In this article, come up comments related to the various arrangements has been made about well-known trademarks in our legislation including the International Agreements that Turkey is a party, also the studies executed internationally.
In Turkey, the legislation in force concerning the protection of trademarks is the Decree Law No. 556 Pertaining To The Protection Of Trademarks, which has came into force by appearing in the Official Gazette dated 27.06.1995 numbered 22326. Article 7/1-i of the Decree Law No. 556 has made an arrangement concerning that “trademarks which have not been authorised by their owners, well known marks according to 6bis of the Paris Convention” cannot be registered. Article 7 of the Decree Law Numbered 556 has made arrangements concerning the absolute grounds for refusal of trademark registration. Absolute grounds for refusal are considered by Turkish Patent Instute sua sponte and in case of the existence of the grounds stated in this article, the application is decided to be refused.
The first part of 1bis article of Paris Convention referred by the article of the Decree Law stated above is that ” The union countries engages both directly or upon the demand of concerned party, the refusal or invalidation of a trademark in case of being a sample, copy or a translation of a fabric or trade mark that is delibrated as widely known to be used on the same or similar products belongs to a party accepted to benefit from this Agreement in such country, by the competent authorities of the country that the registration is demanded. The condition is the same as stated above if consists of dublicating the primary compenent of a trademark widely known or is a copy that can cause a confision with this trademark.”
In the second part of the same article, there is a provision that a period at least for five years as of the registration date is granted for demanding the abandonment of this kind of trademarks. The convention released the union countries for deeming a grace term to demand disqualification of the use. In the third part of the article however, it is stated that ” A term cannot be determined for demanding the abondonment or banning the use of trademark registered malevolently.”
This provision of Paris Convention provides the necessity of engament to invalidate the registration of a copy trademark in case of composing a sample, copy or translation of a trademark, that is used on the same or similar products widely known to belong to a party accepted to benefit from this convention.
Accordingly, in order to find a field of application for this article, existance of a party accepted to benefit from this convention is necessary. The second article of the convention commands the provision that ” Citizens of each union country shall benefit the advantages that is entitled or will be entitled to citizens by the laws concerning the protection of industrial property rights in all the other union countries on condition that the rights deemed seperately by this Agreement shall not be harmed.” According to this, concerning the industrial property rights, each of union countries shall execute equal treatment to the citizens of other countries party to the Agreement as their own citizens. Third article of the convention enlarges the scope by the provision that ” The ones who are the citizens of the countries not party to the union but residing on the national territory of a country party to the union or the ones having an actual and serious industrial or commercial establishment shall be treated as the citizens of an union country.
The second condition for the enforcement of article is, existence of a trademark which is widely known. It is obvious that by “widely known”, wellknown trademark is implied. But, the explanations of what is implied by wellknown trademark, the criterias that a trademark should have, in order to be accepted as a wellknown trademark are not figured in convention text. Therefore, we will discuss the criterias that wellknown trademark should have, in the continuation of our writing.
The third condition for the enforcement of the article is, the use of trademark widely known, on the same or similar products. By “same or similar products”, the classification of goods and services composed within the frame of provisions of Notification Concerning The Enforcement of Nice Agreement Related To The Classification Of Goods And Services for the Registration of Trademarks are implied.
The last condition prescribed for the enforcement of the article is, composing a sample, copy or translation that can cause a confusion, of a trademark widely known.
Article 7/1-i of the Decree Law Numbered 556 has involved the registration of well-known trademarks according to article 6bis of Paris Convention, to the permission of the trademark holder. Wellknown trademark can be registered on behalf of a third party in case that the holder of the wellknown trademark consents. However, the acceptance of this consent is impossible if subsequent trademark application covers the same or similar goods and services with the wellknown trademark. The consent is preferred to be given as written in terms of proving the existance of the permission.
Article 8 of the Decree Law Numbered 556 arranges the relative grounds of refusal. This article is enforced, upon the publication of an trademark application in Official Trademark Bulletin if an objection is raised in order not to registrate the trademark. 4th paragraph of the article commands the provision that, “A trademark applied for which is identical or similar to a registered trademark or to a trademark with an earlier date of application may be used for different goods and services. However, where in the case of a registered trademark or of a trademark which has an earlier date of application for registration the trademark has a reputation and where the use without due cause of trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark or of the trademark with an earlier application date, upon opposition by the proprietor of the earlier trademark, the trademark applied for shall not be registered even to be used for goods and services which are not similar to those for which the earlier trademark is registered.” This arrangement is drawed from 4.4.a article of the Guideline numbered 89/104. In the Guideline, the member states are enabled to choose in circumstances that can be harmful for the distinctive character of the well-known mark or cause to damage the reputation of the mark, the same or similar of the trademark cannot be registered for the different goods/services or if it is registered, this registration shall be cancelled. Accordingly the Guideline has made an arrangement that, the use of the similar of the wellknown trademark for different goods and services can be prevented as well as the use of the same of the wellknown trademark can be prevented. Although similar trademark is not clearly mentioned in second sentence of the paragraph 4 of article 8 of the Decree Law Numbered 556, both occuring in the first sentence of the paragraph and because of the arrangement in the Guideline numbered 89/104, it is considered that the holder of the wellknown trademark should have the right of opposition as being similar trademarks too. Article 9/1-c of the same Decree Law, supports th is thought by giving authority for banning “use of any sign which is identical with or similarity to the registered trademark in relation to goods or services which are not similar to those for which the trademark is registered, where the of that sign without due cause takes unfair advantage of or is detrimental to the distinctive character or the repute of the registered trademark
The concept of wellknown trademark arranged in the articles 7 and 8 of the Decree Law No. 556 should be evaluated as differently form each other. In the Private Issue of Official Trademark Bulletin that has been published for only once by Turkish Patent Institute and has not been updated, the trademarks accepted as wellknown trademark according to 1st article repetitive article 6 of Paris Convention dated 1883 and 7/1-ı article of Decree Law numbered 556 has been published. But there are also trademarks that are statuted as wellknown trademark after the publishment of this Private Issue, these decisions are being published in Official Trademark Bulletins. Trademarks such as BEKO, BMW, ARÇELIK, CAMEL, COCA-COLA, GRUNDIG, KODAK, LACOSTE, MERCEDES, MARLBORO are a few of the trademarks that have been published in this issue. The registration of a wellknown trademark according to the article 8/4 of Decree Law is not possible. This arrangement has been made among the relative grounds of refusal, it is evaluated in case of an opposition filed by related third parties upon the publishment of trademark and as a result adjudicated by Turkish Patent Institute. However, article 7/1-ı of Decree Law refering to article 6 of repetitive article 1 of Paris Convention is an absolute ground of refusal and in existance of a condition like this, as a result of an sua sponte examination made by the Instute, the refusal of the application is decided. For this reason, in case of an application of the same of a wellknown trademark or a sample of wellknown trademark that can cause a confusion, filed by a different party other then the owner of wellknown trademark, even if it is not prescribed in Regulation, in order not to be object of a refusal decision, it will be an advantage for the applicant to file also the consent document given by the owner of wellknown trademark with the application documents.
Another international agreement makes arrangement in subject of wellknown trademark is Trade Related Aspects of Intellectual Property Rights (TRIPS), which is the annex of the Agreement Establishing the World Trade Organization. Article 16/3 of the agreement commands the provision that “Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.” By this arrangement, different goods or services are also included to the scope of protection prescribed in Paris Convention, in other words the scope of wellknown trademark concept that has been brought by Paris Convention is widened.
Article 16/2 of the agreement states the arrangement that “Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.” Accordingly, it is seen that for the first time in this agreement the criterias that wellknown trademark should carry is accommodated as a general statement.
As seen, there are some criterias for a trademark to be respected as wellknown trademark. If we summarize shortly, the trademarks which has wide distribution network in the country, wellknown in the relevant sector and obtained this recognition as a result of the promotion, can be evaluated as wellknown trademark. For the acceptence of a trademark as wellknown trademark, it should have the criterias explained above or at least recognition of the trademark by the intermediate level of consumers using up the commodity that trademark is used on, in other words it must be identified with the commodity or that trademark must be recognized when that commodity is mentioned.
Again to talk about wellknown trademark, a trademark that has a high power of advertising and became a quality symbol has to be known not only by the relevant sector of the goods and services bearing that trademark but also by the parties that are irrevelant to those goods and services.
Federal Court of Switzerland has made a decision about whether the protection of trademark “Yeni Rakı” according to the article 6 of Paris Convention in Switzerland is possible or not, that the protection depends on if this trademark is known by the Turkish people living in Switzerland or not. In the same decision it is also mentioned that, for the trademark Yeni Rakı the condition to be used in Switzerland according to article 6 of Paris Convention will not be looked for.
Court of Appeals for the 11th Circuit has determined the criterias that a wellknown trademark should carry by means of the decisions given on different dates.
In the verdict of Court of Appeals for the 11th Circuit dated 10.04.1997 and numbered 1997/1920 ; 1997/2708 the case has been refused by the reason that; it is clearly understood from the documents filed that, the plaintiff has registered the trademark in all thirty countries where the trademark subject to the case established and used since 1980; However the Local Court has refused the action by the ground that the plaintiff could’t prove that he made his trademark well-known in Turkey and worldwide, the products is being sold in Turkey. But, it is necessary to accept that the plaintiff has registered his mark in a lot of countries, by this way he made the mark well-known. It is seen that the decision was it is necessary that “claiming the plaintiff has made the said trademark well-known before the defendant, in this concrete case the trademark shall not be bounded by geographic boundries and in the case Paris Convention is needed to be applied, considering whether the defendant who is liable to act as prodent businessman while he is registering a mark, was aware of the plaintiff’s mark that is well known in relevant sectors, evaluating that if there is a similarity between the mark of plaintiff and the defendant, consequently deciding according to the discretion and result of whether there is an unfair competition or not. By means of this decision of Court of Appeals, it is concluded that wellknown trademark must be also evaluated according to the number of countries that it is registered. Although the number of countries that a trademark is registered directly effective for being wellknown, it is clear that to ground on only this criteria is not enough.
Again, Court of Appeals for the 11th Circuit has made the definition of wellknown trademark in the verdict dated 13.03.1998 and numbered 1997/5647-1998/1704. Accordingly wellknown trademark is defined as, ” It is possible to describe as strictly orientated to a person or an enterprise, connected to guarantee, quality, powerful advertising, common distribution network, without making a distinction for customer, relatives, friend, enemy, without observing the differences of geographical boundary, culture, age, an association arising as a reflex by the people in the same environment.”
In the verdict of Court of Appeals for the 11th Circuit dated 25.09.2000 and numbered 2000/6139-7062, it is decided to affirm the judgment of the Local Court deciding the admission of the case by the ground that ” the trademark of the plaintiff is as registered in many countries, also registration applications have been filed in many countries and the proceedings for registrations are continuing, the sign of the plaintiff is a trademark on cigarettes, it is being sold in Turkey and many countries except Turkey, there are applications for registration of his trademark in many countries for a wide range of products except cigarette, also in Turkey between 1994-1997, it is understood that the studies for advertising and promotion have been performed and the said trademark is determined to be well-known.”
The international studies about wellknown trademark is being executed within World Intellectual Property Organization (WIPO). At the meeting “Welknown Trademark Committee of Experts” dated 13-16 November 1995 arranged in the scope of these studies about the determination of the criterias necessary for the acceptance of a trademark as wellknown trademark, two point of views have been constituted.
1- Registration will be committed by National Offices in accordance with the criterias constituted by Committee of Experts and this registration will be notified to member countries through World Intellectual Property Organization.
2- Also in accordance with the criterias constituted by Committee of Experts will be committed by World Intellectual Property Organization.
In accordance with the views embraced at this meeting, a text has been composed by World Intellectual Property Organization and this text has been embraced at the meeting of Experts Committee dated 28-31 October 1996 except two dispensations which are;
A- The part of tradename stated in 4th paragraph of first article of the text.
B- The part of protection of the trademark stated in the first paragraph of second article
The text prepared by World Intellectual Property Organization is exactly as follows:
Article 1
Definitions
(I) Party: Organization related to registration of trademark between governments or cabinets
(II) Offices: The authorized institution registrating the trademarks or other identifier signs in Member States.
(III) Region: The boundry of organizations between a coutnry or governments.
(IV) Identifier Signs: Trademark, tradename, symbols, logos or emblems of identifying
Article 2
Conditions of Protection
Korumanın Şartları
(1) (Protection of Unregistered Trademark) Wellknown trademarks can be protected in a country without registration and necessity of use.
(2) (Recognition In The Boundries Of Area The Protection Is Provided) Wellknown marks by the consumers using the good or service pertaining to the sector in the boundries of protection provided
(3) (Criterias) One or more of the criterias is considered in determination of a wellknown trademark.
(I) The potential customers type of goods and services to which the trademark to be protected as wellknown applies;
(II) Channels of distribution of the type of goods and services,
(III) The duration, extent and geographical area of any use of the marks to be protected as wellknown,
(IV) The duration, extent and geographical area of any promotion (advertising) of the mark to be protected as wellknown,
(V) The market share of the goods or services to which the mark applies within the boundries that the mark shall be protected as wellknown or within other boundries.
Article 3
The Scope of Protection
1) Connection with the wellknown mark
a) Wellknown mark is protected against all kinds of marks and identifying signs related to itself.
b) Any wellknown mark shall prevent the use of a mark on the same goods and services where that mark constitutes a translation, or the same of an essential part or liable to create confusion of the well known mark
c) Except as stated in paragraph (b) the wellknown mark shall prevent the use of a mark, irrespective of the goods and/or services for which a mark is used, that mark shall be deemed to be in conflict with a well known mark where the mark, or an essential part thereof, constitutes a translation of the well known mark, and where at least one of the following conditions is fulfilled,
(I) Although it shall be use on different goods or services, if the use these goods or services would indicate a connection with the owner of the wellknown mark.
(II) Although it shall be use on different goods or services, if that mark damages the distinctive character of the well known mark;
(III) Although it shall be use on different goods or services, if that mark would take unfair advantage of the distinctive character of the well known mark.
2) (Refusal of the Registration) The Offices shall refuse the applications of trademarks or other identifying signs that are determined to be related to the wellknown mark.
3) (Opposition Procedures) A right of opposition shall be provided to the third parties concerning the trademarks or other identifying signs that are determined to be related to the wellknown mark.
After this meeting the studies of the committee continued and at the Meeting of World Intellectual Property Organization Management Units dated 20-29 September 1999, a joint resolution of which delegates of some countries did not attend to and it has been embraced as document A734/13 by the party countries. The member countries are set free about this joint resolution that the countries must take it as an advice and it will be helpful to take into consideration of this resolution when deciding whether a trademark is wellknown or not. In the scope of this document 120 countries member of World Intellectual Property Organization have embraced that;
1-a) In determining whether a mark is a well-known mark, the competent authority of the member state shall take into account any circumstances from which it may be inferred that the mark is well known.
1-b) In particular, the competent authority of the member state shall consider information submitted to it with respect to factors from which it may be inferred that the mark is, or is not, well known, including, but not limited to, information concerning the following:
The degree of knowledge or recognition of the mark in the relevant sector of the public
The duration, extent and geographical area of any use of the mark
The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
The duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark; The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;
The value associated with the mark.
At this meeting also it is accepted that;
1-c) The above factors, which are guidelines to assist the competent authority to determine whether the mark is a well known mark, are not pre conditions for reaching that determination. Rather, the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed, above. Such additional factors may be relevant, alone, or in combination with one or more of the factors listed above.
Kabul görmüştür.
In the document accepted by World Intellectual Property Organization,
Relevant sector is explained as;
Actual and/or potential consumers of the type of goods and/or services to which the mark applies;
Persons involved in channels of distribution of the type of goods and/or services to which the mark applies;
Business circles dealing with the type of goods and/or services to which the mark applies.
Markanın uygulandığı mal ya da hizmetlerin dağıtım kanallarındaki görevli kişiler
Markanın uygulandığı mal ya da hizmetlerle ilgili olan iş çevreleridir.
Şeklinde açıklanmıştır.
World Intellectual Property Organization has embraced that, for such trademark, to be wellknown at lease in one relevant sector will be accepted sufficient to be accepted as wellknown trademark.
By means of the explanation “In determining whether a mark is a well-known mark, the competent authority of the member state” stated in the document A/34/13 about who has to decide whether a trademark is wellknown, it must be concluded that the decision authorization as an administrative authority is Turkish Patent Institute and as the decision authorization for adjudication is Court of Intellectual And Industrial Property Rights. Turkish Patent Institute must have the examination authorization whether a trademark is wellknown or not while examining the the trademark applications filed and objections filed related to the said applications. However in the conditions that there isn’t any benefit, it is thought that a demand for determining a trademark is wellknown shouldn’t be necessary to make a subject of examinaiton by the Institute. In case of existance of an objection filed against the registration demand of a trademark by the argument of a wellknown trademark, Instute is bounded to examine the argument of wellknown trademark in the frame of documents filed and adjudicate a decision.
Except this, again in accordance wtih the same document it is accepted that, judgment auhorities should also make an examination about wellknown trademark and adjudicate a decision. It is clearly understood from the examples of decision stated above that, in Turkey such decisions are given by the courts. Here the subject that must be argued is that, whether the cases filed by the courts with the demand of determination of wellknown trademak should be listened or not. According to us, as the demands to determine the wellknown trademark shouldn’t be a subject of examination by Turkish patent Institute individually, this condition must be embraced by the courts as the same, the cases filed without an opponent or by showing Turkish Patent Institute as an opponent, with the demand of determination of wellknown trademark shouldn’t be listened.
Ankara Barosu FMR Dergisi 2001/2 sayısında yayınlanmıştır.
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