According to Article 12 of the Turkish Decree-Law pertaining to trade marks1 (hereby the "Decree Law"), the proprietor of a trade mark may not prevent a third party from using his own name or other characteristics of the goods or services in the course of trade provided that the use in question is honest and limited to the purpose for which it was intended. This regulation is of vital importance as Turkish Law does not provide for a fair use exception or a due cause clause in general. In other words, the said legal arrangement is crucial as exceptions to rights conferred by a trade mark in Turkish Law are very limited.
The said article concerns primarily the automotive supply industry as it may be necessary to resort to informative use of trade marks in order to specify the goods offered and/or services provided. For instance, a manufacturer of spare parts or a repairer of certain brand of automobiles may need to use a trade mark without the consent of the rights-holder.
Although the current Decree-Law does not explicitly refer to 'spare parts or accessories' as in Article 6 (1) (c) of the Trade Marks Directive2, the implementation of the abovementioned article is quite parallel to that of the European Union legislation.
As a matter of fact, the Turkish case law is in harmony with the prominent Deenik decision3 wherein the European Court of Justice has ruled that, the proprietor of a trade mark is not entitled to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods or that he is specialized in the sale or the repair and maintenance of such goods. However, such use shall not create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor.
The Turkish Court of Cassation has also ruled4 in line with the Deenik decision that, an undertaking may use the trade mark of a third party without the consent of the proprietor in order to identify the products and/or services offered, provided that the use in question is not contrary to honest practices. The Court also requires that such trade mark use shall not override the use of the actual trade mark of the service provider undertaking. Thereby, the Court wants to ensure that the use in question does not give rise to an impression in the eyes of the consumer that there is a link between two undertakings.
The Draft Law5 amending the current legislation pertaining to trade marks will take this one step forward as the limitation stipulated in Article 12 will explicitly include the wording of 'accessories and spare parts'. The said Draft Law is awaiting to be evaluated by the Members of the Turkish Parliament, therefore the date of enactment is not clear as of yet. However, this proposed amendment emphasizes the importance given to the automotive supply industry in Turkey, which is known to have a very high investment potential.
Footnotes
1 Decree-Law No. 556 of 24.06.1995, OG No: 22326, 27.06.1996.
2 Trade Marks Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.
3 Case C-63/97, Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v. Ronald Karel Deenik [23.02.1999] European Court Reports 1999 I-00905.
4 The Eleventh Civil Law Chamber of Turkish Court of Cassation Case No. 2003/2346 E. 2003/8743 K. dated 03.10.2003.
5 Draft Law in regard to Amendments to Decree-Law No. 551 on the Protection of Patent Rights, Some Other Statutes and Decree-Laws http://www2.tbmm.gov.tr/d24/1/1-0756.pdf (Only available in Turkish) Date of Access: 16.09.2015
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