The history of trademark legislation in Turkey begins in the 1870s during the Ottoman Empire. The first regulation regarding trademarks was the ‘Trademark Regulation’ (Alamet-i Farika Nizamnamesi) in 1871. The said regulation was repealed by ‘Regulation Regarding Manufacturing Products and Trademark Purposing Commercial Goods’ (Fabrikalar Mamulatı İle Eşyayı Ticariyeye Mahsus Alameti Farikalara Dair Nizamname) in 1888. Both regulations were based on the French Law regarding trademarks dated 1857.
The last regulation dated 1888 was repealed by the ‘Act on Trademarks’ dated 1965 and numbered 551 (referred to as the ‘Act on Trademarks’). The Act on Trademarks made significant amendments in trademark legislation in Turkey. However, the revolutionary amendment was made with the Decree Law No 556 on the Protection of Trademarks (referred to as ‘Decree Law No 556’) in 1995, as the Act on Trademarks could not satisfy the needs arising from economic developments, international treaties and relations regarding the European Union and Customs Union. Thus, it was stated in the general preamble of the Decree Law No 556 that Turkish trademark legislation should be updated since the needs regarding trademarks had changed extensively and, therefore, the current trademark legislation could not satisfy the current needs.
Although Decree Law No 556 has brought a modern vision to Turkish trademark legislation, the legislative prepared a draft law considering that the legislation should be regulated with a law instead of a decree law. In this context, the Draft Trademark Law was prepared in consideration of the Trademark Law Treaty which has been in force in Turkey since 2005. In the meantime, Article 61-a, b and d was cancelled by the Constitutional Court on the grounds that crimes and penalties should be regulated by the law. It was stated in the general preamble of the Draft Trademark Law that the cancellation expedited the preparation of the Draft Trademark Law. However, the enforcement date of the Draft Trademark Law, which was sent to the Turkish Grand National Assembly in 2009, is still undetermined.
One of the most significant amendments in the Draft Trademark Law is division of the trademark application. According to the Draft Trademark Law, a trademark application can be divided into two or more separate applications before the registration of the trademark. Thus, the registration process will continue for the class or classes which are not refused by an ex-officio examination or subjected to an opposition.
Another important innovation under the Draft Trademark Law is speedy examination of the trademark application. According to the related article of the Draft Trademark Law, the applicant may claim his or her trademark application to be examined quickly, providing that the applicant pays the cost of the proceeding. The mentioned article is quite important considering the 12-14 month registration process for trademark applications.
The Draft Trademark Law makes amendments in the Article regarding the cancellation of a trademark. According to Decree Law No 556, cancellation of a trademark is retroactive. However, according to the Draft Trademark Law, the date of effect of the cancellation is regulated according to the reasons for the cancellation. Another amendment, which is also related to cancellation, regards the use of the trademark. According to Decree Law No 556, a trademark that has not been put to use without a justifiable reason within a period of five years following registration, or if the use has been suspended during an uninterrupted period of five years, the trademark shall be cancelled. However, according to the Draft Trademark Law the five year period starts from the publication of the registration of the trademark in the Official Trademark Gazette.
While waiting for the Draft Trademark Law to be entered into force, a recent amendment in Turkish trademark legislation was made by the Draft Law on Making Amendments on Law for the Establishment and The Functions of the Turkish Patent Institute and Some Decree Laws (referred to as ‘Draft Law’), recently sent to the Prime Ministry. The Draft Law makes significant amendments regarding procedures and principles in Decree Law No 556.
One of the most important amendments in the Decree Law relates to international trademark applications within the scope of the Madrid Protocol. Although Turkey is a member of the Madrid Protocol and the number of international applications has been increasing day by day, trademark applications within the scope of the Madrid Protocol were not regulated by Decree Law No 556 as Turkey became a member of the Madrid Protocol in 1999, after the enforcement date of Decree Law No 556. In this regard, the regulation regarding international trademark applications within the scope of the Madrid Protocol in article 23/A of Decree Law No 556 should be considered as a significant development.
Another important amendment is of particular concern to spare parts producers. The Draft Law makes an amendment in article 12 (Limits on the Effects of a Registered Trademark) stating that the proprietor of a trademark cannot prevent third parties from using the trademark in accessories and spare part products, in situations where the specification of the purpose of goods or services is required, provided the use is effected in accordance with honest practices in industrial or commercial matters. It should be noted that although this provision was not regulated in Decree Law No 556, the amended version was enforced in practice as a result of Supreme Court practice.
Finally, article 61/A regulating the penalties and fines regarding the infringement of trademark rights will be amended by the Draft Law. According to Decree Law No 556, the person who produces goods or services, exposes for sale or sells by infringing a third party’s trademark right by means of confusion or adaptation shall be sentenced to the same penalty. However, according to the Draft Law, persons who produce goods or services by infringing a third party’s right and persons who expose the mentioned goods or services for sale or sell them shall be sentenced to different penalties. According to the Draft Law a person who pretends to be a registered trademark proprietor by using writings, signs or expressions shall be sentenced to imprisonment and pay a fine.
As a result, it should be stated that the Draft Law will make several significant amendments in Decree Law No 556. Nevertheless, the Draft Law unfortunately shows us that the Draft Trademark Law will not enter into force for a while.
