Scope of the protection provided to Trademarks That Are Well-Known in Terms of International Law is larger compared to other trademarks. Well-known trademarks have become a first time subject to Paris Convention. According to Paris Convention “The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.”
Paris Convention does not define the concept of “well-known” trademark. It is acceptable that, even if not world renowned, trademarks which are known by anyone abroad or domiciled and are under the proprietary of a citizen, or commercial or industrial entity, which are residing at a country being a member of Paris Convention, will be considered as a well-known trademark under such Convention.
Draft text for “Protection of Well-Known Trademarks” prepared by the “Well-Known Trademark Expert Committee” under the World Intellectual Property Organization (WIPO) says it will be enough to be considered as a well-known trademark, if a trademark is known in its protected area and the environment related to such area as a well-known trademark.
In terms of Turkish Law, well-known trademark is not defined in Statutory Law No. 556 (KHK No. 556). According to Article 7/I of such Statutory Law, well-known trademarks that are not permitted by its owner will not be registered as a trademark according to 1st repeated Article 6. Definition of well-known trademark is made in the doctrine on the basis of Paris Convention. According to that, trademarks that are known by everyone in Turkey are required to be accepted as a well-known trademark in order to mention a well-known trademark in accordance with the definition in Paris Convention. A trademark that is known abroad but unknown in Turkey cannot be considered as a well-known trademark pursuant to Article of 7/I. In contrast, only a trademark known in Turkey is a well-known trademark under said provision. Besides, if a trademark known in Turkey is protected in a country member to Paris Convention, products bearing such trademark or, even if not supplied in Turkey, said trademark will benefit from the protection provided under Article 7/I.
Pursuant to Article 7/I of Statutory Law, a well-known trademark is not required to be registered in Turkey for rejecting a registration request without obtaining permission from owner of such well-known trademark. Well-known trademark, even if not registered in Turkey, cannot be registered for goods and services similar or identical to such trademark. Such ground for final rejection set out in the Statutory Law for well-known trademarks will be also valid for utilizing the same well-known trademark in different goods and services? According to Paris Convention, it is acknowledged that the registration of a well-known trademark for different goods and services under the scope of Article 7/1 cannot be prevented, since a trademark which everybody know to be owned by one particular person is prohibited from registration on behalf of others for same or different products. Rejecting a request for registering a well-known trademark for different goods and services is counted among relative grounds of rejection. Well-known trademark will not be used for different goods and service, if such possibilities as unjust benefiting due to level of public reputation achieved by the trademark, causing harm to the trademark’s reputation because of such registration or causing certain results which may be harmful against the trademark’s distinctive character, are to arise. If an unknown trademark is only known in the relevant environment, it may be deemed that the level of reputation sought by the law is met. Besides, a trademark known under Paris Convention is not required to register in Turkey in order to be protected in terms of relative grounds of rejection.
A registration request for a well-known trademark is not sufficient to prevent a well-known trademark from being registered for different goods and services. Such possibilities as unjust benefiting due to level of public reputation achieved by the trademark, causing harm to the trademark’s reputation because of such registration or causing certain results which may be harmful against the trademark’s distinctive character, must occur in order to reject a well-known trademark registration request for different goods and services. In such a case, Turkish Patent Institute should ex officio consider a well-known trademark registration request for different goods and services as a ground for final rejection, taking into account the case’s character to the extent required conditions are met.
