TY - JOUR AU - Tekin, Ufuk AB - Abstract While geographical indications show geographical origin, trade marks show commercial origin. Therefore, it is possible to say that both geographical indications and trade marks have distinctive character. Indeed, when an application is filed to register a geographical indication as a trade mark, an important question is whether the sign is distinctive enough. In such cases, the distinctive character of these commercial and geographical ‘signs’ can overlap and intersect with each other. In this article, the intersection and relationship between geographical indications and trade marks will be evaluated by considering two different scenarios. In the first one, the trade mark application precedes the registration of the geographical indication, while in the second the application for the geographical indication is filed before the conflicting trade mark. The analysis is carried out by taking into account various provisions of theTurkish Industrial Property Code (IPC), the judicial practice of the Turkish Court of Cassation and international regulations. In this context, the relationship between several absolute grounds for refusal in such a situation and which of these provisions is the most applicable will be examined. In particular, an attempt will be made to explain the role of the absolute ground for refusal regulated in the new Turkish Industrial Property Code for the first time, namely that signs containing or consisting of a geographical indication cannot be registered as a trade mark (Art. 5.1(i)). I. Introduction Turkish industrial property law was regulated by decree-laws until 2017. From then on industrial property legislation has been amended in order to take into consideration the current developments in European law, and these decree-laws were combined under the Industrial Property Code No. 6769 (IPC)1. While decree-law No. 5552 concerned the protection of geographical indications, decree-law No. 5563 concerned the protection of trade marks. Given that these two regulations of 1995 did not meet the needs to which they were addressed in various respects, as recognized in the general preamble of the IPC, it was necessary to revise the legislation on the protection of trade marks and geographical indications so as to adapt it to the developments in the international arena4 and the problems encountered in practice.5 In other words, the IPC was adopted with the intention to harmonise Turkish industrial property law with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks No. 2015/2436 (hereinafter EUTMD),6 the European Union Trade Mark Regulation No. 2017/1001 (hereinafter EUTMR) and EU Regulation No. 1151/2012 on quality schemes for agricultural products and foodstuffs7 (hereinafter Reg. (EU) 1151/2012). Although the general preamble of the IPC states that the provisions on geographical indications in Arts. 33-54 are based on the provisions of Reg. (EU) 1151/2012, there is a difference in the scope of the protection of these provisions. Products within the scope of protection are regulated in Art. 33. According to this article, food, agricultural, mining, handicraft and industrial products resulting from the unification of natural and human factors shall be entitled to a geographical indication, whereas Reg. (EU) 1151/2012 aims to help producers of agricultural products and foodstuffs to communicate the product characteristics and farming attributes of those products and foodstuffs to buyers and consumers (Art. 1(1), Art. 2). Apart from Reg. (EU) 1151/2012, the Geneva Act of the Lisbon Agreement, which the EU joined as of November 2019, also regulates geographical indications. However, Turkey has neither participated in the Lisbon Agreement nor joined the Geneva Act. Nevertheless, in an international seminar held in Turkey by the Turkish Patent and Trade Mark Office on the international registration of geographical indications, it was stated that Turkey had received an invitation to integrate this system and studies on the subject were continuing.8 Article 4 of IPC regulates which signs may constitute a valid trade mark (see also Art. 4 EUTMR, Art. 3 EUTMD). According to this provision, trade marks may consist of any signs such as words, including personal names, figures, colours, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor. Since this article does not clearly lay down that geographical indications cannot be registered as trade marks, it is possible to register geographical indications as trade marks.9 In other words, it is possible to say that a geographical sign for which an application has been filed for registration as a trade mark has abstract distinctiveness.10 However, in some cases, it has been stated that these geographical indications cannot be registered as trade marks on the grounds that they do not have concrete distinctiveness.11 As can be seen, the signs that can constitute a trade mark must be distinctive, so that the goods or services of an undertaking will be distinguished from the goods or services of other undertakings. A geographical indication, on the other hand, is a collective right12 and protects the interests of the wider masses13 rather than undertakings.14 For geographical indications, the purpose of distinctiveness is to distinguish the goods or services that are covered by the geographical indication from similar geographical indications. In other words, the trade mark shows commercial origin, while the geographical indication shows geographical origin. Therefore, it is possible to say that both geographical indications and trade marks have distinctive character.15 Indeed, when an application is filed for registration of a geographical indication as a trade mark, it is of great importance whether the sign applied for is distinctive enough.16 In such cases, the distinctive character of these commercial and geographical ‘signs’ can overlap and intersect with each other. In this article, the intersection and relationship between geographical indications and trade marks will be evaluated by considering two different scenarios. In the first one, the trade mark application precedes the registration of the geographical indication, while in the second the application for the geographical indication is filed before the conflicting trade mark. The analysis is carried out by taking into account various provisions of the IPC, the judicial practice of the Turkish Court of Cassation and international regulations. II. Relationship between registered geographical indications and subsequent trade mark applications or trade marks   1. Conflict with subsequent trade mark applications According to Art. 48.1 IPC (Art. 14(1) Reg. (EU) 1151/2012), after the registration of a geographical indication, a trade mark application filed for use in the forms stated in Art. 44 IPC or 17 to be used for the goods or services18 related19 to the geographical indication shall be refused. First of all, in order for a trade mark application made after a geographical indication has been registered to be rejected, the trade mark application has to be used for the goods or services related to the geographical indication. Therefore, it is possible to register a subsequent trade mark for types of goods or services other than those indicated by a geographical indication.20 A trade mark application for goods and services protected by geographical indication could be rejected according to Art. 5 IPC, even if the situation is not regulated in Art. 48.1. In other words, IPC Art. 5 (Art. 7 EUTMR, Art. 4 EUTMD) regarding the absolute grounds for refusal in trade mark registration can be used as the basis for this rejection. Namely, according to Art. 5.1(c) IPC (Art. 7.1(c) EUTMR, Art. 4.1(c) EUTMD), signs which consist exclusively of or include as an essential element signs or indications which serve in trade to designate geographical origin shall not be registered as a trade mark. Also, as stipulated in Art. 5.1(f) IPC (Art. 7.1(g) EUTMR, Art. 4.1(g) EUTMD), signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service are not eligible to be registered as a trade mark.21 In addition, according to Art. 5.1(i) IPC22 (Art. 7.1(j) EUTMR, Art. 4.1(i) EUTMD, Art. 22.3 TRIPS), signs which consist of a registered geographical sign or which contain a registered geographical sign shall not be registered as a trade mark.23 The purpose of these regulations is to ensure that expressions containing geographical elements are open to the use of everyone and, for this reason, to prevent these signs from giving monopoly rights to the owner by being registered as trade marks.24 However, in a decision of the Court of Cassation, it was stated that place names (e.g. İstanbul Wine) that would not allow confusion with geographical indications could be registered as trade marks.25 This decision has been criticized in the literature on the grounds that the place where the goods were produced was not taken into account and that the decision was adopted without examining whether consumers were deceived or not.26 As could be seen, there are several provisions regulating the relationship between geographical ‘signs’ and trade marks in both Turkish and European Union law. While two of these provisions are based on the term geographical origin (Art. 5.1(c) and (f) IPC),27 one of the provisions is directly about geographical indications (Art. 5.1(i) IPC). Therefore, first of all, the boundary between these two terms must be determined. The term geographical origin is much broader than the term geographical indication.28 Each geographical indication is also a sign that indicates a geographical origin. However, every sign indicating a geographical origin need not be a geographical indication at the same time. In other words, it is possible to say that a sign which indicates geographical origin need not be a geographical indication. This is because the signs eligible to be regarded as geographical indications are regulated in Art. 34 IPC29 and signs other than these cannot be accepted as geographical indications even if they indicate geographical origin. For example, the name of a city alone is accepted only as a sign that indicates geographical origin, while on the other hand the use of the name of a geographical product in addition to the name of this city can be regarded as a geographical indication. Word trade marks that consist of or contain a geographical location are defined as geographical trade marks.30 In the light of the above, it is necessary to emphasize the fate of geographical trade mark applications containing or consisting of a geographical indication. In such a case, the rejection of the application may be requested based on one of the three aforementioned provisions. This means that both Art. 5.1(c), Art. 5.1(f) and also Art. 5.1(i) IPC are applicable to such a situation. However, when a geographical indication is used in the trade mark applied for, while certain conditions are required for the application of Arts. 5.1(c) and 5.1(f) IPC, the inclusion of the geographical indication without any requirement or additional conditions is sufficient for the application of Art. 5.1(i) IPC. In fact, in order for a trade mark application containing or consisting of a geographical indication to be rejected in accordance with subpara. (c), this geographical indication has to be used as an exclusive or essential element of the trade mark applied for.31 The fact that the geographical indication is the exclusive element of the trade mark means that the trade mark consists only of that indication.32 On the other hand, the fact that the geographical indication is the essential element of the trade mark means that this geographical indication is at the forefront in the trade mark, which consists of many other elements such as word and shape.33 In addition, for the applicability of Art. 5.1(c) IPC, an assessment must be made whether a geographical name in respect of which an application for registration as a trade mark is made designates a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future.34 Finally, it should be noted that, according to Art. 5.1(c) IPC, the trade mark can be rejected even when not deceptive. In order for trade mark applications containing geographical indications to be rejected according to Art. 5.1(f) IPC, these trade marks must deceive the public in terms of goods or services.35 This deceptiveness has to be about the geographical source of the goods or services.36 In other words, these goods or services must be linked to signs indicating a geographical element or these goods or services must be famous in connection with or should identify that geographical area in the mind of relevant (average consumers, even if it is not actually so.37 In contrast, according to subpara. (i), the trade mark application is rejected solely because it consists of a registered geographical indication or contains a registered geographical indication, without any other requirement. Apart from this, there is also a difference in terms of the results related to the abovementioned provisions, such that according to Art. 5.2 IPC (Art. 7.3 EUTMR, Art. 4.4 EUTMD), if a trade mark has been used before the application, and through this use has acquired distinctive character in respect of the goods and services that are covered by the application, the registration of this trade mark may not be refused in accordance with subparas. (b), (c) and (d) of the first paragraph. In other words, it is possible for a sign without concrete distinctiveness to acquire distinctiveness as a result of use in some cases, and subclause (c) is one of the cases. Therefore, when subpara. (c) is relied on as an absolute ground for refusal, it is possible to raise the objection that the trade mark has acquired distinctive character as a result of its use.38 As a result, it can be said that it would be much more appropriate to request the rejection of trade mark applications containing or consisting of a registered geographical indication according to Art. 5.1(i) IPC.39 2. Conflict with subsequently registered trade marks According to Art. 48.1 IPC, after the registration of the geographical indication, if a trade mark has been registered, it may be invalidated through legal proceedings. In principle, if one of the absolute grounds for refusal regarding the trade mark application is satisfied, the application should be rejected. However, it is possible to request the invalidity of a trade mark which is registered. In addition, it should be kept in mind that if distinctiveness is acquired as a result of use according to 5.2, the invalidity of the trade mark cannot be requested (Art. 25.4 IPC). Interested parties, public prosecutors or relevant public institutions and organizations may request the court to decide on the invalidity of a trade mark (Art. 25.2 IPC).40 A deadline for litigation is not laid down for an invalidity request regarding trade marks in the IPC. Therefore, the trade mark invalidation proceedings can in principle be filed as long as the trade mark is registered.41 Trade mark invalidation proceedings shall be filed against the persons who are indicated in the register as the trade mark proprietor as of the date of filing of the invalidation proceedings, or their successors in title. The Turkish Patent and Trade Mark Office (TPMO) shall not be designated as a party to trade mark invalidation proceedings (Art. 25.3 IPC).42 III. Relationship between registered trade marks and subsequent geographical indication applications or registered geographical indications   1. Conflict with subsequent geographical indication applications According to Art. 48.3 IPC, taking into account the reputation, prestige and duration of use of a registered trade mark, names that may harm that existence of a trade mark or be liable to mislead about the true identity of the product due to being identical with or similar to that trade mark shall not be allowed to be registered as a geographical indication upon objection by the earlier right holder. As can be seen, the principle of protection of priority, which is one of the basic principles in intellectual property law, has been taken into consideration here (‘first in time, first in right’).43 However, the existence of a registered trade mark before a geographical indication application cannot always prevent the registration of this application. As can be understood from the abovementioned provision, certain conditions must be satisfied.44 First of all, the geographical indication applied for has to be identical with or similar to the earlier trade mark. When determining whether the signs are identical or not, account should be taken of the impression of the trade mark on the average consumers as a whole.45 Colour, character and dimensional differences between signs do not eliminate the identity between trade marks.46 On the other hand, if a mark is likely to be confused, including the possibility of association with a registered trade mark, that mark is considered to be similar to the earlier trade mark. Secondly, the geographical indication that has been filed must be harmful to the existence of the registered trade mark or mislead the public about the real origin of this trade mark.47 In this context, it is also useful to evaluate the process for examining the geographical indication application. According to Art. 38.1 IPC, the TPO shall examine an application for a geographical indication according to Arts. 33 to 37 and 39 IPC.48 Applications examined and found eligible under Art. 38 IPC shall be published in the Bulletin. The proprietor of an earlier trade mark claiming that the registration request does not conform to Art. 48 IPC may file a written objection with grounds within three months of the publication in the Bulletin of the request for registration (Art. 40.2 IPC).49 2. Conflict with subsequently registered geographical indications One aspect of the relationship between an earlier trade mark and a later geographical indication is regulated in Art. 48.2 IPC (Art. 14(2) Reg. (EU) 1151/2012). According to this provision, when a trade mark identical with or similar to the geographical indication was registered in good faith or the rights to use that trade mark were acquired through use in good faith50 before the protection of the geographical indication, rights arising from the geographical indication shall not prejudice the registration of the trade mark application or the right to use the trade mark in good faith.51 As can be seen, this provision determines the situation of the earlier trade mark against the subsequent geographical indication. However, this provision does not include a statement about the status of the subsequent geographical indication against the earlier trade mark.52 In such a case, what will be the fate of the subsequent geographical indication in cases where a trade mark is registered before the geographical indication? As has been stated before, according to Art. 48.1 IPC, the invalidity of a subsequent trade mark may be requested (also see Art. 25.1 IPC). However, Art. 50 regulating the invalidity of the geographical indication does not include the invalidity of a subsequent geographical indication that is identical with or similar to a previous trade mark.53 Thus, in such cases, the invalidity of the subsequent geographical indication should not be requested.54 It should not be forgotten that the reasons for invalidity should be limited on the grounds of legal certainty55 and legal security principles, and new reasons for invalidity not regulated in the law should not be applied. It is possible to talk about a gap in the law here.56 This gap can be filled in two ways: Firstly, it may be suggested that Art. 48.3 IPC regarding subsequent geographical indication applications be applied with respect to the subsequent geographical indication, because a situation that prevents even registration can be expected to invalidate registered geographical signs a fortiori. However, this proposal is not highly recommended as it will not comply with the principle of legal certainty. The second suggestion, and the more appropriate one would be to add a subclause regarding the invalidity of the subsequent geographical indication to Art. 50 IPC regarding the invalidity of the geographical indication. It should also be noted that the owner of the earlier trade mark is not vulnerable to the subsequent geographical indication. Namely, the rights of the trade mark owner are reserved in the event that the holder of the subsequent geographical indication performs an act deemed to infringe the trade mark right (see Arts. 29, 30 and also Art. 7 IPC). In addition, in such a case, there is no doubt that the earlier trade mark owner can rely on unfair competition provisions (Arts. 54-63 Turkish Commercial Code (hereinafter TCC)).57 However, in order to rely on unfair competition provisions, the subsequent geographical indication must be of a nature to mislead the public about the geographical origin of the goods or services.58 IV. Conclusion The distinctive character of trade marks and geographical indications can overlap and intersect with each other. According to Art. 48.1 IPC, after the registration of a geographical indication, a trade mark application filed in order to be used in the forms stated in Art. 44 IPC or to be used for the goods or services related to the geographical indication shall be refused. There are several provisions that can be applied regarding this refusal. However, Art. 5.1(i) can be regarded as the most appropriate provision since it protects the geographical indication without any other conditions and it can prevent the subsequent trade mark application from acquiring distinctiveness as a result of use. On the other hand, after the registration of the geographical indication, if a trade mark has been registered, it may be invalidated through legal proceeding. According to Art. 48.3 IPC, taking into account the reputation, prestige and duration of use of a registered trade mark, names that may harm the existence of a trade mark or be misleading about its real origin due to being identical with or similar to the trade mark shall not be allowed to be registered as a geographical indication upon objection by the earlier right holder. As can be seen, the principle of the protection of priority, which is one of the basic principles in intellectual property law, has been taken into consideration here. Thus, the existence of a registered trade mark before a geographical indication application can prevent the registration of this application under the abovementioned conditions. However, the fate of the subsequent geographical indication in cases where the trade mark is registered before a geographical indication is not regulated in the IPC. Because Art. 50 IPC regulating the invalidity of the geographical indication does not include the invalidity of a subsequent geographical indication that is identical with or similar to a previous trade mark, it is not possible to request the invalidity of the subsequent geographical indication according to Art. 50 IPC. In this situation it may be suggested that Art. 48.3 IPC regarding the subsequent geographical indication applications be applied with respect to subsequent geographical indication. However, this proposal is not highly recommended as it will not comply with the principle of legal certainty. The second suggestion, and the more appropriate one, would be to add a subclause regarding the invalidity of the subsequent geographical indication to Art. 50 IPC regarding the invalidity of the geographical indication. Footnotes 1 Official Journal, 10 January 2017, No 29944 accessed 22 August 2020. 2 Official Journal, 27 June 1995, No 22326 accessed 28 August 2020. 3 ibid. 4 See General Preamble 1 accessed 27 August 2020. 5 ibid 1. 6 [2015] OJ L336/1-26. 7 [2012] OJ L343/1-29. 8 accessed 3 November 2020. 9 Didem Özgür, Coğrafi İşaretlerin Korunması: Avrupa Birliği’ndeki Hukuki Çerçeve ve Türkiye Uygulaması [Protection of Geographical Indications: The Legal Framework in European Union and Practice in Turkey] (Dokuz Eylul University 2011) 87. 10 For a similar view see Karl-Heinz Fezer, Markenrecht [Trade Mark Law] (4th edn, CH Beck 2009) s 3 para 12; Reinhard Ingerl and Christian Rohnke, Markengesetz, Gesetz über den Schutz von Marken und sonstigen Kennzeichen [Trade Mark Act, Act on the protection of trade marks and other signs] (3rd edn, CH Beck 2010) s 3 para 1. 11 Concrete distinctiveness means that it is possible to distinguish the goods or services in respect of which a trade mark registration is requested from the goods or services of other undertakings, Beşir Fatih Doğan, ‘Türk, Alman ve Avrupa Birliği Hukukuna Göre Marka Olamayacak İşaretlerin Kullanım Sonucu Ayırt Edici Nitelik Kazanarak Tescil Edilebilirliği Sorunu’ [‘The Registrability Problem of Trade Marks which have Acquired Distinctiveness under Turkish, German and European Union Law’] [2006/3] FMR 26-27; Ufuk Tekin, ‘Branding the Love: Heart as a Trade Mark’ (2020) 15 JIPLP 626; Ufuk Tekin, ‘Multimedya Markaları’ [‘Multimedia Trade Marks’] (2020) 36 Banking and Commercial Law Journal 205-206; Sami Özgür Memişoğlu, Marka Hukukunda Mutlak Ret Sebepleri [Absolute Grounds for Refusal in Trade Mark Law] (Seçkin 2019) 352. 12 Hayrettin Çağlar, Burçak Yıldız and Dilek İmirlioğlu, 6769 sayılı Sınai Mülkiyet Kanununa Göre Marka Vekilliği Sınavına Hazırlık (2nd edn, Adalet 2019) 249; Arslan Kaya and others, Ticari İşletme Hukuku [The Law of Commercial Enterprises] (6th edn, Vedat 2019) 481. 13 For the view that geographical indications are of a public nature in a sense, see Buket Gün, Marka Hukukunda Birlikte Var Olma [Coexistence in Trade Mark Law] (Oni İki Levha 2019) 271. 14 According to art 46.1 IPC, registered geographical indications shall be used by those operating in the production or marketing of products that comply with the specifications provided in the registration. 15 Kaya and others (n 12) 481; İlhami Güneş, Marka Hukuku’nda Önceye Dayalı Haklar ve Ayırt Edici İşaretler [Earlier Rights and Distinctive Signs in Trade Mark Law] (2nd edn, Seçkin 2015) 85-87; Memişoğlu (n 11) 800; Gün (n 13) 271. 16 Doğan (n 11) 27. 17 For the opinion that the use of the conjunction ‘and’ instead of ‘or’ would be more suitable and appropriate to Regulation (EU) 1151/2012, Çağlar, Yıldız and İmirlioğlu (n 12) 250; Gün (n 13) 275. 18 On the basis of this provision, services can also be said to be protected as a geographical indication in Turkish law. Before the Industrial Property Code was adopted, for the idea of the possibility of such protection see: Gökmen Gündoğdu, ‘555 sayılı CoğışKHK’nın Uygulamasında ‘Ürün’ Kavramı ve Bazı Sorunlar’ [‘The Term ‘Product’ in Decree-law No 555 regarding Geographical Indication Protection and Some Related Problems’] (2005) 63 IUHFM 233. 19 Repealed decree-law No 555 (art 18/I) stated that the invalidity action could only be brought in terms of the same product. From this point of view, the scope of art 48.1 IPC can be said to be wider than that of the repealed decree-law. Since art 14(1) Regulation (EU) 1151/2012 foresees the possibility of an invalidity case for the same type of product as in the annulled decree-law, the issue is regulated differently from the IPC. 20 However, in such a case, the trade mark application should not be filed in bad faith, art 48.2 IPC. 21 As can be seen, while subclause (c) is about descriptive signs, subclause (f) regulates deceptive signs, Özgür (n 9) 88. 22 The former decree-law did not include such a provision. This can be regarded as an indication of the importance given by the legislator to geographical indications, Gonca Ilıcalı, ‘Sınai Mülkiyetten Coğrafi İşaretli Kesitler’ [‘Geographically Indicated Sections from Industrial Property’] 21 November 2018 < https://iprgezgini.org/2018/11/21/sinai-mulkiyetten-cografi-isaretli-kesitler/> accessed 1 September 2020. 23 The scope of protection will be determined by considering the classes to which the geographical indication is related, General Preamble (n 4) 5. 24 TPMO Trade Mark Examination Guideline 2019, 121 accessed 10 September 2020. In this direction, a trade mark application consisting of the words ‘Büyük Şehir’ (Metropolitan) must be available for use by everyone and is not eligible to be registered as a trade mark; see 11th Civil Chamber of the Turkish Court of Cassation, decision No 2020/952 of 5 February 2020; also ‘Çankaya’, the name of a famous district in Turkey, must be available for use by everyone and cannot be monopolised, see 11th Civil Chamber of the Turkish Court of Cassation, decision No 2019/7796 of 4 December 2019; 11th Civil Chamber of the Turkish Court of Cassation, decision No 1999/9590 of 26 November 1999 (Pendik Decision), (all cases used in this article are taken from the website of the Turkish Court of Cassation: ); also see: Cases C-108/97 and C-109/97 Windsurfing Chiemsee ECLI:EU:C:1999:230 [= [1999] GRUR Int 727], para 25. 25 Assembly of Civil Chambers of the Turkish Court of Cassation, decision No 2000/1814 of 20 December 2000. 26 Özgür (n 9) 89; Burçak Yıldız, ‘Yargıtay Kararları Işığında Coğrafî Markalar’ [‘Geographical Trade Marks in the Light of the Case Law of the Turkish Court of Cassation’] (2018) 9 InULR 141, 143. 27 Memişoğlu (n 11) 813. 28 Ilıcalı (n 23). 29 ‘Geographical indication is the sign indicating a product that has become associated with a locality, area, region or country where it originates due to an apparent characteristic, its reputation or other features. Geographical indications shall be registered as appellation of origin or designation of origin according to the features set out below: a) The names that identify products which originate from a locality, region or in exceptional cases a country with designated geographical boundaries, that derive their entire or principal characteristics from the natural or human factors exclusively attributed to this geographical area where their production, processing and all other operations take place, are appellations of origin. b) The names identifying products which originate from a locality, region or in exceptional cases a country with designated geographical boundaries, that is associated with this region due to an apparent characteristic, its reputation or other features, where at least one of the steps of production, processing or other operations take place within the boundaries of the designated geographical area, are designations of origin.’ As can be understood from this provision, the term ‘geographical indication’ in Turkish law has a broader meaning that includes both the appellation of origin and the designation of origin. However, the term ‘geographical indication’ in the sense of Regulation (EU) 1151/2012 corresponds to the appellation of origin. For detailed information on how the international terms on the subject are understood in Turkish law, see also Burçak Yıldız, ‘Coğrafî İşaretlere ve Coğrafî Köken Gösteren Diğer İşaretlere İlişkin Olarak Uluslararası Sözleşmelerde ve Avrupa Birliği Hukukunda Kullanılan Kavramların Kapsamı ile Bu Kavramların Hukukumuza Uyarlanması Sorunu’ [‘The Scope of the Concepts Used in International Treaties and European Union Law Regarding Geographical Indications and Other Indications of Geographical Origin and the Adoption Problem of these Concepts to Turkish Law’] [2007/4] FMR 33-87. 30 Yıldız (n 27) 126. 31 In this direction see 11th Civil Chamber of the Turkish Court of Cassation, decision No 2019/4036 of 22 May 2019 (the sign ‘Susurluk (a province in the west of Turkey) Tost ve Ayran Evi’ is not eligible to be registered as a trade mark because it is similar to the former trade mark ‘Susurluk Tostçusu’); 11th Civil Chamber of the Turkish Court of Cassation, decision No 2019/797 of 4 February 2019 (In the trade marks Golf Maraşlım (Kahramanmaraş is a city in the south east of Turkey famous for its ice cream) and Algidanın Maraşlısı, the word Maraş is neither an exclusive element nor an essential element of these trade marks). 32 Yıldız (n 27) 134; ie the trade mark consists of only the words ‘Milas Olive Oil’ (EU No PDO-TR-02379 – 13 November 2017, [2020] OJ C270/7). 33 Yıldız (n 27) 134; eg the trade mark ‘Genuine Milas Olive Oil’. 34 Windsurfing Chiemsee (n 25) para 31; see also: Yıldız (n 27) 128-129. 35 In this direction see 11th Civil Chamber of the Turkish Court of Cassation, decision No 2020/207 of 9 January 2020 (‘MSL Meşhur Safranbolu (A district int the north west of Turkey) Lokumcusu (Famous Safranbolu Delight)’ is capable of deceiving the public because it is similar to the registered geographical indication Safranbolu Lokumu (C 2006/009)); 11th Civil Chamber of the Turkish Court of Cassation, decision No 2019/5572 of 18 September 2019 (Türkiye Yoga Federasyonu (Turkish Yoga Federation) is a private federation and capable of deceiving the public because it is not a public federation); 11th Civil Chamber of the Turkish Court of Cassation, decision No 2019/3302 of 30 April 2019 (‘Bozdoğan (a district in west of Turkey) Belediyesi Madran Memba Suyu’ (Bozdoğan Municipality Madran Mineral Water) is capable of deceiving the public in the light of the earlier registered geographical indication No. C 2013/014 (‘Çine Madran Memba Suyu’)). 36 Hamdi Yasaman and others, Marka Hukuku Cilt [Trade Mark Law], vol 1 (Vedat 2004) 241. 37 Özgür (n 9) 88. It is sufficient that the deception is obvious for average consumers, it is not important whether it is direct or indirect. For example, the presence of the Cyrillic writing on vodka produced in Turkey can be regarded as deceptive, see Gökmen Gündoğdu, Türk Hukukunda Coğrafi İşaret Kavramı ve Korunması [Geographical Indications and Their Protection under Turkish Law] (Beta 2006) 153. Similarly, another case of indirect deception is the Italian text on a shoe manufactured in Turkey, Sevilay Uzunallı, Marka Hukuku [Trade Mark Law] (Adalet 2019) 56; Uğur Çolak, Türk Marka Hukuku [Turkish Trade Mark Law] (4th edn, On İki Levha 2018) 183; 11th Civil Chamber of the Turkish Court of Cassation, decision No 2019/3302 of 30 April 2019 (n 36); 11th Civil Chamber of the Turkish Court of Cassation, decision No 2019/4740 of 24 June 2019 (the words ‘Datça Şarapları’ (Datça Wines) can be registered as trade mark because Datça is a district that is not famous for its wines, thus it cannot be regarded as deceptive); 11th Civil Chamber of the Turkish Court of Cassation, decision No 2020/379 of 15 January 2020 (the words ‘Sivas Bilici Termal’ can be registered as a trade mark because Sivas (a city in the middle of the Anatolia) is a district that is not famous for its thermal spa, thus it cannot be regarded as deceptive]; also see Uzunallı (this note) 52-53; TPMO Guideline (n 25) 121. 38 Although there are these differences between the provisions, the judge must ipso iure examine which provision should apply in the case, see Sabih Arkan, Marka Hukuku, Cilt I [Trade Mark Law], vol 1 (Ankara University 1997) 71. 39 However, art 5.1(i) IPC cannot be applied to unregistered geographical indications. In such a case, art. 5.1(c) or (f) IPC can be applied, depending on the existence of the conditions set out in these provisions, Gün (n 13) 274. 40 The courts competent for legal proceedings foreseen in the IPC shall be the civil courts for intellectual and industrial property rights and the criminal courts for intellectual and industrial property rights. In legal proceedings to be instituted against all decisions taken by the TPMO according to the provisions of the IPC and in proceedings to be instituted against the TPMO by third parties adversely affected by a decision of the TPMO, the competent court shall be the Ankara Civil Court for Intellectual and Industrial Property Rights. In legal proceedings to be instituted against third parties by the owner of an industrial property right, the competent court shall be the court where the plaintiff is domiciled or where the action violating the law has taken place or where the impacts of this action are observed (art 156 IPC). 41 Kaya and others (n 12) 535. 42 The explanations made in this and the following titles are valid for individual trade marks and do not cover guarantee or certification marks (art 31-32 IPC, art 194 EUTMR, arts 27, 28 EUTMD). Because a guarantee or certification mark is the mark used by many undertakings under the control of the trade mark owner to guarantee the geographical origin of those undertakings (art 31.1 IPC), it is possible to register a geographical indication as a guarantee or certification mark, Hayri Bozgeyik, ‘Garanti Markasının Marka Hukukundaki Yeri ve Benzer Kavramlarla İlişkisi’ [‘Guarantee Marks and Their Relationship with Related Terms’] (2013) 71 IUHFM 99; For an opposite view see also: Gün (n 13) 273. 43 Güneş (n 15) 155. 44 For detailed information about these conditions see also: Roland Knaak, ‘Geographical Indications and their Relationship with Trade Marks in EU Law’ (2015) 46 IIC 865. 45 Arkan (n 40) 76. 46 ibid 76. 47 Zara (a district in middle Anatolia) Honey is not eligible to be registered as a geographical indication on the grounds that it will be harmful to the previously registered trade mark ZARA, see 11th Civil Chamber of the Turkish Court of Cassation, decision No 2019/6517 of 21 October 2019; also cf art 6(4) Regulation (EU) 1151/2012. 48 Since art 40.2 IPC includes art 48 IPC as a ground for rejection, I am of the opinion that the TPO should also examine applications for geographical indications according to art 48 IPC in addition to arts 33 to 37 and 39 IPC. Thus art 38.1 IPC should be understood as follows: ‘The Office shall examine the applications for geographical indications or traditional specialties guaranteed according to Articles 33 to 37, 39 and 48.’ 49 Also cf art 51 Regulation (EU) 1151/2012. 50 It is not possible to speak of good faith if the registration of a sign for the purpose of a trade mark is not for the purpose of use, and if a sign that is identical with or similar to a sign belonging to someone else is registered as a trade mark without a justified reason and in a way that cannot be regarded as honest use, Ozan Can, ‘Türk Hukukunda Kötünıyetlı Marka Başvuru ve Tescılınde Iptal ve Hükümsüzlüğün Kapsamı Üzerıne Düşünceler’ [‘Remarks On Cancellation and Content of Invalidity Durıng Bad Faith Trade Mark Application and Registry under Turkish Law’] [2015] TFM 49-50. 51 cf art 14(2) Regulation (EU) 1151/2012. 52 According to recital 54 of Regulation (EU) 1151/2012, the provisions dealing with the refusal or coexistence of a designation of origin or a geographical indication on the ground of conflict with a prior trade mark should continue to apply. 53 The difference between this situation and trade mark law can be explained by the fact that the right provided by a geographical indication is a collective right. While a trade mark can be the subject of individual property, there is no property right in geographical indications, Uzunallı (n 37) 52. 54 11th Civil Chamber of the Turkish Court of Cassation, decision No 2012/9491 of 31 May 2012, Güneş (n 15) 260. For an opposite view see also Kaya and others (n 12) 536. 55 In this direction see: EUTMD recital para 29. 56 For an opposite view that instead of a legal gap it is possible to imagine the coexistence of trade mark and geographical indication in such cases see: Memişoğlu (n 11) 812. 57 Official Journal, 14 February 2011, No 27846 accessed 7 September 2020. 58 See art 55.1.a.2 TCC; Özgür (n 9) 74. © Published by OUP and CH Beck on behalf of GRUR e.V. All rights reserved. For permissions, please email: journals.permissions@oup.com and GrurInt@ip.mpg.de This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model) TI - Relationship Between Geographical Indications and Trade Marks under Turkish Law JF - GRUR International: Journal of European and International IP Law DO - 10.1093/grurint/ikab003 DA - 2021-02-23 UR - https://www.deepdyve.com/lp/oxford-university-press/relationship-between-geographical-indications-and-trade-marks-under-QRrmsMqbTr SP - 1 EP - 1 VL - Advance Article IS - DP - DeepDyve ER -