TRADEMARK SQUATTING
never succeed in practice, but cause legal and commercial issues for the real owners. In all cases, getting a material benefit from trademark squatting encourages local squatters for future bad faith registrations.
In terms of possible legal remedies, under Turkish Trademark Law owners of well-known trademarks within the meaning of Article 6bis of the Paris Convention may either submit their opposition to a local application before the TPI or file a lawsuit for the cancellation of the local registration. As a rule, the cancellation case is subject to a statutory limitation of five years from the registration date. However, if the local registration was filed in bad faith, this limitation does not apply.
For other trademarks (which are not well-known and do not have any prior trademark filing in Turkey) the chance of success through opposition is quite weak since the TPI refrains from taking a decision in these conflicts and leaves the evaluation to the IP courts. Although the legislation does not explicitly recognise the unregistered trademark owner’s right to file a cancellation case against the registered owner, the general tendency of the Turkish Supreme Court and the doctrine is to accept the existence of such a right, especially if the trademark was registered prior to the local
registration in Turkey in another country which is a member of the Paris Convention and/or before the World Intellectual Property Organization through the Madrid System.
Based on the principle of good faith, Turkish courts accept that, if the trademark was actively used and had gained a certain reputation in the relevant market, and an application was filed or a registration was made for the trademark in other countries, it is unlikely that the local owner was not aware of the trademark and therefore should be considered to have filed with bad faith. It is worth mentioning that this attitude of the Turkish jurisprudence is not crystal clear since each case needs to be evaluated under its own conditions and the prior effective use of the trademark in question should be proven with strong evidence.
During the court process, brand owners should initially claim a precautionary injunction for avoiding the use of the trademark in Turkey and an assignment prohibition to prevent the sale of
the trademark to a third person. In
practice, Turkish courts immediately prohibit the assignment of the squatted trademark by sending an official notice to the TPI. However, taking a precautionary injunction is quite
difficult since the IP courts usually require a high material security to be deposited in cash or as a letter of guarantee taken from a bank.
Esra Tekil is the managing partner at Tekil Law Office. She may be contacted at:
esra.tekil@tekil-law.com
Esra Tekil is the managing partner in Tekil law office, an
independent
commercial law firm established in 1994 in Istanbul. Before her career at Tekil, she served in Arthur Andersen and Ernst&Young as legal manager and was actively involved in several international projects as project leader.
PRACTICE SEMINAR APRIL 8-12, 2013
This one week seminar is designed to provide a comprehensive overview of U.S. trademark practice. Beginning with introductory lectures on the U.S. trademark system, subject matter becomes more complex throughout the week. Our knowledgeable lecturers draw from years of experience in the trademark field and focus on real life case examples.
Seminars held at BSKB’s Offices in:
Metropolitan Washington, DC
8110 Gatehouse Road, Suite 100E Falls Church, VA 22042
© 2013 Birch, Stewart, Kolasch & Birch, LLP. All rights reserved.
t: 703.205.8000 | f: 703.205.8050
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seminars@bskb.com
U.S. TRADEMARK
SUMMER PATENT SEMINAR
JUNE 5-28, 2013
A three and a half week seminar covering all major areas of U.S. patent law, beginning with an overview of the U.S. patent system and moving on to more complex subjects such as patent prosecution, infringement litigation, and post-grant procedures. Includes practical problems and discussion of recent cases where applicable, with a focus on how practice must change in view of the America Invents Act (AIA).
ADVANCED PATENT &
LICENSING SEMINAR SEP. 23 - OCT. 4, 2013
This two week seminar focuses on advanced topics in U.S. patent law and includes workshops and problem solving in order to illustrate the more advanced concepts with regard to prosecution, claim interpretation, and validity and infringement issues. Participants learn how to modify and determine the scope of a granted U.S. patent, as well as how to address significant licensing issues.
www.worldipreview.com
World Intellectual Property Review Annual 2013
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