Trademarks
Under Article 13(d) of Law No. 5000 on the Establishment and Duties of the Turkish Patent Institute, which was published in Official Gazette No. 25294 of November 19, 2003 and entered into force on that date, the Trademarks Department of the Turkish Patent and Trademark Office (TÜRKPATENT) is also responsible for “determining and implementing the principles on the level of recognition of trademarks in accordance with the relevant legislation”. Under Articles 47 and 48 of Decree-Law No. 556 on the Protection of Trademarks, persons adversely affected by any decision of the Office may file an appeal with the Office, and decisions on the well-known status of trademarks are likewise open to appeal.
The Trademarks Department assesses the level of public recognition of a trademark, how widely it is known by everyone, and the general level of recognition it has achieved beyond the potential and actual users of the goods, according to the criteria below.
1. Duration of registration and use of the trademark (detailed information on the history of the trademark),
2. Geographical area and scope of the registration and use of the trademark. (What are its domestic and foreign registrations?)
3. How widespread are the goods and/or services bearing the trademark in the market, and what are their market share and annual sales volume?
4. What are the features of the promotional activities for the trademark (especially those in Türkiye)? (Duration, continuity, geographical reach and scope of the promotion, money spent on promotion, nature of the promotion (TV advertising, local newspaper advertisements, promotion aimed only at parents, etc.))
5. Are there activities that are not advertising but may help promote the trademark? (Coverage in newspapers, magazines, TV and other media, exhibition of branded products at trade fairs, etc.)
6. Is there a court decision showing that the trademark is well known, and what effective efforts has the owner made to protect the trademark? (Court decisions other than a well-known status decision, pending trademark and unfair competition lawsuits, number of oppositions, etc.)
7. How original is the trademark, and what is its degree of distinctiveness?
8. Results of any public opinion surveys on the recognition of the trademark.
9. Features of the company that owns the trademark (size of the company, number of employees, paid-in capital, turnover, profit, distribution channels in Türkiye and abroad: branches, dealerships, service network, taxes paid, export volumes, market dominance, etc.),
10. Is the trademark identified with the goods or services on which it is used? Does the trademark, as a word or figure, reflexively bring a particular product to mind the moment it is seen? Does the trademark indicate a certain quality or status in relation to the goods or services on which it is used?
11. Are there certificates or awards obtained for the product bearing the trademark or for the company that owns it (quality certificates such as TSE, TSEK and ISO, quality awards, environmental awards, Blue Flag, etc.)?
12. What are the distribution channels of the products bearing the trademark (other than the owner's own distribution channels), and what are the import and export opportunities for these products?
13. If the trademark has been the subject of a sale or a valuation, what is its monetary value? Is the monetary value of the trademark shown in the owner's annual balance sheet?
14. How broad is the portfolio of goods and/or services covered by the trademark registrations? (Example: a trademark registered only for “sodas” versus a registration covering all electronic goods.)
15. If the trademark is known to the public, for how long has it maintained this level of recognition?
16. Because of its recognition, is the trademark the target of infringing acts aimed at this status? Is it being imitated by third parties? (Volume of applications similar to the trademark, whether third parties are using the trademark unlawfully in the market, etc.) If the trademark is being used by third parties, does this use harm the owner of the well-known trademark in terms of its form and the geographical and commercial area over which it extends?
17. Is the trademark vulnerable to infringement because of the nature of the goods or services on which it is used (example: a car brand versus a chewing gum brand) or the nature of its potential and actual user base (a brand for a product aimed at doctors versus one aimed at children)?
18. Any documents proving the above or proving that a trademark is well known.