Rrestriction of Brands in Turkey
19-Nov-2020
By: Meliha Özat
Deputy Manager/ AGIP Turkey Office
TAPDK/Tobacco and Alcohol Market Regulatory Authority (“Tobacco Board”) took a decision in 2012 regarding the trademarks that will be used for “alcoholic beverages”. The decision was based on Paragraph 9 of Article 6 of the Law No. 4250 of “Spirits and Alcoholic Beverages Monopoly Act”. The said Article is as follows:
No brand, identification and distinguishing element of alcoholic beverages may be used on non-alcoholic beverages and other products; vice versa, no brand, identification and distinguishing mark of non-alcoholic beverages and other products may be used on alcoholic beverages. This Article cannot be applied to exported products.
The main purpose of the Article seems to prevent the possible association between known, well-known marks and “alcoholic drinks”. However, the implementation of the decision has been causing negative consequences so far.
The Tobacco Board requests the “alcoholic beverages” brand owners to use their marks on “alcoholic beverages” only and not for any other goods/services. In the same manner, the brand owners, whose marks are registered by any other parties on “alcoholic beverages”, are requested to stop using or altering their marks. The demand contradicts with trademark owners’ rights acquired by Trademark Protection.
Moreover considering the time, effort and investment spent on creation and advertisement of a mark, the Tobacco Board’s demands are not practical or justifiable.
Despite the declaration that the decision was taken for the purpose of consistency with European Union’s regulations, the fact and results led to conflict between different laws and regulations as well as damage on acquired trademark rights of concerned parties.
The fact is that the Trademark Decree allows for the registration of identical/confusingly similar marks in different classes, and even in the same class for different sub-classes. Moreover, if trademark “X” is registered for “alcoholic beverages”, any third party has the right to register “X” on the remaining goods/services, i.e. trademark “X” may be registered for “clothing”, “land vehicles”, “cosmetics” in the name of different owners.
The possible assignment between the parties suggested by the Board is not grounded as well, hence it would not be applicable for a trademark owner to approach all the parties who registered identical/confusingly similar marks requesting assignment and afford such assignments.
In brief, the decision taken by Tobacco Board is conflicting with Trademark Decree and the related Regulation.
The current situation indicates that by facing many inapplicable cases, either the Tobacco Board will withdraw the decision, or many will suffer from the sanctions of the decision.