The most pertinent legislation relating to trademarks is the Industrial Property Code no. 6769 (IP Code), which came into force on 10 January 2017. Turkey is a signatory to most of the IP-related international treaties, including:

• the Paris Convention for Protection of Industrial Property;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
• the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks.

Higher court decisions have an influence over the lower courts to ensure uniformity in judicial practice. However, only decisions of a higher chamber of the Court of Appeal (which is responsible for resolving inconsistencies between different judgments of chambers in similar disputes) are binding on lower courts.

According to the IP Code, use can be a source of trademark rights for unregistered marks. If the party using the unregistered mark can prove that it is the creator of the mark and can demonstrate prior use in Turkey, it can seek refusal of the application for the identical or confusingly similar latter mark before the Turkish Patent and Trademark Office (TPTO). Meanwhile, if the latter mark is already registered, the related party can claim invalidation of the disputed registration and termination of the unauthorised use of the mark by filing a civil court action before the Turkish IP courts.

For a registered mark, if, within a period of five years following the registration, the trademark has not been put to use in Turkey without a justifiable reason, or if the use has been suspended during an uninterrupted period of five years, the trademark may be subject to non-use cancellation claims. Plus, the IP Code allows the defendant/applicant (in an infringement and/or invalidation action before the courts or in an opposition action before TPTO) to invite the plaintiff/opponent to prove the use of their marks on which the related actions are based, if the 5 years’ use term has passed for them on the date of the filing the infringement action or on the filing/priority date of the conflicting application/registration. If case evidence adequately proving the use of the claimant’s trademarks in Turkey cannot be submitted to the file, its claims based on its prior rights arising from the relevant registrations have to be refused without being examined.

Turkey’s trademark practice does not distinguish famous and well-known marks or trademarks with a reputation.

There is no regulation in Turkey providing specific protection for trademarks belonging to the “luxury industry”. Yet still, in practice, being a luxury brand could be approached in favor of the brand owner both by the TPTO and IP Courts.

Turkey grants a broader protection to “well-known” brands registered in Turkey through Article 6(5) of the IP Code which regards dilution. Well-known registered marks are protected for dissimilar goods or services, if there is a possibility that the later mark would take unfair advantage of or be detrimental to the distinctive character or reputation of the well-known mark.

High distinctiveness is another factor widening the protection scope of well-known marks.

The brand owner seeking a broader protection for its registered mark on the basis of Article 6(5) must support the well-known status of its mark through comprehensive evidence (e.g. registration/renewal certificates, invoices showing sales of products/services bearing the related mark, advertising materials, affidavits indicating the history of the brand and geographical area in which the related brand has been used/registered, promotional materials, awards, favorable survey results, customer comments, visibility/follower numbers of their social media accounts and so on).

Oral testimonies are not generally accepted as solid evidence in trademark disputes in Turkey.

Submission of an affidavit helps, and it is advised to submit it as Apostilled.

If needed the Judge in court actions and the Prosecutor in criminal complaints may appoint an official expert(s) for examination as to whether the brand subject to the related conflict could be deemed as “well-known” and could benefit from a broader protection.

A trade mark can be enforced against a domain name.

A trade mark can be enforced against a trade name, as long as:

• the claimant has an earlier trademark registration for the word(s) of which removal from the conflicting trade name is requested;
• the field of activity of the trade name owner is identical and/or similar with the goods/services within the scope of the claimant’s trademark registration(s); and
• the conflicting company name has been used in a sense of trademark rather than a company name in a way to create a likelihood of confusion with the claimant’s trademark registration and to cause trademark infringement and unfair competition against the claimant.

A trademark can be enforced against an identical or confusingly similar design as well, if the design consists of the same wordmark in it or identical/similar device to the mark.

A trademark can be enforced against its use as a metatag.

A trade mark can be enforced against its unauthorized use in social media as long as:

• the claimant has an earlier trademark registration or use in Turkey; and
• the scope of conflicting use on the social media is identical and/or similar with the goods/services within the scope of the claimant’s trademark registration(s)/earlier use or even if the goods/services are not identical/similar when dilution could be claimed.

Use of a third party’s trademark in a comparative advertising is currently forbidden in Turkey and the trademark owner can enforce their trademark rights against this kind of usages.

A parody defense against trademark infringement and invalidation claims is not regulated in Turkey and a trademark can be enforced against its unauthorized use in parody if such use causes any unfair advantage to the user in parody due to its association with the trademark under the IP Code and/or unfair competition regulation in Turkish Commercial Code (Commercial Code).

A trademark owner can claim trademark infringement and unfair competition in the same civil or criminal action simultaneously.

Because of the size of its domestic manufacturing industry and its position as an international gateway, Turkey is one of the most crucial and critical territories in the fight against counterfeiting particularly considering that luxury brands are undoubtedly the main target of counterfeiters.

In theory, the most efficient way to tackle counterfeiting is to file a criminal complaint against the counterfeiter and prompt the public prosecutor to start criminal proceedings with a raid for seizure of the counterfeit goods. This should then be followed up by a criminal court action for the punishment of wrongdoers and the destruction of the counterfeit goods. The criminal complaint is submitted to the Public Prosecution Office, but the prosecutor needs approval from the local criminal court of peace to organize a raid on the suspected address. While there are specialized criminal IP courts of first instance applying the IP Code to hear criminal trademark infringement cases, it is unfortunate that criminal courts of peace hear requests for raid orders since, besides not being specialized, they apply the Criminal Procedures Law (the Commercial Law) to all types of crime and that has made getting raid orders very difficult especially in the recent years upon the change in the Criminal Law  tightening requirements for issuance of a raid order.

According to the government’s 11th National Development Plan, which is due to be fulfilled by the end of 2023, specialised IP chambers will be established under the criminal courts and judges competent in IP law will be appointed to them. Considering that the most challenging part of the battle against counterfeiting is the lack of competence and the strict approach of criminal courts of peace, having specialised IP chambers to handle criminal complaints against counterfeiters is expected to suitably assist brand owners.

Luxury brand owners are not totally safe regarding their preliminary injunction (PI) order requests in civil court actions either, unless some solid evidence is gathered properly before moving on with the PI claim. Plus, IP Courts may sometimes require payment of high guarantee amounts for issuance of a raid order and brand owners may tend not to consider civil proceedings due to this cost, although they would get the related guarantee in case of acceptance of their main claims and finalization of such acceptance.

Finally, luxury brands may be subject to third party applications in different classes which do not fall into their core business. To be able to defend the luxury brand owners’ rights against such applications, some brand owners evaluate to keep the scope of their trademark filings broader than their core business. Use of a mark is not required to register it in Turkey and its use cannot be questioned by either authorities or third parties during the first 5 years following its registration. Use of the mark can be questioned upon third parties’ requests only upon expiration of 5-year use term. Depending on in which action it was questioned, the related marks may be cancelled due to non-use, or the brand owners may reconsider enforcing their rights arising from such marks for the goods/services on which they cannot prove the use of the brands.

The Law of Literary and Artistic Works No. 5846 (the Law) regulates protection of copyrights.

Turkey has a civil law system based on codified laws. Yet case law is also taken into consideration for the interpretation of laws. Higher court decisions have an influence over the lower courts to ensure uniformity in judicial practice. However, only decisions of a higher chamber of the Court of Appeal (which is responsible for resolving inconsistencies between different judgments of chambers in similar disputes) are binding on lower courts.

Copyright protection subsists in an intellectual or artistic creation bearing the specialty of its author and being original namely if it is the result of independent, creative effort by the author and being capable of classified as one of the below four (main) categories:

• scientific and literary works;
• musical works;
• artistic works; or
• cinematographic works.

In addition to the above four main categories, the Law recognizes some other sub-categories (e.g. computer software is listed as a sub-category in the Law under "scientific and literary works").  The main four categories listed above are numerus clausus, yet, sub-categories are not limited to the ones listed in the Law.

The Law does not exclude any works from copyright protection namely the categories stated above are only indicative. “Crafts and small works of art, miniatures and decorative items, as well as textiles, fashion designs” are also listed under “artistic works” in the above categories in Article 4.  Thus, objects of industrial, fashion and accessory design can be copyrightable as long as they meet the requirements listed above.

A copyright holder has the following moral and economical rights:

• adapting the work;
• duplicating/reproducing the work;
• distributing the work;
• performing the work to the public;
• broadcasting or communicating the work to the public by any means of transmission of signs, sounds or images;
• disclosing the work to the public;
• modifying the work;
• integrating  the work; and
• having the work attributing to them.

The copyright over works created by an employee, a consultant, a shareholder, a director or a supplier as a part of the duty is regulated under the Article 18(2) of the Law which reads as follows: “Provided that the contrary is not determined by a private contract between the parties or is understood from the nature of the situation, the rights on the works created by officers, servants and employees while they are performing their jobs shall be used by their employers or by the ones who have assigned them to work. The same rule applies in respect of the executive bodies of legal persons”.

Thus, all the economic rights over a completed work are assigned to the employer, the consultant, the shareholder, the director, or the supplier once it is created, but the related party remains its author and holds the moral rights in their possession.

However, this provision is not applicable for the works created independently from the job/duty.

The assignment of economic rights on a work - unrestricted or restricted as regards duration, place or scope, with or without consideration - is entirely within the author’s discretion. 

An assignment of economic rights is valid only if it is in writing and contains the scope of the transferred or waived rights in detail by listing them one by one. Use of general wordings (e.g. all economic rights) in the assignment agreements causes them to be deemed void.

Moral rights are non-transmissible and non-withdrawable by the Law.

Copyright protection starts once the work becomes public, with no requirement for notification or registration. If the author is a real person, the protection lasts during the lifetime of the author, plus 70 years as of their death; this 70 years starts from the first day of the year following the author’s death.

In joint authorship, the protection term becomes the life of the last surviving author plus 70 years.

If the author is a legal entity, the protection term lasts 70 years as of the relevant work becomes public.

For orphan works, the publisher would use the rights coming from copyright; if the publisher cannot be identified then the one who makes the reproduction can use the rights. Protection term for orphan works is 70 years from when the work becomes public, unless the author reveals their name before the term expires.

All these 70 years’ protection terms in the Law are calculated from the first day of the year following the release of the work to public.

Under the Law, copyright registration is not mandatory for the purpose of enforcement. Likewise, copyright notice is not required either.

The main way to assess copyright infringement is for the claimant to prove actual copying or unauthorised use of the work. Plagiarism is accepted when there is a substantial similarity between the underlying original themes used in two works.

Copyright can be enforced against a trademark, registered design/design patent, patent or  pseudonym. It cannot be enforced against a domain name or a trade name.

Copyright can be enforced against its unauthorized use in social media if the general conditions for enforcement are met. There is no specific provision required for protection against use in social media.

Use of a third party’s copyright in a comparative advertising is currently forbidden in Turkey and the copyright owner can enforce it against this kind of usages.

A parody defense against copyright infringement and/or unfair competition claims is not regulated in Turkey and there has been no precedents supporting that a copyright can be used in parody as to our best knowledge.

There are provisions in the Law exempting certain activities from copyright infringement; the main categories are listed below.

Public order: The rights granted to authors shall not prevent a work from being used as evidence in court or before other authorities or from being the subject matter of police or criminal proceedings.  Photographs may be reproduced and distributed in any form by official authorities without the author’s consent (Article 30).

Public interest:

• The reproduction, distribution, adaptation, exploitation in any other form of officially published laws, by-laws, regulations, notifications, circulars and court decisions that have been officially published or announced is permitted (Article 31).   
• The reproduction, public recitation, or broadcasting by radio and distribution by any other means of official speeches is permitted (Article 32).
• Published works may be freely performed in all educational institutions (Article 33).
• It is free to create selected or collected works, which are dedicated to educational purposes (Article 34).
• Quotations of a work are permitted under certain conditions listed under Article 35.
• Daily news and information communicated to the public by the press or radio may be freely quoted (Article 36).
• Recordal of parts of an intellectual or artistic work on devices enabling the transmission of signs, sounds and/or images in relation to current events is permitted provided that this has the nature of news and does not exceed the limits of giving information (Article 37).

Private (personal) use: Reproducing all intellectual and artistic works for personal use without pursuing profit is permitted (Article 38).

And naturally, after expiration of the protection term of a copyright, it enters the public domain and can be used without permission.

The time limit for legal infringement actions is two years as of learning of the infringing act and the infringer. The maximum time limit is 10 years from the date when the cause of action arose.  In case the infringing act is also subject to criminal responsibility and if the statutory time limit for criminal responsibility is longer, then the longer period shall apply.  It needs to be noted that as long as the infringement is ongoing, the time limit does not start.

As briefly touched above, luxury brands may suffer from identical/similar trademark filings in different sectors and registration of the luxury brand in all classes may of course not be an option in most of the cases. Here, copyright protection may help. In a recent case, the TPTO put copyright protection over well-known trademark protection. An opposition against an application in different classes was based on the well-known status of a registered logo mark and the opponent’s copyrights on the logo, but the TPTO accepted it owing to the copyright protection only. Thus, copyright protection can be more advantageous than trademark protection owing to not being limited to any classes and luxury brand owners are advised to also seek copyright protection especially for their marks and designs that can be deemed as a “work” as well.

The most pertinent legislation is the Design chapter of IP Code. 

Turkey has a civil law system based on codified laws. Yet case law is also taken into consideration for the interpretation of laws. Higher court decisions have an influence over the lower courts to ensure uniformity in judicial practice. However, only decisions of a higher chamber of the Court of Appeal (which is responsible for resolving inconsistencies between different judgments of chambers in similar disputes) are binding on lower courts.

In accordance with Article 55 of the IP Code, a product means any industrial or handicraft item, including parts intended to be assembled into a complex product, products like packaging, presentations of more than one object perceived together, graphic symbols and typographic typefaces, but excluding computer programs.

A design can be the appearance of the whole or a part of a product resulting from the features of the line, contour, colour, shape, material or texture of the product itself or its ornamentation.

Complex product shall be a product which is composed of components that can be replaced or renewed by disassembly and reassembly of the product.

The legal conditions for obtaining a registered design right are “Novelty” and “Individual character” according to Article 56 of IP Code. The same conditions are also required for protection of an unregistered designs. Plus, an unregistered design is also required to have been presented to the public for the first time in Turkey.

According to the IP Code, unless otherwise agreed upon due to special contracts made between parties or because of the nature of work, right owners of designs that are made by employees’ due to their obligations in a business organization or right owner of designs that are performed by employees based on experiences and operations of business organization shall be the employer.

The right owner of designs that are carried out by employees outside the above scope by means of benefitting from information and tools related to general activity in their business organization shall be the employer, upon request.

If there is a service relationship contract between a legal entity and its consultant or shareholder or director or supplier, then the designs made by them in the frame of this contract would be evaluated under the same conditions with the designs created by its employee.

If the designs made by a legal entity’s consultant or shareholder or director or supplier, in the frame of an employment contract not covered by the scope of a service relationship, the right owner shall be determined in the frame of provisions of the contract concluded between the parties.

A design assignment agreement must be in writing and signed by both parties before a Turkish notary or before a foreign notary, as well as apostilled. Where there is a single design, it is possible to transfer the design application entirely, but the partial transfer is not an option, even if more than one person becomes the right owner of that according to Article 70/4 of IP Code. For multiple design applications, both entire and partial assignments are possible.

Designs that can be deemed as “works” within the scope of the Law provide their owners with financial and moral rights within the scope of copyright protection in addition to the design rights recognized by the IP Code. In such a case the designer cannot transfer or waive their moral rights.

For registered designs, the protection term starts with the application or priority date and can be extended up to 25 years by renewal every 5 years as of its registration date. For unregistered rights the protection term starts as of its presentation to public and ends three years later.

The unregistered designs are protected only if they are copied identically or in an indistinguishably similar way in terms of overall expression. It provides protection for 3 years as of the day the design is presented to the public.

In the Turkish Practice, the overall impressions of the designs in the eye of an “informed user” are considered during infringement assessments. The “informed user” is accepted as the person who is placed between the “average consumer” making a comparison between trademarks without any special knowledge and an expert having technical information as to the relevant sector. In comparison of designs the attention needs to be given to common points of the designs rather than their differences while evaluating similarity. If the informed user evaluates the overall impression of the claimant’s design as being identical or indistinguishably similar with each other, then the infringement claims are accepted. There is no difference between registered and unregistered designs in respect of similarity examination.

A design can be enforced against a trademark, a registered design/design patent and patent but not against a domain name or trade name.

A design can be enforced against its unauthorized use in social media if the general conditions for enforcement are met. There is no specific provision required for protection against use in social media.

Use of a third party’s design in a comparative advertising is currently forbidden in Turkey and the design owner can enforce it against this kind of usages.

A parody defense against design infringement and/or unfair competition claims is not regulated in Turkey and there has been no precedents supporting that a design can be used in parody as to our best knowledge.

“Repair clause” doctrine and both “must match” and “must fit” approaches are applicable in the IP Code.

Below is the list of main defences:

• Use of the design privately and for non-commercial purposes.
• Use of the design for experimental purposes.
• Use of the design due to the technical function.
• Reproduction for the purposes of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention shall be made of the source.
• Reproduction of the design in its exact form and dimensions to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in (must fit defence).
• Training or reference purpose reproductions provided that they comply with good faiths and they don’t endanger unnecessarily the normal use of design and they show the sources.
• The equipment on ships and aircraft registered in another country when these temporarily enter the territory of Turkey concerned, and the importation of spare parts and accessories for the purpose of repairing such craft, and the execution of repairs on such craft.
• The use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance within three years after design is released to the market for the first time (must match defence).

According to article 72 of the Code of Obligations, civil actions against wrongful acts must be filed within two years from the day that the doer and the wrongful act is learnt of. In any case, such civil action must be filed within 10 years as of the date the wrongful act occurred. However, if infringement is ongoing, the time limitation would not start.

If a design can be deemed as a “work”, the design holder can take action claiming both design infringement and copyright infringement and/or unfair competition for the same set of facts and can filed “one” collective court action with all these claims.

Registration of product designs in a single year period globally may not be an option in most of cases, especially for luxury brands coming up with new designs each season like fashion, home furnishing, accessories industries and so on. Unregistered design protection brought a very practical solution, especially to luxury sectors that need to quickly and frequently orientate themselves in line with the latest trends. Luxury brands in fashion and home furnishing can benefit from unregistered design protection on their designs if they present the design first in Turkey. Although the unregistered design protection is limited to three years as of the first presence of the design, in the example sectors above it will still be beneficial for the right owners.

The other issue is attempts to register luxury brands as a design and the fact that these attempts may sometimes be brought by the luxury brands’ own distributors in Turkey. To prevent these types of registration, monitoring design bulletins is essential.

Last, but not least, the IP Code does not implement any criminal sanctions to design infringement, and this makes it difficult for the luxury brand owners to challenge infringing acts without the deterrent impact of criminal sanctions on infringers.

Name, image, likeness or other unequivocal rights have been regulated under one Law in Turkey and are under protection through various regulations, as follows:

• The IP Code (regulating registrability of personal rights as a trademark and protection of name, image etc. against their or their similar versions’ use and/or registration as a trademark).
• The Law of Literary and Artistic Works No. 5846 (the Law) (regulating copyright protection over name, nickname, former name, pseudonym, voice, image, portrait, photograph and so on).
• The Commercial Code (forbidding unauthorized commercial use of name, nickname, former name, pseudonym, voice, image, portrait, photograph and so on).
• The Civil Law No. 4721 (protecting personal rights against any infringing attacks).
• The Law on the Protection of Personal Data No. 6698 (protecting fundamental rights and freedoms of people, particularly the right to privacy, with respect to processing of personal data and to set forth obligations, principles and procedures which shall be binding upon natural or legal persons who process personal data).

Being a living human is enough to own a right of publicity. This applies to all individuals, however, would, from a general perspective, be more relevant with respect to celebrities or well-known individuals who may enjoy a higher degree of protection in this respect

The heirs of a deceased individual have some form of independent rights over that individual’s commercially exploitable publicity rights, for example, name, image, likeness or other unequivocal aspects of their identity.

The assignment of the right of publicity in whole is not possible under Turkish law as it contains personality rights which are inseparable from the individual. However, the commercially exploitable elements of publicity rights can be assigned.

An individual can license the commercially exploitable elements of their right of publicity and the licence can be either exclusive or non-exclusive.

An assignment/license agreement should be in writing and contain the scope of the transferred or waived rights in detail by listing them one by one. Specific requirements for this kind of agreements may change depending on which regulation the publicity rights are based.

Turkish law does not specifically regulate the conditions or restrictions of termination of a license agreement. Further, the Turkish Code on Obligations No. 6098 includes provisions on withdrawal from a contract but does not particularize on the termination of a contract. However, in contracts where termed obligations exist, there is consensus in case law and legal theory that ex-nunc termination, a right of the parties to end a long-term contract, is possible.

Otherwise, and in principle, the parties to a license agreement can regulate certain events or causes of termination of the license agreement and notice periods under the agreement. A termination that is not in compliance with such termination grounds or notice periods will require the payment of compensation to the counterparty in accordance with general terms. As a general provision of the Law of Contracts, any termination should be made by granting a sufficient notice period to the counterparty. The exact length of such period for license agreements is not determined and should be considered on a case-by-case basis.

The legal consequences of the death of a licensor will depend on the wording of the license agreement. However, as a general rule, the heirs of the licensor will succeed in the deceased’s legal position in terms of rights and obligations. Accordingly, a license agreement will remain in force and bind the successors, unless provided otherwise in the license agreement.

The assignment remains valid following the death of the assigner unless the otherwise was agreed on in the assignment agreement.

In the event the heirs have an independent right over the deceased individual’s name, image, likeness, or other unequivocal aspects of identity they would have to respect the assignment or license agreement in this respect.

Turkish Law does not provide a fixed period as to when the rights of publicity expire. However, the rights of publicity will expire at some point depending on which regulation it was based. As a rule, the rights of publicity arising from the Copyright Code expire after 70 years after the death of the individual in question, but this period may be longer in the other regulations protecting publicity rights.

The enforcement of right of publicity is not limited to commercial use and it can be enforced against any infringing use.

It is not a requirement to prove that an individual’s name, image, likeness, or other unequivocal aspects of one’s identity have a commercial value to obtain an injunction or other remedies for the unauthorized use; however, it would certainly be an important element and would influence the level of damages awarded.

It could be argued that public interest, freedom of the press, and the freedom of speech may allow for inter alia a person’s picture or name to be used for other purposes than strict commercial purposes.

According to the Law No. 6112 on the Establishment of Radio and Television Enterprises and Their Media Services (RTUK Law), product placement is permitted in movies made for cinema and television, television series, sports, and general entertainment programs; it is not permitted in news, child programs and religious programs.

Product placement is forbidden for the products and services of which advertising is prohibited such as in the following fields:

• healthcare: pharmaceuticals and medical treatments subject to prescriptions;
• tobacco and alcoholic beverages: tobaccos, cigars, any kind of alcoholic beverage;
• adult content: pornography and resources containing explicit content, prostitution and sex services, massages, stripping and strip clubs, adult erotic and sexual products, and matchmaking services;
• gambling: illegal gambling, casinos, online casinos and all products or services organised similarly to gambling; and
• alternative entertainment: services of psychics, astrologers and seers.

The brand owner can stop the communication and claim damages in the event the other party fails to perform the agreement.

Product placement has always been important for luxury brands, but with Covid-19, its importance has markedly increased with the rise of media and social media platforms used by consumers. In all corners of the Internet or other media channels, conversations about brands are taking place and sometimes those brands may not even become aware of these conversations. As a result of this, luxury brands’ one main concern doubtlessly has become “unauthorized product placements” over which they do not have any control. Their valued products are sometimes associated with a miserable or immoral character in shows without their authorizations. Brand owners can enforce their intellectual and industrial property rights against these kinds of usage.

The below laws regarding right of publicity and/or privacy extend to legal entities/corporations:

• The IP Code.
• The Law.
• The Commercial Code.

But the regulations in the Turkish Personal Data Protection Law (n. 6698) are for only natural persons and do not extend to legal entities/corporations.

There is no specific additional condition for corporation to benefit from the rights of publicity/ privacy.

It is possible to include specific clauses in agreements aimed at protecting the corporate image/reputation of one of the parties, such as:

• prohibition to sell the products to re-sellers whose image is below a certain defined standard;
• prohibition to sell below a certain price or to do so outside of specific time periods; and
• prohibition to buy non original – but otherwise legitimate – spare parts and components.