January 11, 2005

By Okan Can, Attorney At Law

The Trademarks Chamber of Turkish Patent Institute declared the criteria for the applications of well-known trademarks.

The Trademarks Chamber of Turkish Patent Institute declared the criteria for the applications of well-known trademarks.

Upon the amendment of the Decree Law No. 554 concerning the Foundation and Duties of the Turkish Patent Institute by the Act No. 5000 on November 11, 2004, the Turkish Patent Institute has become authorized to outline and enforce the principles for the assessment of the notoriety of trademarks. The Turkish Patent Institute has recently declared the following criteria for the applications of well-known trademarks.

• The period regarding the use of the registered trademark and the period of use (detailed information regarding the history of the trademark),
• The geographical area where the trademark is used and protected through registrations. (the national and worldwide registrations).
• The annual sales figures, market share of the trademark and the wideness of the use of the goods and/services covered by the trademark registrations.
• The promotional activities effected in respect of the trademark (especially the promotional activity in Turkey), the period, consistency, geographical area, scope, the figures for the advertisement expenditure, means of promotions such as television, local newspapers, child-oriented promotion, etc.
• Promotional activities which cannot be categorized as advertisement but which are beneficial for the awareness of the trademarks (news or publications in periodicals, newspaper, television, the exhibition of the trademark in fairs etc.)
• Court decisions confirming the notoriety of the trademarks or the documents attesting the activities of the trademark owner in achieving the trademark protection. (Apart from the decision(s) confirming the notoriety of the trademark, favorable administrative decisions or court decisions obtained on the basis of trademark infringement or unfair competition involving the well-known trademark)
• The distinctive character of the trademark (originality) is to be taken into consideration as criteria
• Market Surveys conducted for brand awareness and/or the notoriety of the trademark,
• Information in relation to the right holder (size of the company, number of employees, turnover, distribution channels, dealers and branches, exportation amounts, market shares, etc.)
• The relation between the trademark and the goods. (Does the trademark refer to a certain product at sight? Does the trademark refer to special quality in respect of the goods in question?)
• The existence of awards and certificates obtained by the right holder of the trademark,
• Information in relation to the distribution channels of the goods bearing the trademark, the importation and exportation means of the goods bearing the trademark,
• The financial value of the trademark. Information as to whether or not such value is indicated on the company's balance sheet.
• The scope of protection of the trademark in terms of goods and services.
• The information concerning the period of the time that trademark has acquired the status of notoriety.
• Information in relation to the number of infringement and abusive applications filed by third parties for taking unfair advantage of the notoriety of the trademarks.
• The possibility of being infringed by the third parties taking into consideration the goods/services covered by the trademark.
• Registration and use of the trademark in question (detailed information in relation to the history of the trademark).