A new statute amending the Decree Law numbered 556 on Protection of Trademarks was enacted by the Grand National Assembly.

The statute aims to avoid loopholes likely to occur after the Constitutional Court’s decision abolishing some of the articles of the Decree Law numbered 556. The statute set forth the scope of the rights arising out of or in connection with trademark registration and acts that cause trademark infringement and reads as follows:

Article 9 – Rights arising out of trademark registration shall exclusively belong to the trademark owner. The trademark owner may demand prevention of following acts:

a) use of any sign identical with the registered trademark in relation to goods and/or services identical to those for which the trademark is registered

b) use of any sign where, because of its identity with or similarity to the registered trademark and identity and/or similarity of the goods and/or services covered by the registered trademark and sign, there exists a likelihood of confusion by the public, including likelihood of association, between the sign and the trademark,

c) use of any sign identical with or similar to the registered trademark in relation to goods and/or services dissimilar to those for which the trademark is registered, where such use may cause unfair advantage due to the level of reputation the registered trademark reached within Turkey or to damage goodwill or distinctive character of the registered trademark.

The following may be prohibited under the first paragraph:

a) affixing the sign to the goods or to their packaging,
b) offering the goods, putting them on the market, or stocking them for these purposes under that sign, or offering or supplying services thereunder,
c) entering the goods bearing the sign into a customs zone, becoming subject to a transaction or use approved by customs,
d) using the sign on business documents and advertisements,
e) commercially using the sign identical with or similar to the trademark as a domain name, meta tag, key word, etc., provided that the user of such sign does not have a right or legitimate connection regarding use of the sign,

Rights granted with the trademark become effective against third parties as of the publication date of the trademark registration. The applicant is authorized to file compensation actions due to the acts that occur after the publication of the trademark application and that may be prohibited in case of publication of the trademark registration. The Court shall not decide on the validity of claims prior to publication of the registration.

Article 61 – The following shall be considered trademark infringement:

a) use of the trademark without permission of the trademark owner in ways stipulated in Article 9,

b) counterfeiting the trademark by using the trademark or a sign confusingly similar to the trademark,

c) selling, distributing, or putting the trademark to commercial use through other means; making the same become subject to a transaction or use approved by customs; or possessing for commercial purposes goods carrying the infringed trademark, while being aware or being in a position to be aware that the trademark is being counterfeited by use of the trademark or a sign confusingly similar to the trademark,

d) transfer to third parties or the expansion of rights granted by the trademark owner through license.

These new provisions will become effective as from January 28, 2009.