Protection of your trademark against commercial agent or representative’s registrations
Imagine that you do business in a foreign country and your business partner or commercial agent in this country has registered your trademark in his name and is not willing to transfer it to you. Or imagine that you have filed an international application through the Madrid System in several countries and your application is refused ex-officio by a national office because of an earlier identical mark that is registered by your commercial agent in this country. In this latter case, you can request from your commercial agent the transfer of the mark in your name and the problem would be solved. But what if the commercial agent refuses the transfer of your trademark to you?
In such cases, it is important to be aware of the remedies that you can use for getting back your trademark.
For a sign to be protected in Turkey, it must be registered or used in Turkey. However, it is possible for the person who registers a mark in Turkey to be the commercial agent or representative of the trademark owner in Turkey. In this case, the owner of the trademark is granted some rights that can be claimed against the commercial agent or representative who registered the trademark in his name without permission. If your commercial agent or representative has registered your trademark in his name in Turkey without your authorization, you have some tools to use both during and after the registration.
If it is in a phase of the application, you can oppose the application within 2 months from the publication of the application on the Trademark Bulletin, on the ground of art. 6/2 of the Turkish Intellectual Property Law (IPL).
If the trademark has already been registered in the name of your commercial agent, you have to go to court. In such a case, you can either request the invalidity of that mark under the abovementioned art. 6/2 which is one of the relative grounds for refusal or request directly the prohibition of the use and the assignment of the mark in your name according to art. 10 of the IPL.
So, in a case where you have missed the registration phase, you can ask the court for the prohibition of the use of your trademark by your commercial agent and also the assignment of the trademark in your name. However, there are some criteria to fulfill. These criteria are the same for both in terms of what you can claim during the registration process before the Turkish Patent and Trademark Office and what you can claim after registration before the court.
First, the person who registered your trademark should be your commercial agent or representative in Turkey. The term “commercial agent or representative” refers to the persons to whom the trademark owner gives special or general power of attorney, and the persons to whom s/he has given exclusive dealership or agency or with whom s/he has made a franchise agreement. However, the legal relationship between the parties does not necessarily have to be realized in the form of an agency, dealership agreement, or exclusive dealership agreement. The distributorship agreement is also considered a representation relationship within the scope of this article. The important thing here is that the authorized person should be the person responsible for protecting the interests of the trademark owner. In this regard, if the person who registered your mark without your authorization is only your client, you cannot rely on these provisions.
Second, the trademark registered by your commercial agent or representative should be identical or indistinguishably similar to your trademark. Thus, you can prohibit the use of and request the transfer of not only the same mark but also an indistinguishably similar mark. However, if the trademark registered by the commercial agent is simply similar to your trademark, you cannot refer to these articles of the IPL. In such a case, if you do not have any prior right ownership in Turkey, you can invoke bad faith and request the invalidity of the mark and then apply for the same trademark in Turkey. Or, if you have already a registered trademark in Turkey and your mark has a reputation in Turkey, you can invoke art. 6/5 according to which a trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark due to the reputation the earlier trademark has in Turkey shall be refused upon opposition of the proprietor of that earlier trademark.
Third, the trademark registered by your commercial agent or representative without your authorization should cover the same or similarly related goods or services as your basic national mark. If the goods or services are different, you can claim the reputation of your mark and invoke art. 6/5 provided that you have a registered mark in Turkey. However, whether you have a registered mark in Turkey or not, you can always make invalidated your commercial agent or representative’s trademark on the ground of bad faith.
Forth, your commercial agent should have registered the trademark without your authorization. The burden of proof that the authorization exists is on the commercial agent applying to register the trademark. If there is no explicit and written permission, but only an implied statement of will, this implied statement of will can only be accepted as “authorization” if the purpose of the trademark owner in this direction is clearly understood.
Finally, to get transferred back your trademark according to the above-mentioned articles, your commercial agent should not have a justified reason. If the agent or representative has a justifiable reason for registration in his name, for example, if the registration has been made to prevent the infringement of the unregistered trademark by third parties and it has been stated that the right arising from the registration will be transferred to the trademark owner when requested, the right owner of the trademark cannot rely on these articles. On the contrary, it is not considered a justified reason for the trademark to be registered by the commercial agent or representative that this latter has made promotional and advertising expenditures for the trademark and its owner, participated in fairs, made investments and expenditures in this direction.
Today, it is a fact that many foreign investors consent to the registration of their trademarks in the name of a sole authorized dealer, distributor, agency, or other distribution network members or licensed manufacturer to provide effective protection against third parties in Turkey. In such cases, there is a fiducia between the parties. With the termination of the contractual relationship between these people, there is certainly a need to protect the real right holder.
With this regulation, an exception was made to the principle of territoriality by granting the trademark owner whose trademark is only registered abroad, the right to object to the use of the trademark against the commercial agent or representative who registered the trademark in Turkey. The reason for this is that the legislator attaches importance to the fiduciary transaction between the actual right owner and the commercial agent or representative who is the formal right owner, and his will to protect the real right owner. In this case, the real-right owner may request the invalidity of the trademark registered in the name of the commercial agent or representative, as well as request the assignment of the said trademark to himself.
About the Blogpost Author
Dr. Zeynep Yasaman (legal counsel on IP Law; Trademark and Patent Attorney) has been providing legal services on Intellectual Property Rights since more than ten years. Dr. Yasaman holds a Ph.D. in European Union Law focusing on trademark rights protection on the Internet in the EU and Turkey. Before her doctorate degree, she obtained graduate and post graduate degrees in Business Administration and International business and then graduate degree in Law. Dr. Zeynep Yasaman, being the third generation of the Firm, has been working at Yasaman Law Firm in Istanbul/Turkey as the head of IP department. She also serves as trademark, design and patent expert before the IP Courts in Istanbul and has been giving lectures at the University to graduate and post-graduate students.