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Proof of bad faith: the Turkish Court of Cassation adopts a surprising stance

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Güldeniz Doğan Alkan and Cansu Evren of Gün + Partners say that a recent ruling raises the question of how many trademarks should be imitated for an act of bad faith to be recognised

In a recent case, the Turkish Civil IP Court decided for the invalidation of a trademark registration identical to the plaintiff’s mark and trade name. The decision noted that:

  • The plaintiff held a registration for the same class in the EU (but not in Turkey) before the trademark at issue; and

  • The plaintiff’s mark had a high distinctiveness and the defendant could not have created the mark on its own, coincidentally.

In light of these points, the local court concluded that the defendant registered the mark intentionally to take unfair advantage of the well-known status of the plaintiff’s mark and was therefore in bad faith. Indeed, the defendant holds other trademarks that are well known in Turkey or have the potential to be well known in Turkey, which is also proof of the defendant’s bad faith.

As a result, the local court decided that the defendant’s act of bad faith cannot be protected as per Article 2 of the Turkish Civil Code, under which, “Everyone must abide by the rules of honesty while exercising their rights and fulfilling their obligations. The legal order does not protect the abuse of a right.”

Following the defendant’s appeal against the local court’s decision and its refusal by the Regional Court of Appeal (RCoA), the defendant filed a second (final) appeal before the Court of Cassation (CoC). Upon this, the CoC reversed the RCoA’s decision rejecting the defendant’s appeal filed against the acceptance of the court action in May 2022. The CoC stated in its decision that:

  • The evidence filed supporting the well-known status claim was dated later than the registration date of the trademark at issue and the plaintiff could not prove that its mark was well known on the registration date of the trademark at issue; therefore, the well-known status claim is not justified;

  • As per the established case law of the 11th Chamber of the CoC, simply identifying the marks will not constitute evidence for bad faith; and

  • Due to the principle of territoriality, filing applications similar to trademarks registered abroad also will not constitute evidence of bad faith.

Implications of the Court of Cassation’s ruling

The conclusion of the CoC narrows the implementation of the bad faith argument (as per Article 6/9 of the Turkish IP Code). Indeed, in this scenario the acceptance of bad faith is restricted to concrete evidence – such as the applicant being a previous distributor or employee of the trademark holder, or there being a past relationship – and the absence of such concrete evidence would lead to refusal of the bad faith argument.

It is also known from, and established in, decisions by the Court of Justice of the European Union that similarity and/or identity of trademarks alone is not direct evidence of bad faith and this argument shall be supported with additional points. It is also accepted in the CoC’s many decisions that filing a trademark application identical to a trademark registered abroad and/or that is well known cannot be a coincidence and the applicant cannot be considered as acting in good faith.

However, in the present matter, the trademark at issue is not only identical to the plaintiff’s well-known marks, but also the applicant holds other trademarks identical to third-party companies’ trademarks that are well known in Turkey or have the potential to be well known in Turkey. Furthermore, the plaintiff’s trademark and the trademarks imitated by the applicant are distinctive and cannot be considered as commonly used phrases.

Considering these facts, the local court’s and the RCoA’s evaluations should have been found justified by the CoC and therefore the contrary decision of the CoC is very surprising indeed.

The insistence of the CoC on this decision would mean that the fact that an applicant filed for, or copied, other well-known trademarks would not have an effect in the evaluation of a bad faith argument. So while it is acceptable and comprehensible to say that similarity of trademarks alone will not de facto mean bad faith of the applicant, it is unfair to say that an applicant imitating several well-known trademarks of different owners is not sufficient to prove bad faith.

In light of this, the IP Court is expected to insist on its prior decision and hope that this erroneous perspective of the CoC will not take root. Regardless, it is always recommended to check an applicant’s other trademarks, activities, etc., which can give an insight and be used as a supporting element for a bad faith argument, inter alia.

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