Genuine Right Ownership in Turkish Trademark Law

Nazim Kaan Demir

Counsel

Introduction

The legal nature of trademark rights, the method by which these rights are acquired, and the principle of genuine right ownership have been subjects of extensive debate in both case law and legal doctrine in Turkish law. In this article, we examine how trademark rights are obtained under Turkish trademark law and analyze the concept of genuine right ownership in Turkish legislation, case law, and doctrine.

I. Obtaining Trademark Rights

A. Obtaining Through Registration

Trademark rights are industrial property rights granting the owner exclusive rights over the registered trademark and are primarily obtained through registration. Article 7(1) of the Turkish Industrial Property Code (Law No. 6769, hereinafter "IPC") explicitly states that trademark protection under the IPC is obtained via registration. Therefore the person who registers a trademark becomes its legal owner—a principle referred to in legal doctrine as the "principle of registration".

According to Turkish legal scholars, the legal effect of registration varies depending on whether the trademark has been in use prior to the registration. If registration is based on pre-existing use, it is declaratory in nature; otherwise, it is constitutive. Although trademark registration is not mandatory, it provides the owner with stronger and more comprehensive protection.

Per Article 23 of the IPC, the duration of the protection granted to registered trademarks is ten years from the filing date of the application. This period can be renewed indefinitely in ten-year increments.

In summary, under Turkish trademark law, trademark rights are obtained through registration in principle. However, as will be discussed below, the registration principle is not absolute, and individuals who acquire rights through prior use of a trademark are also provided with certain rights and remedies.

B. Obtaining Rights Through Use and the Principle of Genuine Right Ownership

According to Article 6(3) of the IPC: “If, prior to the application date or priority date, rights have been acquired over an unregistered trademark or another sign used in commerce, the trademark application shall be rejected upon the objection of the owner of these rights”.

This provision establishes an exception to the rule that trademark rights are acquired through registration, granting individuals who acquire rights through the use of unregistered trademarks or other commercial signs the ability to prevent trademark applications for to the same signs. If the genuine right owner fails to prevent registration during the application process, they still have the right to request the invalidation of the registered trademark under Article 25 of the IPC.

Under these provisions, a genuine right owner can rely on prior use of an unregistered trademark, sign, or trade name to prevent a third party's trademark application or request the invalidation of an already registered trademark. This principle grants genuine right owners priority over registered trademark owners by recognizing their rights stemming from prior use.

In summary, persons asserting rights under these provisions may argue that they are the genuine right owners of the trademark and that, despite not having registered the trademark in their name, they have made substantial use of it and hold priority rights over the sign.

Turkish trademark law has also developed case law and doctrinal opinions aimed at protecting individuals who are the genuine right owners of unregistered trademarks.

In cases where trademark rights are acquired through use, the Court of Cassation holds that priority rights belong to those who introduce, use, and make the trademark widely recognized in the marketplace.

For example, the principle of genuine right ownership has been explicitly affirmed the 11th Civil Chamber of the Court of Cassation in its ALVORADO and DOLCE VITA decisions and in the Court of Cassation’s Assembly of Civil Chambers’ LECCE PEN ruling.

The Court of Cassation states in its decision that: "Under Swiss and Turkish trademark law, ownership rights over a trademark belong to the individual who introduces and uses the mark, making it widely recognized in the market. This individual is referred to as the genuine right owner. In such cases, registration serves only a declaratory function. Conversely, if a trademark is registered without prior introduction or use, the registration has a constitutive effect. However, these rights may be overridden by a genuine right owner asserting their priority. Such situations constitute an infringement of the genuine right owner's rights, which can be remedied through provisions of unfair competition under the Turkish Commercial Code and related invalidation provisions in the IPC."

Although these precedents were established under the previous Decree-Law No. 556 on trademarks, they remain just as applicable under the IPC.

The principle of genuine right ownership, as described above, is also recognized in legal doctrine, affirming that rights can be acquired over unregistered signs through use.

II. Conditions for Genuine Right Ownership

To oppose a trademark application or invalidate a trademark registration based on genuine right ownership, specific conditions must be met.

A. Genuine and Substantial Use Prior to the Application or Priority Date

The sign must have been subject to genuine and substantial use in connection with the goods and services covered by the application or registration prior to the application or priority date. The explanatory note to Article 9 of the IPC specifies that use aimed solely at preventing cancellation—such as symbolic use in documents or advertisements—does not qualify as genuine use. Genuine use involves active, market-oriented use of the mark, targeting economic benefits and fulfilling the mark’s primary function of indicating the source of goods or services to consumers.

  B. Type of Use

Genuine right ownership does not necessarily require the sign to be used as a trademark. Rights can also be acquired through the use of trade names or domain names in commercial activities.

C. Use Within Turkey

The use must occur within Turkey. While older case law of the Court of Cassation took a lenient approach to this requirement, more recent decisions emphasize the principle of territoriality, mandating use within Turkey.

For instance, in its 2019 decision (11th Civil Chamber, E. 2017/3943, K. 2019/1154), the Court of Cassation stipulated that genuine right ownership requires intensive and continuous use within Turkey before the trademark application date.

  D. Level of Recognition

The sign must possess a certain degree of recognition. Although the level of recognition required remains debated, it is generally accepted that the mark need not achieve the status of a "well-known mark" under Article 6(5) of the IPC. Instead, it suffices if the sign is distinguishable and recognized by relevant consumers.

E. Burden of Proof

The burden of proof lies with the party asserting genuine right ownership. Evidence of genuine and substantial use, such as advertising materials, sales data, packaging, and sworn statements, plays a critical role in establishing these rights.

III. Bad-Faith Applications and Genuine Right Ownership

In practice, disputes frequently arise where marks widely used but unregistered in Turkey are registered by third parties in bad faith. In such instances, provisions under Articles 6(9) and 6(3) of the IPC can be applied concurrently to challenge these registrations.