Gülsu ELMAS
TABLE OF CONTENT
ÖNSÖZ 7
TABLE OF CONTENT.9
LIST OF ABBREVIATIONS 13
INTRODUCTION 15
PART I
LEGAL REGULATIONS REGARDING
TRADEMARK LAW
RESOURCES OF EUROPEAN UNION TRADEMARK LAW.17
RESOURCES OF TURKISH TRADEMARK LAW .19
PART II
GENERAL INFORMATION ABOUT
TRADEMARK RIGHTS
DEFINITION OF TRADEMARK 23
TRADEMARK RIGHT25
Characteristics of Trademark Right 25
Intangible Characteristic.25
Monopolistic Condition26
Timeliness and Renewability26
Being Subject to Legal Actions27
Principle of Territoriality28
Based on Voluntariness .30
Principle of Exhaustion30
The Scope of Trademark Right32
III. METHODS OF ACQUISITION OF TRADEMARK RIGHTS.35
The Acquisition of the Trademark Right By Way of Use .36
The Acquisition of the Trademark Right By Way of Use Registration38
The Acquisition of the Trademark Right under Turkish and
European Unıon Trademark Law.40
10 Table of Content
PART III
INFRINGEMENT OF TRADEMARK RIGHTS
PREREQUISITE LEGAL CONDITIONS FOR TRADEMARK
INFRINGEMENT 43
Use of the Trademark without the Owner’s Consent43
Use of the Trademark for Commercial Purposes44
Use of the Trademark in the Protection of the Trademark44
Use of the Trademark Where it is Registered 45
ACTIONS INFRINGING A TRADEMARK RIGHT46
Unauthorized Use of Trademark49
Use of a Sign Identical to a Registered Trademark for the
Products or Services Covered by the Registration50
The Use of any Sign That İs İdentical or Confusingly Similar
to the Registered Trademark and That Covers the Same or
Similar Goods or Services as the Goods or Services Covered
by the Registered Trademark, and Therefore İs Likely To
Cause Confusion Among the Public, İncluding the Possibility
of Association With the Registered Trademark. 50
Similarity of Trademarks.53
Similarity between Trademark Classes 53
Customer Perception .54
The Distinctive Power of the Trademark .54
Likelihood of Association.54
Holistic Evaluation55
Unjustified Use of a Sign That İs İdentical or Similar to a
Registered Trademark and That Would Gain an Unfair
Advantage From the Reputation of the Trademark Due to
the Level of Recognition İt Has Achieved, or That Would
Harm its Reputation or Damage İts Distinctive Character,
Regardless of Whether the Goods or Services Are the
Same, Similar, or Different .56
Existence of a Reputable Trademark .56
The Impact of Unauthorized Use on Reputable
Trademark59
(1) Gaining a Unjust Advantage.59
(2) Damage to the Reputation of the Trademark59
(3) Damage to the Distinctiveness Character of
the Trademark.60
Affixing the Sign to the Goods or to the Packaging of Those Goods60
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Importing or Exporting Goods Bearing the Registered
Trademark or a Similar Mark without Authorization 61
Putting the Goods on the Market, Offering Them as
Deliverable, or Stocking Them for These Purposes under the
Sign, or Offering or Supplying Services .65
Using the Registered Trademark or a Similar Mark in
Advertising, Promotion, or Online Activities 69
Use the Sign in Comparative Advertisements 73
Use of the Sign as a Trade Name or Company Name.74
Extending or Transferring Rights to Third Parties Without the
Licensor’s Permission75
Regarding Duration .77
Regarding Location77
Regarding Quantity78
Regarding Products and Services78
Through Sub-Licensing78
PART IV
LEGAL REMEDIES FOR THE TRADEMARK OWNER
WHOSE RIGHTS HAVE BEEN INFRINGED
REQUEST FOR DETECTION OF INFRINGEMENT81
REQUEST TO PREVENT THE POSSIBILITY INFRINGEMENT 82
III. REQUEST TO TERMINATE THE INFRINGEMENT 82
REQUEST FOR REPRESENTATION OF INFRINGEMENT.83
REQUEST FOR COMPENSATION 84
Material Compensation.84
Non-Material Compensation 89
Reputation Compensation.90
ADDITIONAL CLAIMS THAT MAY BE MADE BY THE TRADEMARK
OWNER92
Confiscation Of Products and Other Properties 92
Request To Take the Necessary Measures to Prevent the
Continuation of Infringement 93
Announcement of the Ruling and Notification to Related Parties.94
Interim Measures and Customs Seizure95
Interim Measures95
Customs Seizure96
12 Table of Content
PART V
PROCEDURAL ASPECTS OF TRADEMARK
INFRINGEMENT CASES
PARTIES TO THE ACTION OF TRADEMARK INFRINGEMENT 101
Complainant 101
The Owner of the Trademark 101
Licensee . 102
Non- Exclusive Licensee 104
Exclusive Licensee . 105
Owner of the trademark as exclusive licensor. 105
Lienor 106
Owner of a Well-Known Trademark under the Paris
Convention . 107
Defendant. 107
Real or Legal Person Performing Prohibited Actions of
Infringement 107
Licensee . 108
Those Who Participate in, Assist in, Encounter or
Facilitate Infringement . 108
Persons Who Cannot Be Claimed due to Infringement of
the Trademark 109
VII. COMPETENT COURTS IN CASE OF TRADEMARK INFRINGEMENT 113
VIII. STATUTE OF LIMITATIONS 116
MEDIATIONREQUIREMENTPRIORTOFILINGALAWSUITINCOURT . 117
PART VI
CRIMES INVOLVING TRADEMARKS AS A RESULT OF
TRADEMARK INFRINGEMENT . 119
CONCLUSION . 121
BIBLIOGRAPHY 135
