How to protect famous names in Turkey
Işık Özdoğan, Spring 2005 Issue/ Marques Newsletter

In Turkey like in other countries any sign or any combination of signs can be registered as a trademark. Such signs according to the Turkish Trademark Law could be, in particular, words, personal names, letters, numerals, figurative elements, shapes of goods, and their packaging.

The number of attempts to register the name of renowned international celebrities continues to increase considerably in Turkey. The bad faith Turkish applicants follow the news and magazines published all around the world very closely and they file trademark applications for the name of anyone who becomes popular in the world. This could be the name of a designer, actress/actor, pop singer, model, painter or photographer. The most important criterion to be chosen as a trademark is to be publicly renowned. The reason for being renowned is not important. For instance, after the Iraq war 2003, many trademark applications for the name Colin Powell, who was the Secretary of State of the USA at that time were filed and published in the Official Bulletin.

Which classes are favored by those applicants? As you would expect, the classes 25(clothing) and 35(retail services) are the most preferred classes. These classes are followed by classes 18(leather products), 3(cosmetics), 9(sunglasses), and 14(jewelry, watches).

The Turkish Patent Institute does not refuse that kind of application in the first place simply because it is the name of someone other than the person filing the application. Such applications are permissible under Turkish Law and are not automatically refused. In other words, the Turkish Patent Institute examines the application and publishes it even if it is the name of an individual other than the applicant. If an opposition is not lodged against the application, the Institute does not have any choice but to register the application.

On the other hand, that kind of application can be refused on the basis of relative grounds. The Turkish Trademark Law, Article 8 provides that “Upon opposition by the holder of the relevant right, the trademark applied for shall not be registered if it contains the name, photograph, copyright, or any industrial property rights of the third parties”. Upon receiving an opposition with the support of documents showing the right of an opponent, the Institute refuses the application.

The most loved/chosen name among the bad faith Turkish applicants is David Beckham. Until now, all David Beckham applications were refused upon filing the opposition. (David Beckham, not surprisingly, is one of the celebrities that suffers from that kind of applications. His name is the most loved/chosen name among the bad faith Turkish applicants. But he successfully suppresses those attempts.)

However, if the application consists of only the last name of celebrity, a position(opinion) of the Institute is not established yet. Until now, the Institute, in its first examination, refused the oppositions filed against applications consisting of the last name of celebrity stating that Mr.or Ms.X has no personal rights on the last name. Although there are not any precedents about that issue, many legal authorities are of the opinion that registering the last name should not cause any confusion and should not damage personal rights of third person. These decisions of the Institute have been brought to the Re-examination and Evaluation Board to be revised, but the final decision has not been issued yet.

Another issue on registering a name of celebrities is Pseudonym(stage name). Upon receiving an opposition, the Turkish Patent Institute refuses that kind of application only if sufficient evidences proving a use of a stage name by an opponent are submitted.

In any above stated cases, it is highly recommended the real(rightful) owner to file a new trademark application for the opposed (subject) trademark while an opposition is deposited.

However, if an application is registered, registration does not mean that the trademark cannot be declared void afterwards. Any interested third party can file a lawsuit for a cancellation of a trademark based on the above stated article.

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