The “territoriality principle” has been the main principle with respect to the legal status of trademark rights and other intellectual property rights. This principle is also accepted in Turkey as the Article 6 of the Decree Law Pertaining to the Protection of Trademarks numbered 556 (“Decree Law No. 556) states that “Protection for a trademark under this Decree-Law is obtained by registration.” The main idea lies behind the “territoriality” principle is that the exclusive protection granted through trademark registration in one does not automatically allow the owner of the intellectual property to exercise its exclusive rights in another state.
At first the “territoriality principle” does not seem very favourable for trademark owners who have neither used nor registered their trademark in Turkey. But it would be fair to say that Turkish Trademark Law provides important exceptions to this principle which allows the trademark owners to have a satisfactory protection against such unauthorized registrations when in particular the bad faith is blatant.
The most commonly seen exception to the territoriality principle is the granted to the genuine owner of a trademark. The Law considers the entity that created and first used the trademark is the genuine owner of a trademark and entitles the same to challenge the unauthorized application for or registration of its trademark in Turkey. In the past such protection was stronger as it was not even required that the prior use of the trademark by the genuine owner should be within the territory of Turkey. But recently we experience that such protection is rather weakened as there is tendency to seek if the trademark has ever been used in Turkey before the application date of the unauthorized trademark. Still we may say that when the bad faith is obvious the use requirement may be neglected.
Another exception to the territoriality principle is granted to the well-known trademarks set forth in Article 1bis 6 of the Paris Convention. In addition an exception is also granted for trade names, in particular when the trademark is also the distinctive core of the trade name of the genuine trademark owner. Similarly, when the trademark is a personal name or the name of a copyrighted work, it is also protected without any requirement for registration in Turkey, and, the owner of such a trademark or a copyrighted work may seek to cancel a third party registration under this law.
Finally, one the most important exception relates to bad faith which has been introduced as a per se ground for opposition / cancellation by the General Civil Assembly of the Court of Appeals.
Uğur Aktekin
Hande Hancer
