he has applied to register the trademark in his name. For

instance, it is not likely that local firm in Turkey created a trademark which is a combination of a fantasy
word and a distinctive logo and applied to register the same for several goods and services on which the
mentioned trademark had already been registered and used by a foreign company in many other countries.
When the applicant is a customer of the products bearing the trademark that he applied for and thus was
aware that the trademark was owned by a third party, the bad faith is also very clear. When the opposing
party is able to prove the bad faith of the applicant with such evidences -as mentioned above- it is not
necessary to bring forward more solid evidence than this.
Until 2008 the bad faith argument was taken into consideration only in the opposition phase or in the
cancellation actions filed against the TPI’s refusal decisions. In other words, the genuine owner of the
trademark who did not oppose to the application that was filed in bad faith, at the administrative phase, was
not able to argue the bad faith of the applicant afterwards. The reason for this rule is because the grounds for
filing an invalidation case according to the art.42 of the Decree Law are limited by number and “bad faith” is
not one of them. Nevertheless the Assembly of Civil Chamber of Supreme Court reversed its execution and
decided in 2008 in R512 Case that the bad faith argument can be argued during the invalidation actions, just
like the oppositions and the cancellation actions filed against the wrongful decisions of TPI. In conclusion
according to this decision, from then on it is possible to claim bad faith by its own at any phase of the dispute.
Furthermore according to the art.42 the invalidation actions can be filed within 5 years as of the
registration date of the trademark. However if the claims are based on bad faith of the registration then there
is no time limit to file an invalidation action against a registered trademark.
It is known that the trademark protection is limited to the registered goods and services as a rule.
However according to the decision of the Assembly of Civil Chambers of Supreme Court, invalidation of the
trademark registered in bad faith can be demanded even for the different goods and services.
As a result, it can be easily stated that currently Turkish trademark registration system does not allow
the registration of a trademark application in bad faith neither in the course of administrative actions nor in
the course of a court action and the real owner of a trademark is absolutely protected against the applications
filed in bad faith. Therefore bad faith argument becomes very important for the foreign firms, in the
circumstances that there is no other argument to depend on, such as ante-dated applications or registrations,
well known status or genuine ownership argument.
5. WELL-KNOWN TRADEMARKS
The trademarks in use are known more or less. For some trademarks this awareness is restricted to a

very narrow environment, whereas some of them are known by a larger mass and some trademarks are
known world wide. Therefore, actually the “notoriety” is a state that exists for every trademark. Then,
regarding trademark law, for which trademarks does the “well-known” term is used? In trademark law, which
kinds of advantages are offered for the well-known trademarks?
Two different articles in the Trademark Decree Law regulate the matter of well-known trademarks in
Turkey. Below the special protection and the advantages that are offered by these two articles to well-known
trademarks will be mentioned and the differences between the articles and the situation in practice will be
examined as well. Furthermore the special registry of the TPI for the well-known trademarks and the
advantages of being in this registry will be pointed out.
a) Well-Known Trademarks according to Paris Convention
Following signs shall not be registered as a trademark which have not been authorized by their
owners, well known marks according to 6bis 1 of the Paris Convention
According to art.7/1(i) of the Decree Law, third party applications filed without permission of the
genuine trademark owner for the trademarks which are in the context of well-known trademark description of
the art. 6bis 1 of the Paris Convention shall be rejected by TPI ex officio. Pursuant to the mentioned provision
the trademarks, which are recognized as well known according to the Paris Convention, are being protected
as well-known trademark in Turkey as well.
The protection provided to well-known trademarks with this article is restricted to identical and
similar products and services. In other words, in the article it is acknowledged that only the applications filed
for goods and services that are identical with and/or similar to the goods and services on which the well-
known trademarks are registered would be rejected.
The protection provided by the Decree Law art.7/1(i) does not require for the trademark to be
registered or to be in use in Turkey. Furthermore, it is not necessary for the trademark to be known in Turkey
either. A trademark, which is well known in the other member states according to the art. 6bis 1 of the
Convention, will be protected as a well-known trademark in Turkey as well without requiring any other
condition. The decisions of Supreme Court are in this direction as well. The Supreme Court, in BLACK &
DECKER decision in 2004 stated that; “… the trademark that is well-known in one of the member states of
Paris Convention is protected in Turkey as a ‘well known trademark’ pursuant to art. 6bis 1 of the
Convention even if the trademark or the products bearing the trademark is not known in Turkey. …” In the
ROCCO BAROCCO decision, dated to 2000 it was expressed that; “ the trademark which well-known in one

of the member states of Paris Convention must be protected in Turkey as a well known trademark as well,
even if the products bearing the trademark have never been sold in Turkey.”
It is not required for the trademark that is subject to protection in Turkey according to the art. 6bis 1
of the Convention to have a world wide reputation either. Even the trademarks, which are well known in one
or several member states of the Convention, are protected within this scope. Besides it is not necessary for the
trademark to be known by everybody in the public. The trademarks, which are known commonly or even by
the related environment in general, benefit from the protection.
In practice it is not possible to apply the art 7/1(i) as it is regulated. In other words the TPI is not able
to reject ex officio the applications filed by the third parties for well-known trademarks. Yet TPI cannot
investigate or determine by itself whether the trademark subjected to application is well known or not.
Therefore the execution of the mentioned article depends on the opposition by the owner of the well-known
trademark to the application within the publication duration. For instance in 2005, the application filed for the
trademark BOTTEGA VENETA, registered and well known in abroad, by a third party was published by
TPI, nevertheless rejected upon the opposition of the genuine trademark owner based on the art.7/1(i).
Art.7/1(i) can be claimed not only in the administrative phase, but also during the court actions. The
invalidation action filed against an unauthorized registration of a well-known trademark by a third party can
also be based on the mentioned article. Similarly, the trademark infringement actions filed against the
unauthorized use of the well known trademark by a third party can also be based on the art. 7/1(i).
b) Very Well-Known Trademarks
The art.8/4 of the Decree Law is about the very well known trademarks. The aim and the context of
this article is different from the art. 7/1(i) of the Decree Law and differences between the protections granted
to the well known and the very well known trademarks are as follows;
i) Art.8/4 provides protection to the very well known trademarks which are registered or at least
applied for registration in Turkey. In other words, the trademarks for which there is not even any pending
application in Turkey cannot benefit from the protection provided with this article. However, it is not
required for the well-known trademark to be used in Turkey according to this article either.
ii) Art.7/1(i) provides protection to the well-known trademarks only for the identical and/or similar
goods and services, whereas art.8/4 introduces protection extended to the different goods and services as
well.
iii) The well-known trademarks protected under art.8/4 are the “very well-known” trademarks, which

are also known as famous trademarks. Therefore it is possible for a trademark, which is deemed as well-
known trademark according to the art.6bis 1 of Paris Convention, not to be protected within this context. The
well-known status required in this article has reached such a degree that the use of the identical or a similar
trademark on different goods or services would damage the reputation or the distinctive character of the well-
known trademark or will cause the unjust enrichment from the use of trademark. To consider a trademark
within this context it is not required to be well known all around the world, such as FERRARI, HILTON,
ARMANI or BURGER KING. Nevertheless the degree of well known should be over a certain level. Having
a deep routed background, being used consistently in lots of countries for long years, being registered in lots
of countries, acquiring very high sales figure and being promoted by high budget advertisement campaigns
are important data that points out of being a famous trademark.
iv) It is disputable whether the protection provided by art.8/4 depends on being well known in Turkey
as well or not. In the MAGGI decision in 2006 the Supreme Court expressed that; “it is not required for a
local or a foreign trademark to benefit from art.8/4 to be well known all around the world. It is adequate to be
well known in some countries. Besides it is also not required for these trademarks used in Turkey.
Nevertheless in order for a trademark to be in the context of this article, it is required to be well known in
Turkey.” In the doctrine, there is a group of authors defending that protection in the scope of art.8/4
encompasses the trademarks well-known in Turkey. However in the practice it is seen that lots of foreign
trademarks, which are not even known in Turkey, are protected within the scope of this provision by taking
the high level of well-known status of the trademarks in abroad. In most of the decisions of the Supreme
Court, it is seen that the trademarks, which are very well known in abroad, however not well known or not
adequately well known in Turkey, are being protected within the scope of art.8/4.
It should be mentioned that 8/4 could also be claimed both in the administrative phase and court
actions, just like art.7 (i). The invalidation action filed against an unauthorized registration of a well-known
trademark by a third party can also be based on the mentioned article. Similarly, the trademark infringement
actions filed against the unauthorized use of the well known trademark by a third party can also be based on
the art. 8/4.
c) The Registration of Well Known Trademarks to TPI
As mentioned above, the well known status can be claimed both in the opposition and the court
action phases. However in order to base any action on the well known status of a trademark the well-known
status must be proved in each opposition or a court action separately and therefore in practice proving the

well-known status of a trademark is onerous and expensive.
Thus the special registry by TPI is a very crucial instrument that rules out the burden of proof in case
of resubmitting the evidences proving well-known status of a trademark. The art.13/d of the Code, nr. 5000
grant the authorization to TPI to determine whether a trademark is well known or not, and if it is well known
to record the trademark in a special registry. In order to achieve this, the owner of the well-known trademark,
which is either registered or in the application phase, should apply to TPI with the request of determination of
the well-known status of the trademark. The TPI evaluates the well-known status over 18 different criteria.
These 18 criteria are determined by TPI by taking the criteria determined by WIPO in 1999 into
consideration. In the well-known status application, the well-known status of the trademark should be put
forward in the light of these 18 criteria. The evidences that prove the alleged notoriety of the trademark must
be submitted to TPI at the filing date of the determination request.
If the well-known status application is accepted by TPI, the trademark in question is acknowledged
as a well-known trademark and enters into the well-known trademark register with a special number. Besides
it is given to the trademark owner a formal document stating that the well-known status is determined and
acknowledged. This determination is the evidence to prove the well-known status of the trademark and it is
not limited by time. By submitting this document into the opposition or the court action files, the owner can
prove the well-known status of the trademark without submitting any further evidences.
TPI can reject the well-known status application by deciding that the well-known status could not
been proved adequately. In such case the refusal decision of TPI can be appealed before the Re-examination
and Evaluation Board of the TPI. If the Board rejects the application as well then the applicant can file a
cancellation action against the final rejection before the Ankara IP courts within 2 months as of the official
notification of the decision.
Today in the special registry hold by TPI, there are more than 400 well-known trademarks registered.
Among these, there are world wide well-known brands such as ARMANI, SONY, CNN, YAHOO!, APPLE,
POST-IT, FORD, FERRARI, MARRIOT, RED BULL, KINDER SURPRISE, MOBIL, MARSHALL,
CHANEL and trademarks that possess more restricted well-known status, such as LORIS AZZARO,
ROADSTAR, CINZANO, GIRORGIO AIRE, GLASURIT, NEXT & NEXT STAR.
6. PHARMACEUTICAL TRADEMARKS
The general principles of trademark law are valid for pharmaceutical trademarks in principle as well.
However, the differences arising from sector, product and consumer group cause the flexible execution of

some rules with respect to pharmaceutical trademarks. The most important element that differs
pharmaceutical trademarks from the rest of the trademarks is the informed and high level of attention
consumer group. This difference has softened some requirements for a sign to become a trademark in relation
to pharmaceutical trademarks. Since an informed and experienced consumer group would behave differently
in most of the situations compared with ordinary people.
According to art.7/1(c) of the Decree Law “trademarks, which consist exclusively of signs or
indications which serve in trade to indicate the kind, characteristics, quality, intended purpose, value,
geographical origin, or designate the time of production of the goods or of rendering of the service or other
characteristics of goods or services” shall not be registered. This rule is applied very strictly in general;
however it is treated more flexible in respect of pharmaceutical trademarks.