In a decision dated March 18 2025 (No. 2024/3844 E. (Merits), 2025/1879 K), the 11th Civil Chamber of the Turkish Court of Cassation upheld a Regional Court of Appeal finding that a trademark application had been filed in bad faith – reversing a ruling that dismissed the claim.
Background to the case and the first-instance ruling
On April 11 2019, an application was filed for the registration of the trademark ‘Stayer+’ in classes 7 and 35 of the Nice Classification. The opponent requested the refusal of the trademark application, arguing cumulatively that:
It creates a likelihood of confusion with its well-known ‘Stayer’ trademark, registered on November 27 2007 in class 7;
The trademark would take unfair advantage of the well-known status of the opponent’s trademark or be detrimental to its distinctive character; and
The application was filed in bad faith pursuant to articles 6/1, 6/4, 6/5 and 6/9 of the Industrial Property Law (IPL).
In its decision, the Turkish Patent and Trademark Office (the Office) Trademarks Department (TD) partially refused the trademark application ‘Stayer+’ in terms of some similar goods and services in classes 7 and 35 on the ground that it creates a likelihood of confusion with the ‘Stayer‘ trademark. However, the TD also ruled that the opponent’s claims regarding well-known status and bad faith were unfounded. The appeal filed by the opponent against this decision was rejected by the Re-examination and Evaluation Board of the Office.
The opponent filed a cancellation action before the competent intellectual property courts against the decision of the Office by arguing that:
The ‘Stayer‘ trademark has been used in the field of construction machinery since 1958 in over 80 countries worldwide, including Turkey (officially, Türkiye) and has a reputation in its business sector; and
The defendant acted in bad faith by attempting to register the same trademark with the mere addition of the “+” symbol, which does not have any distinctiveness.
The court of first instance partially accepted the court action, finding a likelihood of confusion between the parties’ trademarks for some other goods and services remaining within the scope of the application. Accordingly, it partially overturned the Office’s decision and partially invalidated the contested trademark in that respect. However, it rejected the claims based on well-known status and bad faith due to lack of evidence.
Appeal and higher court findings
The plaintiff and the defendant, the Office, filed appeals against the decision of the court of first instance.
In its ruling, the Regional Court of Appeal (the Regional Court) acknowledged the existence of a high degree of similarity between the parties’ trademarks. However, it found that the remaining goods and services were dissimilar, thereby concluding that the criteria set forth under Article 6/1 of the IPL were not fulfilled with respect to those goods and services. Moreover, the Regional Court held that the conditions stipulated in articles 6/4 and 6/5, relating to well-known trademarks, were likewise not met as the plaintiff’s trademark is not well known for the goods remaining in the scope of application.
However, contrary to the earlier rulings, the Regional Court undertook a more comprehensive and nuanced examination of the issue of bad faith and emphasised in its decision that the opponent’s mark is highly distinctive and enjoys a certain level of reputation in its business sector. Accordingly, the Regional Court found it unreasonable to believe that the defendant had chosen and applied for an almost identical trademark by a mere coincidence, stating that it was impossible for the defendant not to be aware of this trademark and that the defendant failed to provide a convincing explanation for the motive behind selecting this mark. Consequently, the Regional Court concluded that the trademark application was filed in bad faith. Furthermore, the Regional Court held that bad faith is not limited to specific goods or services but extends to the entire application, and, on this basis, ordered the cancellation of the Office’s decision in its entirety and invalidation of the trademark.
The Office filed an appeal against this decision, but its appeal was rejected by the Court of Cassation.
Key takeaways on proving bad faith in Turkish trademark law
Under Turkish law, the existence of an applicant’s dishonest intent is a mandatory element in determining bad faith, while factors such as similarity, likelihood of confusion, and the relationship between the parties are considered complementary. The decision of the Court of Cassation is significant in that bad faith can be established if the prior mark is highly distinctive and enjoys a certain degree of reputation in its business sector.
