TRADEMARKS IN TURKEY
Demonstrating the presence of bad faith is largely subjective and can be awkward, but there are ways to convince the examiner, as Özlem Futman and Damla Duyan explain.
conduct and fair business principles knowingly, with the purpose of gaining unfair advantage or to cause damage to others”.
T
Te burden of proof of bad faith is on the person who opposes a trademark application before the TPI. Terefore, it needs to be underlined that all aspects regarding the case and the situation of the applicant should be considered and taken into account when determining the existence of bad faith.
According to the Turkish Trademark Decree Law, a third party can contest a trademark application based on Articles 7 and 8; Article 7 lists the absolute grounds and Article 8 points out the relative grounds. However, in neither of these Articles is “bad faith” mentioned as a ground for opposition. Te question that arises at this point is whether a third party can file an opposition based on bad faith.
Let’s assume that company X does not have a registration/prior application in Turkey and has not yet entered the Turkish market. Meanwhile, company Y notices X’s trademark and files an application for it in Turkey. In this scenario, how can company X challenge the trademark application based on bad faith?
Article 35 of the Turkish Trademark Decree Law reads as follows: “Notices of opposition to the registration of a trademark on the grounds that
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he Turkish Patent Institute (TPI) defines bad faith as the conduct of someone who “acts against generally accepted moral
it may not be registered under the provisions of Articles 7 and 8, and notices of opposition on the grounds that bad faith exists in the application shall be submitted within three months of the publication of the application.”
Despite the fact that bad faith is not underlined as a ground for opposition in Articles 7 and 8, it is mentioned in Article 35, where the timescale for the opposition procedure is regulated.
Meanwhile, the Turkish Civil Code Article 22
states that: “Every person must act in good faith when exercising his/her rights and performing his/her obligations. Te manifest abuse of a right is not protected by law.” In doctrine and in Turkish Appeal Court decisions it is indicated that Article 35 is a reflection of Turkish Civil Code Article 2, which is binding on every person in society.
Moreover, another article which is a reflection of Civil Code Article 2 is Article 18/2 of the Turkish Commercial Code that reads as follows: “Every merchant should act like a prudent businessman in all his commercial activities.”
By its nature, bad faith can be difficult to define and/or prove. Te definition of bad faith by the TPI talks about “knowing”, which in other words requires the applicant to know the prior mark. Tis is the tricky starting point for bad faith cases. Conduct that could be accepted as bad faith varies, depending on the facts in each case. However, since its establishment in 1996, the TPI has faced many cases where bad faith is discussed and brought to the attention of examiners.
World Intellectual Property Review Annual 2014 77
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