Turkey: What role does distinctiveness play in bad faith assessment?

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: What role does distinctiveness play in bad faith assessment?

Sponsored by

gunpartners-400px.png
One red winner lottery wood block row

The 11th Civil Chamber of the Turkish Court of Appeals (CoA) has set forth in its decision dated November 18 2019 (2019/359 E. and 2019/7279 K.) that the later dated trademark application was filed in bad faith by taking into account the high level of recognition as well as the original and distinctive nature of the prior dated trademark, which has no meaning.

CoA has emphasised in its decision dated November 18 2019 (2019/359 E. and 2019/7279 K.) that the highly distinctive character of the well-known trademarks should also be taken into account when assessing the applications claimed to be filed in bad faith.

In the case between the parties, the plaintiff's attorney has requested the annulment of the decision numbered 2015-M-12344 issued by the Turkish Patent and Trademark Office and the Re-examination and Evaluation Board (REEB). The attorney has requested the invalidity of the trademark application in case of registration by claiming that the "ANL Choco Lexus" trademark application numbered 2014/6684 was filed in order to acquire unfair benefit from the well-known status of the "Lexus" trademark of the plaintiff company which is world-renowned and produces luxury vehicles. As a result, the trademark application was filed in bad faith. The allegations as to the existence of bad faith have been submitted and the plaintiff's attorney argues that the word "Lexus" is a phrase with a high level of distinctiveness which has no meaning in any language.

The defendant parties have claimed that there cannot be a likelihood of confusion between the trademarks since the goods and services under the trademarks are different, the well-known status of the trademark cannot be proven and "Lexus" trademarked cars are not sold in Turkey.

In the decision of the first instance court, the aforementioned REEB decision was annulled and the "ANL Choco Lexus" trademark numbered 2014/6684 was declared invalid. The court stated the following reasons:

  • There is a similarity between the trademarks which leads to likelihood of confusion.

  • The distinctiveness level of "Lexus" is high and a high level of recognition is gained from the use of the trademark. The public opinion created by the level of recognition and quality can be transferred to the defendant's trademark and provide unfair advantage

  • It is likely that the distinction, the advertising power and the value of the luxury car trademark will decrease, and its reputation and distinctive character will be damaged with the use of the trademark in low-cost and ordinary products.

  • The defendant company has already learned that the "Lexus" trademark is well-known, the latest being in 2011, since there were other disputes between the parties based on the "Lexus" trademark decided in the plaintiff's favour.

  • It cannot be said that the application is in good faith.

Upon appeal of the decision by the defendants, the district court rejected the appeal by noting that even though the goods and services within the scope of the trademarks are different, the plaintiff's trademark enjoys a high reputation within the automotive industry. The "Lexus" phrase which has no meaning, has high originality and distinctive character and, when these facts are taken into consideration together with the level of the reputation of the ground trademark, it cannot be considered as a coincidence that the defendant company chose this sign to register. The application was therefore filed in bad faith.

In line with the decisions of the first instance court and the district court, the CoA has stated in its decision dated November 18 2011 (2019/359 E. and 2019/7279 K.) that the trademark application was filed in bad faith. It upheld the decision rendered by the district court, taking into account the fact that the "Lexus" phrase, which has no meaning, is original and highly distinctive and also considering the high level of recognition it receives.

The decision in question sheds light on the implementation of the provision "Trademark applications that are filed with bad faith are rejected upon opposition" in Article 6/9 of the IP Code (IPC). The CoA once again underlined that the distinctiveness of a well-known trademark should be taken into account during bad faith assessment. The decision also clearly shows that it is important for beneficiaries to choose highly distinctive phrases in trademark choices in order to benefit from more effective and broader protection in the future.

The authors would like to thank Utku Süngü for his contribution to the article.

Uğur Aktekin and Berrin Dinçer Özbey

more from across site and SHARED ros bottom lb

More from across our site

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article