Trademarks Comparative Guide

1 Legal framework

1.1 What is the statutory or other source of trademark rights?

In Türkiye, trademark rights are governed by Law 6769 on Industrial Property.

1.2 How do trademark rights arise (ie, through use or registration)?

According to Article 7(1) of the Law on Industrial Property, trademark rights arise through registration. However, unregistered trademarks can also constitute grounds for refusal or invalidity in case of oppositions or lawsuits. For a successful request, the opposing party or the applicant must prove the active use of its unregistered trademark in Türkiye.

1.3 What is the statutory or other source of the trademark registration scheme?

The statutory source of the trademark registration scheme in Türkiye is the Law on Industrial Property, along with its implementing regulations.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

According to the Law on Industrial Property, no specific type of designation or sign is defined as being incapable of serving as a trademark. The law itself states that a trademark may consist of any sign – in particular:

• words, including personal names;
• figures;
• letters;
• numerals;
• colours;
• the shape of goods or their packaging; and
• sounds.

Multimedia marks and position marks are also accepted as being capable of serving as trademarks in Türkiye.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

A Turkish trademark may consist of any sign which is capable of:

• distinguishing the goods or services of one undertaking from those of others; and
• being represented in the Trademark Register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the trademark owner.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

In Türkiye, smell marks and taste marks are not considered to satisfy the requirement of being capable of representation in the Trademark Register and are thus ineligible to serve as trademarks. However, this situation might change in the future if new methods which facilitate the representation of such marks in the Trademark Register are accepted.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The Turkish Patent and Trademark Office (TURKPATENT) controls the registration process.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

An application fee per class is paid at the application stage. If a registration decision is received, a fixed registration fee will be payable for the issuance of a registration certificate.

3.3 Does the trademark office use the Nice Classification scheme?

Yes, TURKPATENT uses the Nice Classification.

3.4 Are 'class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

The list of goods has been arranged under general headings. It is assumed that the general headings related to these groups encompass all goods or services that fall within the respective Nice class.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

There is no procedure for submitting a declaration of use or intent to use in order to demonstrate the sustainability of the trademark. However, if the trademark has not been put to genuine use in Türkiye by the trademark owner in connection with the registered goods or services within five years of the date of registration, or if such use has been suspended for an uninterrupted period of five years, the trademark will be cancelled upon request, unless there are genuine reasons for non-use.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes, TURKPATENT conducts a relative examination of trademark applications and checks for earlier conflicting marks.

3.7 What types of examinations does the trademark office perform other than relative examination?

TURKPATENT examines trademark applications based on absolute grounds.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

The following signs can be refused registration based on absolute grounds:

• signs which are against public order or morality; and
• signs containing religious values or symbols.

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No, there is no separate or supplemental register on which descriptive marks may be registered.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

After publication of a trademark application, any party may submit to TURKPATENT its written grounded observations that the trademark application should not be registered due to the existence of absolute grounds for refusal, with the exception of Article 5/1-(ç), which concerns the ex-officio refusal of trademark applications that are identical or indistinguishably similar to registered trademarks or trademark applications bearing an earlier date of application.. However, such parties cannot participate in the proceedings before TURKPATENT. TURKPATENT will evaluate the observations and, if it concludes that the observations are correct, will refuse the trademark application, either partially or wholly.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

This is not necessary at the registration stage. However, if the trademark has not been put to genuine use in Türkiye by the trademark owner in connection with the registered goods or services within five years of the date of registration, or if such use has been suspended for an uninterrupted period of five years, the trademark will be cancelled upon request, unless there are genuine reasons for non-use.

3.12 How much time does it typically take from filing an application to the first office action?

It takes approximately two to four months from filing an application to the first office decision.

3.13 How much time does it typically take from filing an application to publication?

It takes approximately three to six months from filing an application to publication if no office action is received.

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

If a trademark application is refused, partially or wholly, based on absolute grounds, the applicant can file an appeal with the Turkish Patent and Trademark Office (TURKPATENT). The application will then be re-examined by the Re-examination and Evaluation Board of TURKPATENT, which is composed of at least three examiners. The board will re-evaluate the trademark, taking into account the applicant's arguments, and make a decision accordingly.

4.2 What is the procedure for appealing a trademark office refusal?

The appeal process begins with the appellant submitting a written appeal to TURKPATENT within two months of the date of the refusal decision, along with a reasoned appeal petition.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

The decision of the Re-examination and Evaluation Board may be appealed before the Specialised Ankara IP Court within two months of notification of the decision.

In this judicial process, the court will review TURKPATENT's decision to refuse the application and will make its own decision.

5 Oppositions

5.1 Can a third party oppose a trademark application?

A trademark application can be opposed by related parties after publication in the Turkish Official Trademark Bulletin. Any natural or legal person, as well as groups representing such persons, who believe they would be adversely affected by the registration of a trademark, have the standing to file an opposition.

5.2 Who has standing to oppose a trademark application?

Under the Law on Industrial Property, any natural or legal person has standing to oppose a trademark application, including individuals, companies, organisations and other entities that believe they would be adversely affected by the registration of the trademark in question.

5.3 What is the timeframe for opposing a trademark application?

A trademark application can be opposed by related parties within two months of publication in the Turkish Official Trademark Bulletin. The two-month timeframe for filing oppositions is non-extendable and it is not possible for potential opponents to request an extension for filing an opposition.

5.4 Which body hears oppositions?

Oppositions are examined by the Trademarks Department of the Turkish Patent and Trademark Office (TURKPATENT) by a single examiner.

5.5 What is the process by which an opposition proceeds?

The opposition procedure before TURKPATENT does not include hearings.

Upon receiving the opposition, TURKPATENT notifies the trademark applicant of the opposition and provides it with an opportunity to respond within a specified period. The applicant may submit counterstatements and request the applicant to prove use of the opposed trademark.

Upon the request of the trademark applicant, the opponent must prove use of the trademark on which the opposition is based, to the extent that the trademark has been registered for more than five years on the filing date of the opposed trademark application. If the opponent cannot prove genuine use of its trademark within one month of such request, the opposition will be refused within the scope of the likelihood of confusion claim.

If the opponent proves use of the opposed trademark in the related classes, the trademark examiner will examine the grounds for opposition and evaluate the arguments presented by both parties.

Based on the examination of the opposition and the applicant's response, TURKPATENT will then issue a decision either:

• upholding the opposition and refusing the trademark application; or
• rejecting the opposition and allowing the trademark to proceed to registration.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

TURKPATENT's decision can be appealed before the Re-examination and Evaluation Board, which is composed of at least three examiners.

Although this is not compulsory, the other party has right to file counterstatements against the appeal.

The board will issue a final decision, which may be appealed before the Specialised Ankara IP Court within two months of notification.

Opponents can base their claims on all types of proof. Particularly for proving prior trademark use, the most common types of proof include:

• invoices;
• advertising materials; and
• news articles.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

Unregistered trademarks can constitute grounds for refusal or invalidity in case of oppositions or lawsuits. For a successful request, the opposing party or the invalidity applicant must prove the active use of its unregistered trademark in Türkiye.

6.2 What legal rights are conferred by a trademark registration?

The Law on Industrial Property provides for legal and criminal sanctions in case of violation of the rights arising from registration. The rights arising from trademark registration are granted exclusively to the trademark owner. The trademark owner may seek to prevent the following unauthorised acts:

• use of a sign that is identical to the registered trademark for goods or services that are within the scope of the registration;
• use of any sign that is liable to create a likelihood of confusion or a likelihood of association with the registered trademark; and
• use of any sign that is identical or similar to the registered trademark, irrespective of whether the goods or services for which is it used are identical or similar to the registered goods or services, where the use of that sign without due cause takes unfair advantage or is detrimental to the distinctive character or repute of the trademark due to its reputation in Türkiye.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

There is no separate register for descriptive marks in Türkiye.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

To obtain legal protection under the Law on Industrial Property, a trademark must be registered.

Under Article 159 of the Law on Industrial Property, a trademark owner may apply for evidentiary determinations and interim injunctions as forms of temporary legal protection in case of infringement, where there would otherwise be a risk of loss of the right or an increase in damage.

Article 149 of the Law on Industrial Property sets out the claims that the trademark owner may assert through litigation. These include:

• Determining the existence of infringement,
• Preventing possible infringement,
• Stopping the infringing actions,
• Compensation claims for material and moral damages,
• Seizing infringing products and production instruments without affecting non-infringing production,
• Gaining property rights over seized products and instruments.
• Taking measures to prevent further infringement, including altering or destroying seized products and instruments if necessary.

In addition, the Law on Industrial Property includes a number of criminal sanctions that may be imposed in case of trademark infringement.

The trademark owner may file a criminal complaint with the Chief Public Prosecutor's Office based on Article 30 of the Law on Industrial Property against anyone that infringes its trademark.

The import or export of goods bearing a registered trademark is regulated under Article 7(3)c of the Law on Industrial Property, including the right to prevent "others from bringing goods bearing the mark into the customs territory or subjecting them to a customs-approved process". The trademark owner can obtain injunctions or criminal seizure orders if suspected counterfeit goods are found at Customs.

7.2 What remedies are available against trademark dilution?

While the legal framework for addressing trademark dilution is not explicitly defined in the Law on Industrial Property, a form of dilution is regulated under Article 6(5) and Article 7(2)-c of the law.

For a trademark to benefit from protection against dilution under the Law on Industrial Property, the prior trademark must be well known in Türkiye.

Within the scope of Article 6(5), a trademark application which is identical or similar to an earlier registered trademark or application – irrespective of whether the goods or services to which that earlier mark relates are identical or similar to those for which registration of the later mark is sought – and the use of the later trademark without due cause would take unfair advantage or be detrimental to the distinctive character or repute of the earlier trademark due to its reputation in Türkiye, registration of the later mark will be refused upon opposition by the owner of the earlier trademark.

According to Article 7(2)-c, the use of a sign that is identical or similar to a registered trademark – irrespective of whether the goods or services in relation to which that sign is used are identical or similar to those covered by the registered trademark – will be prohibited where the use of that sign without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of that trademark due to its reputation in Türkiye.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

Actions constituting unfair competition – such as false advertising, misleading statements and other deceptive practices – can be addressed under the Commercial Law to protect trademark rights.

7.4 What is the procedure for pursuing claims for trademark infringement?

According to Article 4(1)-d of the Commercial Law, regardless of whether the parties are merchants, cases that fall under the scope of the IP laws are considered absolute commercial cases. Mediation is mandatory in absolute commercial cases. Apart from compulsory mediation, there is nothing to prevent the parties from applying for voluntary mediation in disputes other than trademark law-related receivables and compensation claims.

The procedure may vary depending on:

• the nature of the claim; and
• the act that caused the infringement.

The available legal protections are regulated in Articles 149, 150 and 151 of the Law on Industrial Property.

To determine whether an act constitutes trademark infringement, a lawsuit for the determination of trademark infringement may be filed, as well as a lawsuit for the prevention of possible infringement, cessation and elimination of infringement.

If infringement is found, the trademark owner may file a lawsuit for monetary damages against the persons that committed the act to compensate it for damages suffered. If the conditions are met, a lawsuit for moral damages and reputational damages may be filed.

The trademark owner may also file a criminal complaint with the Public Prosecutor's Office based on Article 30 of the Law on Industrial Property against anyone that infringes its trademark.

If a trademark is not registered, the trademark owner may file a lawsuit based on the unfair competition provisions of the Commercial Law regarding infringements such as counterfeit trademarks.

7.5 What typical defences are available to a defendant in trademark litigation?

The defendant may put forward many defences, depending on the concrete case. These may variously include the following:

• There is no likelihood of confusion,
• The claimant's trademark is of weak character;
• The defendant used the trademark honestly and in the ordinary course of commercial life (fair use);
• An unregistered trademark exists that pre-dates the claimed trademark and the claimant has tacitly consented to use of that mark;
• The defendant is entitled to use the trademark;
• The limitation period has expired;
• The trademark subject to the action is descriptive in nature or lacks distinctiveness;
• The claimant has not used the trademark; or
• The claimant's trademark is not valid.

A defence can also be made through an invalidation action.

In addition, third parties may file a lawsuit to seek confirmation of the absence of infringement because the sign they use does not fall within the scope of registration of the trademark owner's mark. The statute of limitations and the non-use defence may also be asserted in this lawsuit.

7.6 What is the procedure for appealing a decision in trademark litigation?

Türkiye has a three-tiered judicial system (first-instance courts, regional courts of justice and Supreme Court), which is followed until a case is resolved.

Parties that are adversely affected by a first-instance court decision have the right to appeal to the regional courts of justice, whose decisions can in turn be appealed to the Supreme Court. The Supreme Court's decision is final and no further appeal is possible.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

According to the Law on Industrial Property, the term of protection for registered trademarks is 10 years from the date of application. Upon the request of the trademark owner, this term will be renewed for further 10-year periods.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

A request for renewal should be made by the trademark owner in the six months before the expiry of the protection date. Confirmation of payment of the fee should be submitted to the Turkish Patent and Trademark Office (TURKPATENT) within the same period. If no request is made or if confirmation of payment of the renewal fee is not submitted to TURKPATENT within this period, a renewal request may be made in the six months after the expiry of the protection date, provided that an additional fee is paid.

8.3 What are the grounds for cancelling a trademark registration?

There are two types of trademark cancellation proceedings: a registered trademark can be either declared invalid or revoked.

Grounds for invalidation: If one of the absolute or relative grounds for refusal of a trademark applies, a registered trademark may be declared invalid. A trademark may only be declared invalid by court decision.

Grounds for revocation: The grounds for revocation are as follows:

• The trademark has not been used for a continuous period of five years;
• The trademark has become generic for the registered goods or services;
• The trademark is misleading to the public in relation to the nature, quality or geographical origin of the goods or services for which it is registered; or
• The trademark has been used contrary to the technical specifications that apply to guarantee or collective marks.

Since 10 January 2024, TURKPATENT has been authorised to examine trademark revocation requests.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

According to Article 22(1)-(2) of the Law on Industrial Property, TURKPATENT can cancel a registration on its own initiative if a trademark has been registered without the completion of the basic stages of examination – for example:

• without being published;
• without payment of the registration fee; or
• in case of an opposition, without examination of the opposition.

In such cases, the examination of the application will recommence from the uncompleted stage of examination. However, if two years have already passed since the date of registration, it will not be possible to cancel the registration, even if the basic stages of examination were not completed.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

In trademark invalidation proceedings, the invalidity applicant must submit a request for invalidation to the authorised courts.

Since 10 January 2024, a request for trademark revocation must be submitted to TURKPATENT. TURKPATENT will examine the trademark revocation request and issue a decision accordingly, which may be appealed before the Specialised IP Court of Ankara.

8.6 What is the procedure for appealing a decision cancelling a registration?

A registered trademark may be declared invalid by court decision, which may be appealed before the regional courts and subsequently before the Supreme Court.

A revocation action must be initiated before TURKPATENT, whose decision may be appealed before the Re-examination and Evaluation Board. The board's decision may subsequently be appealed before the Specialised IP Court of Ankara, whose decision in turn may be appealed before the regional courts and subsequently the Supreme Court.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

No, there are no special requirements in this regard. In Türkiye, trademark licences can be either exclusive or non-exclusive; typically, they are considered non-exclusive unless the agreement explicitly states otherwise.

Trademark licences can also be partial, covering only specific goods or services.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

While it is not mandatory to record the trademark assignment/licence with the Turkish Patent and Trademark Office, in practice this is essential to ensure its enforceability against third parties.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

This will depend on the agreement signed by both parties.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

Trademark applications which are identical or similar to a well-known mark within the context of Article 6bis of the Paris Convention will be refused upon opposition in respect of identical or similar goods or services.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

The Turkish Patent and Trademark Office does not permit registration of a mark based on a foreign or international registration. However, it is possible to claim priority based on a foreign or international registration.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.