Turkey

The protection of trademarks in the Republic of Turkey è is guaranteed both by domestic legislation and by the country’s accession to major international conventions in the field.

The registration of a trademark in Turkey through national filing

The protection of trademarks in Turkey è is mainly regulated by the new Turkish Industrial Property Code (No. 6769), which came into force on January 10, 2017.

Foreign entrepreneurs can apply for the registration of their trademark directly with the Turkish Patent and Trademark Office, accompanying their application with a reproduction of the trademark and an indication of the reference classes, according to the Nice Convention.

Please note that if the foreign entrepreneur does not have a permanent establishment in Turkey, è it is necessary to appoint a licensed trademark attorney/consultant in the country.

Generally, there are no limitations for registering foreign trademarks, unless one of the following conditions is met:

• they are signs that are not defined as a trademark according to Art.4 of Law 6769;
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• are identical or confusable with other trademarks already registered;
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• are devoid of distinctive character;
• are signs used to represent professional or labor associations;
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• are marks characterized by a form imposed by the very nature of the product, may mislead the public as to the nature, quality and origin of the good or service; represent religious symbols;
• the signs and words characterizing the mark are contrary to’public order and morality;
• they are coats of arms or signs protected by international conventions

The Law also protects the so-called notorious trademark, i.e., that trademark which, although not registered, is so widespread in the market that it is associated by consumers with a particular product. With reference to the notorious trademark, the Law provides for the prohibition of registration of trademarks identical or similar to it, both in the case where they refer to products/services identical or similar to those to which the notorious trademark is connected, and in the case where they refer to different products: in the latter case, the prohibition operates provided that the registration of the trademark would be detrimental to the owner of the notorious trademark.

In procedural terms, national trademark filing is completed with the following process. After submission to the Trademark Office, the application is examined within 3-4 months. Once it has been verified as admissible, the Office initiates the publication of the application in the Official Trademark Bulletin. From this moment, within the period of 3 months, those interested in the registration may make an’opposition to it. In case such opposition takes place, the applicant è be allowed a right of reply within the period of 2 months. After the aforementioned time limits have expired, the proceeding shall be considered concluded and, on the basis of the application and any opposition or reply, the Trademark Office shall proceed or not proceed with the registration. The foreign trademark registered through the so-called national filing has an effect in the country equal to that of any other registered Turkish trademark. Registration is valid for 10 years and is renewable.

Registering a trademark in Turkey through international filing

As of January 1, 1999, Turkey è became a contracting party to the Madrid Protocol: for the purpose of protection in Turkish territory of a trademark originally registered in Italy or the EU, the owner will therefore be able to avail himself of the centralized and simplified international registration process provided for in that Protocol. More specifically, the Madrid System provides that the filing of trademarks in one of the member states of the System itself, may, under certain conditions, be fully effective in the other states as well.

In this case, in order to register an Italian trademark in Turkey through the System procedure, è it is necessary to have filed the trademark with any Italian Chamber of Commerce or with the Intellectual Property Office of the’European Union;European Union and apply - jointly or even subsequently - for the extension of the registration in Turkey, through the World Intellectual Property Organization Office (i.e. WIPO), which will consequently register the trademark in the country as well.

The franchise contract è becoming increasingly popular in Turkey and is included in the category of so-called business contracts, joining the agency and distribution contracts.

As is well known - and in a nutshell - the franchise contract brings together a franchesee and a franchisor. The franchisor grants the franchesee the right to use and disseminate for commercial purposes its trademark and label, as well as the right to produce its products and market them. As a quid pro quo, the franchisee agrees to pay an amount calculated on the volume of business and to submit to a list of obligations of the franchisor whereby it will comply with the franchisor’s product manufacturing standards, the rates charged by the franchisor, the obligation to produce and/or market the products that the franchisor chooses to put on the market and the standards related to the setting up of the business premises.

A specific definition of the franchise contract è was by the Turkish Supreme Court of Appeals in Decision 2001/819, which ruled that: “Franchising is a long-term and continuous business relationship arising from the privilege given by the party holding the privilege right of a product or service to the second party to carry out the commercial business subject to the franchise right, by providing information and support regarding the management and organization of the business within a certain period of conditions and limitations. It is a contractual relationship between two parties independent of each other”.

The francising contract being, also for Turkey, an atypical contract, expressly governed by the Commercial Code (No.6102) or the Code of Obligations (No.6098), but the general provisions on contracts and obligations contained therein apply to the same, where possible.

The parties to the contract have wide latitude to draft clauses according to their convenience and organize their relations according to their need. Rules generally common to franchise contracts concern:

• the remuneration due to the franchisor who agrees that his brand name will be disseminated by a third party;
• the list of obligations including that the trademark be disseminated according to the franchisor's will and rules;

It is part of the franchisor's possibility of initiative: the placing on the market of new products to which the franchisee cannot refuse and the advertising of the brand. Sometimes for the’purchase of raw materials is added for the franchisee the’obligation to procure from the franchisor.

Franchise agreement and IP protection

Franchise contracts often provide for the licensing, use and transmission of various elements of the franchisor's intellectual property, such as the trademark, design, corporate know-how, etc….

In this sense, the Turkish Law on the Protection of Intellectual Property guarantees – even for foreign companies - the registration and protection of trademarks in the country, preventing unauthorized use by third parties and providing a whole range of legal protections in case of possible infringement and/or unauthorized use, as well as the protection and protection of other industrial property rights, such as, but not limited to, patents.

Franchise Agreement and Competition

Because franchise agreements mainly concern the marketing and distribution of products and/or services, they fall within the scope of Turkish competition law: such agreements are therefore subject to Competition Protection Law No. 4045. As such, franchise agreements or provisions therein that violate the Competition Law are considered invalid and the Competition Authority may impose fines.