INTA Roundtable Sheds Light on Concept of Acquired Rights in Turkish Trademark Law

Published: April 1, 2020

Ezgi Baklaci Gülkokar Moroglu Arseven, LLP Istanbul, Turkey

Local brand professionals had the opportunity to gain a better understanding of the existing practice and the boundaries of the acquired rights principle, at an INTA roundtable in Istanbul, Turkey.

The principle of acquired rights in Turkish Trademark Law is not defined by law but is shaped by Turkish Court of Appeal decisions and the practices of the Turkish Patent and Trademark Office (TPTO). This approach is highly criticized by practitioners who often argue that it leads to inconsistent decisions.

Levent Yavuz, honorary member of the 11th Civil Chamber of the Court of Appeal, and Mustafa Kubilay Güzel, Head of the Trademark Department at the TPTO, participated in the roundtable, which was held on February 7 at the offices of Moroglu Arseven LLP.

For some years, the Court of Appeal applied a three-stage test when accessing the acquired rights arising from a trademark. This took into account:

  1. Use of an earlier mark with no cancellation threat;
  2. Level of similarity; and
  3. Similarity of the goods and services of the later trademark with the earlier trademark.

In addition, if two trademark holders somehow registered the same or similar trademarks, which have coexisted for a long period of time, the condition of not being subject to a legal dispute has an exception.

Mr. Yavuz illustrated this by referring to the 11th Civil Chamber Court of Appeal’s decision of September 19, 2008 (No: 2007/7547 E.-2008/10251 K), a milestone for the acquired rights doctrine.

In the decision, both parties had earlier registrations for similar trademarks:

  • ECE word trademark; and
  • ECE word + device trademark

Both trademarks coexisted since the 1990s, until the cancellation action was filed in 2014 against the defendant’s new trademark registrations: ECE LADY and ECE TOFF. Mr. Yavuz emphasized that the acquired rights concept is a privileged right and should be considered as an exemption. He added that if both parties coexisted in the marketplace for a reasonable time, the balance of interests should be taken into consideration. In this instance, the defendant had acquired rights for the latter applications.

Nevertheless, practitioners continue to question whether the earlier registered trademark should have to show that it is being used actively at the date of the later application in order to prove that the trademark holder has acquired rights for the latter application. Under this scenario, the legal period foreseen for the trademark cancellation action and the loss of a right by remaining silent are taken into consideration. It is noted that courts generally require the trademark to be registered for more than five years, with extensive and uninterrupted use of the trademark.

The other listed conditions regarding the level of similarity of the later trademark with the earlier trademark are based on subjective examination. Mr. Güzel provided examples that had contradictory outcomes in this matter while reassuring practitioners that the TPTO is preparing new Trademark Examination Guidelines that will contain an exclusive section for the explanation of the acquired rights principle.

Among the discussion topics were the bad-faith application’s status on constituting an acquired right and trademark applications filed to overcome non-use defense. Participants’ perspectives varied, which made for a lively, engaging, and productive roundtable.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2020 International Trademark Association