Turkey: The effect of agreements on trademark ownership

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Turkey: The effect of agreements on trademark ownership

In its landmark decision of February 14 2018 the General Assembly of Civil Court of Appeals (GACoA) recognised the value of agreements signed between parties with respect to ownership claims on a trademark.

In this case (E. 2017/11/85 K.2018/209, publication date July 2018) the conflict relates to the "Sultans of the Dance" trademark, which was created by one of the parties but has been used and introduced by the other party as the name of a dance show for a number of years on the basis of an agreement signed by both parties. The agreement restricts the parties' right to use the trademark as well as the right to file trademark applications.

When the majority shareholder of one of the parties of the agreement filed a trademark application for "Sultans of the Dance," the Turkish Patent and Trademark Office (the office) rejected the trademark application following opposition from the other side, on the basis that both parties signed an agreement at their free will restricting themselves on the use of "Sultans of the Dance".

The GACoA approved the office decision and decided that the name "Sultans of the Dance" has been the common property of both parties and the trademark cannot be registered as a trademark by either party individually due to the provisions of the agreement signed between them. Thereby, the GACoA gave priority to the parties' will regarding ownership of the trademark. The GACoA also stated that the contrary of what was agreed between the parties could only be proven with evidence of the same kind, such as another agreement between the parties.

The decision of the GACoA is important as it underlines that the existence of an agreement which provides for joint ownership of a name and which restricts use of the relevant name by one of the parties, constitutes a justified ground and evidence to prevent registration of that trademark by one party. This decision demonstrates that agreements concerning joint ownership of a name are binding in case one of the parties subsequently wishes to register that name as a trademark. Such consequences should be considered before executing an agreement to that effect.

aktekin-ugur.jpg

Uğur Aktekin


Gün + PartnersKore Şehitleri Cad. 17Zincirlikuyu 34394İstanbul, TurkeyTel: + (90) (212) 354 00 00Fax: + (90) (212) 274 20 95gun@gun.av.trgun.av.tr

more from across site and SHARED ros bottom lb

More from across our site

Leaders at the newly merged firm Jones Maxwell Smith & Davis reveal their plan to take on bigger firms while attracting more clients and talent
Charles Achkar, who will bring a team of two with him, said he was excited about joining ‘one of the few strong IP boutiques’
Andy Lee, head of IP at Brandsmiths and winner of the Soft IP Practitioner of the Year award, tells us why 2024 was a seminal year and why clients value brave advice
The deal to acquire MIP's parent company is expected to complete by the end of May 2025
Jinwon Chun discusses the need for vigilance, his love for iced coffee, and preparing for INTA
Karl Barnfather’s new patent practice will focus on protecting and enforcing tech innovations in the electronics, AI, and software industries
Partner Ranjini Acharya explains how her Federal Circuit debut resulted in her convincing the court to rule that machine learning technology was not patent-eligible
Paul Hastings and Smart & Biggar also won multiple awards, while Baker McKenzie picked up a significant prize
Burford Capital study finds that in-house lawyers have become more likely to monetise patents, but that their IP portfolios are still underutilised
Robert Reading and Faidon Zisis at Clarivate unpick some of the data surrounding music-related trademarks
Gift this article