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.