Ankara --:-- · —
bilgi@utuhukuk.com
0536 593 16 00
The protection of a trade nameis subject to different provisions depending on whether or not the name has been registered with the trade registry. The merchant’s obligation to choose and use a trade name freely within the framework of the law begins when merchant status arises. In this article we discuss the protection of registered and unregistered trade names, the actions that may be brought in the event of infringement of the name, international protection and criminal sanctions.
Currency note
This article was prepared in accordance with the legislation and practice in force on the date of publication. In particular, the trademark legislation, the names of the institutions mentioned in the article and the amounts of administrative fines may have changed since that date. You are advised to consult a lawyer on the current position.
Alongside the obligation to choose and use a trade name, registration of the name is not a mandatory element. Since registration is not constitutive, the merchant may use the trade name even without it. However, registration of the trade name makes it possible to benefit from special protection.[1]
A duly registered trade name grants its owner the right to use it and to prevent its unauthorised use by others. This right is provided by Article 52 of Turkish Commercial Code No. 6102. In addition, a duly registered trade name can also benefit from the protection of the unfair competition provisions, which are of a general nature. However, while an unregistered trade name cannot benefit from the special protection provided by the Turkish Commercial Code, it will be able to benefit from the general unfair competition provisions.[2]
Registered trade name
It benefits from the special protection in Article 52 of the Turkish Commercial Code and from the general unfair competition provisions.
Unregistered trade name
It cannot benefit from the special protection in Article 52 of the Turkish Commercial Code; it is protected by the unfair competition provisions, the provisions of the Turkish Civil Code on the protection of names and the trademark legislation.
Under Article 50 of Turkish Commercial Code No. 6102, the right to use a duly registered and published trade name belongs solely to the right holder. Under Article 45 of the Code, the exclusive right to a trade name used by natural and legal persons is valid throughout Türkiye. Consequently, the duly registered and published trade names of merchants who are natural or legal persons cannot subsequently be registered anywhere in Türkiye in the same form or with very minor differences. Additions must be made so that the difference from the previously registered trade name is clear.[3]
The merchant has an absolute right to use, and to claim protection of, a duly registered and published trade name. Relying on this right conferred on him or her, the owner of the trade name can prevent the registration, or bar the use, of another trade name resembling his or her trade name, without needing to prove that he or she faces a risk of damage or has suffered damage. The legislator’s purpose in granting the merchant such a possibility is primarily to prevent unfair competition and to protect a developing trade name and facilitate its development. Naturally, in order to acquire this right, the merchant must first complete the registration process. Registration appears here as a constitutive element. The trade name is registered in order to make it subject to special protection. It does not otherwise have the purpose of informing the public.[4]
The protection of trade names is specifically regulated in Article 52 of the Turkish Commercial Code. This protection applies to registered trade names. Unregistered trade names do not benefit from this protection but can benefit from the general unfair competition provisions.[5]
The registration and use of a trade name begin when merchant status arises. Since this obligation, which is one of the merchant’s burdens, begins with the acquisition of merchant status, from that moment onwards the merchant must choose and use a trade name and have the name registered, together with the business, in the trade registry. Although this situation (the moment merchant status is acquired) imposes a burden on the merchant as an obligation, it also confers a right. This is because, from the moment merchant status is acquired, the merchant will also have obtained the right to choose and use a trade name and to have that name registered.[6] However, the following should be noted: since registration of a trade name is not a constitutive element, the trade name may be used even before registration. However, since Article 50 of Turkish Commercial Code No. 6102 provides that “The right to use a duly registered and published trade name belongs solely to its owner.”, a trade name used without registration cannot benefit from the special protection regulated in Article 52 of the Turkish Commercial Code. In addition, a merchant who is the first to use a trade name that has not been duly registered will acquire a right over the trade name used without registration. Relying on this right, the merchant will be able to invoke the unfair competition provisions regulated in Article 54 of the Turkish Commercial Code from the moment he or she learns of an infringement of the unregistered trade name. Apart from the unfair competition provisions, where the trade name contains the name of a natural person, Article 26 of the Turkish Civil Code may also apply.[7]
“The right to use a trade name that has been duly registered and announced belongs solely to its owner.”
Turkish Commercial Code No. 6102, Art. 50
From the moment the merchant learns that his or her duly registered trade name has been infringed by third parties, whether through culpable or non-culpable conduct, he or she will be able to resort to the legal remedies set out in Article 52 of the Turkish Commercial Code.[8] Under Article 52 of the Turkish Commercial Code, a merchant alleging that the trade name has been infringed or violated may claim a declaration of the use, the prevention of the infringement and, if the unlawfully used trade name is registered, its amendment in accordance with the law or its deletion, and, if damage has been suffered, compensation for that damage in the event of fault. Furthermore, at the conclusion of an action brought to protect the trade name, the court may order the publication of the judgment in a newspaper.
Where a trade name is used by another person contrary to commercial good faith, the owner may ask the court for a declaration that the situation in question is contrary to commercial good faith. This action concerns only whether the use of the trade name is a use contrary to commercial good faith. This action does not result in an order for performance. Normally, in civil procedure, it is not possible to bring a declaratory action where an action for performance can be brought, because an action for performance also contains a declaration. However, Article 52 of the Turkish Commercial Code is an exception to this. In any event, each of the other actions provided for in Article 52 is an action for performance.[9]
A merchant whose trade name is being used by another person may ask the court to prohibit this unlawful use. In an action for the prohibition of unlawful use, which is in the nature of an action for performance, the defendant need not be at fault. Where the trade name is used contrary to commercial good faith, the infringed party will be able to bring an action for the prohibition of the unlawful use.[10]
Loss of rights through acquiescence
For as long as the infringement of the right to the trade name continues, the right of action of the merchant whose right has been infringed also continues. However, in certain cases the action for prohibition of the use of the trade name by another is taken away from the merchant. This arises as follows: if the merchant, although required under Article 2 of the Civil Code to take a certain course of action regarding the right to prevent the use of the trade name by another, has remained silent for a period that cannot be regarded as justified, he or she loses the right to bring an action against a person acting in good faith. This is referred to as loss of rights through acquiescence. However, the most important point here is that the person subsequently using the trade name must necessarily be in good faith. As a rule, since registration in the registry eliminates good faith, the burden of proving good faith lies with the person asserting it.[11]
The merchant may request that an unlawfully registered trade name, that is, the subsequently registered trade name, be amended in accordance with the law or deleted from the registry. Here too, the legislator has considered it sufficient that the person who subsequently registered it acted contrary to commercial good faith. Unlawful use also covers the formation of a trade name contrary to the law. Where there are two identical registered names, the person who registered first has priority. He or she may also request the deletion of the subsequently registered name from the registry. The question of amending the trade name arises in cases of confusion between trade names that resemble one another to such an extent that they cannot be distinguished. In that case, pursuant to Article 45 of the Turkish Commercial Code, the court may be asked to order that the trade name of the party that registered its name later be amended by making an addition to it.[12]
Under Article 53 of the Turkish Commercial Code, where another person acts contrary to commercial good faith in respect of a merchant’s trade name, the party holding the right to the name may request the court to order the removal of the material situation arising as a result of the infringement and, where deemed necessary in this context, the destruction of the means and related items. The removal of the material situation arising as a result of the infringement has been granted to the right holder in order to secure the restoration of the situation prior to the infringement vis-à-vis the merchant using the name contrary to commercial good faith. However, by virtue of the word “where necessary” in the statutory provision, the destruction of the means or related goods is an institution to be resorted to as a last resort.[13]
A person whose trade name is used unlawfully by another may, if he or she has suffered damage, claim compensation for that damage from the person using the trade name contrary to commercial good faith. Compensation for damage takes the form of pecuniary and non-pecuniary damages.[14]
In order for the right holder who has suffered damage to claim pecuniary damages, the person infringing the trade name must be at fault, there must be a causal link between the act and the damage and, most importantly, the right holder must have suffered damage as a result of this act. For pecuniary damages, the existence of a risk of damage is not sufficient. A person claiming compensation for damage must prove the damage in accordance with the general principles of the law of obligations. The amount of pecuniary damages to be awarded here may also correspond to the benefit that the infringer could obtain as a result of the infringement. Non-pecuniary damages, on the other hand, will arise upon the fulfilment of the conditions in Article 58 of Turkish Code of Obligations No. 6098.[15]
The conditions required in the article for pecuniary compensation are, in brief, as follows:
At the conclusion of an action brought for the protection of a trade name, it is possible, at the request of the successful party, for the judgment to be published in a newspaper at the expense of the other party. Generally, where protection of the trade name is sought from the court on the basis of the exclusive right, publication of the judgment is requested by the successful claimant. Where the court dismisses the action, publication of the judgment is almost never seen.[16] Where protection of the trade name is sought under the unfair competition provisions, however, publication of the judgment is important for the parties both where the action is granted and where it is dismissed. This is because unjustly accusing someone of having committed an act of unfair competition is as contrary to commercial good faith as conduct that gives rise to unfair competition.[17]
Every merchant must have the trade name registered in the trade registry as from the date on which the commercial business is opened. However, since registration in the trade registry is not a constitutive element for the trade name, a trade name may be used without registration. Naturally, an unregistered trade name will not be able to benefit from the special protection provided by Article 52 of Turkish Commercial Code No. 6102.[18] A trade name not registered in the trade registry is protected by the unfair competition provisions of Turkish Commercial Code No. 6102, by the provisions of Turkish Civil Code No. 4721 on the protection of names, and by the relevant provisions of Decree-Law No. 556 on the Protection of Trade Marks.
Protection of the trade name under the unfair competition provisions is complementary in nature. Since an unregistered trade name is protected solely under the unfair competition provisions, this protection is complementary in nature. In order for the party alleging that the name has been infringed to rely on the unfair competition provisions, he or she must face damage or a risk of damage arising as a result of the unlawful act.[19]
Under Article 56 of Turkish Commercial Code No. 6102, a person whose customers, credit, professional reputation, commercial activities or other economic interests are damaged, or who may face such a risk, as a result of unfair competition may request:
Fault is not a necessary condition for unfair competition to arise. It will be required only in actions for damages based on unfair competition. In other actions, fault will not be required.[20] Furthermore, under Article 59 of the Turkish Commercial Code, the party that wins an action brought on grounds of unfair competition may, after the judgment becomes final, request the publication of the court’s judgment at the expense of the losing party.
Limitation
Article 60 of Turkish Commercial Code No. 6102 lays down limitation periods for actions that may be brought on grounds of unfair competition. Under that article, the actions listed in Article 56 of the Turkish Commercial Code will become time-barred one year from the day on which the right holder learns of the arising of the right and, in any event, three years from the arising of that right. However, where the act of unfair competition also constitutes an act punishable under Turkish Criminal Code (TCK) No. 5237 of 26/9/2004 that is subject to a longer limitation period for prosecution, that period also applies to civil actions.[21]
Under the Turkish Civil Code, the right to a name, which is among personality rights, is specifically protected. Since the right to a name is a personality right, it is also protected by Articles 23 to 25 of the Turkish Civil Code, which provide protection in respect of infringements of personality rights.[22] However, owing to the ease with which a name may be attacked by third parties and to its importance, it was intended to be specifically protected under Articles 26 and 27 of the Turkish Civil Code. Under those articles, a person whose name is unlawfully used by another may request the court to put an end to this situation and, where certain special conditions and the conditions of fault are met, to award pecuniary and non-pecuniary damages.[23]
Whereas the inclusion of the first name and surname of a natural person is mandatory in the trade names of sole traders[24] , in company names the first names and surnames of natural persons may be included as an addition[25] . If the first name and surname of a natural person are included in the trade name, the merchant may also rely on the provisions on the protection of names, separately from the special protections of the Turkish Commercial Code.[26]
Decree-Law No. 556 on the Protection of Trade Marks contains special provisions relating to the protection of trade names. The third paragraph of Article 8 of that Decree-Law provides that the right holder may object to the registration of an unregistered sign or trade mark in the name of another. For this objection to be made, the right must have been acquired in respect of this sign before the priority date stated in the application for registration of the trade mark or before the date of the application for registration of the trade mark, and this right must give the right holder the possibility of prohibiting the use of a later trade mark.[27] In this case, Decree-Law No. 556 grants precedence to the right acquired under the unfair competition provisions by the person who first uses a sign or trade mark. Relying on this precedence, the right holder is granted the possibility of objecting to the registration of an identical or similar sign or trade mark in the name of another person. However, for this provision to apply, the person claiming to be the right holder bears the burden of proving that, before the priority date or the application for registration, he or she had a right worthy of legal protection over the trade mark or sign in question and a right arising from unregistered use.[28]
A merchant who owns a trade name will also be able to benefit from international protection provisions, in addition to the provisions of the Turkish Commercial Code, the Turkish Civil Code and Decree-Law No. 556. This is because Türkiye is a party to the Paris Convention for the Protection of Industrial Property of 1883. Under Article 8 of the Convention, Türkiye is subject to its protection provisions. Article 8 of the Convention provides: “A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trade mark.” The protection afforded to the names of natural and legal persons who are nationals of the countries party to this Convention is limited. A right holder of foreign nationality seeking protection of the trade name in Türkiye bears the burden of proving that the trade name is also widely known in Türkiye, that customers will be confused as a result of this use, and that he or she will be exposed to damage or a risk of damage. For this reason, owners of trade names that do not have this degree of recognition will not be able to allege infringement on the ground that their trade names have been registered in Türkiye in the names of others.[29]
“A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a factory or trade mark.”
Paris Convention for the Protection of Industrial Property, Art. 8
The Turkish Commercial Code lays down criminal sanctions against those who act contrary to the provisions on the choice, formation, use and registration of trade names and the making of the necessary additions, and to the provisions on the transfer of trade names. The first paragraph of Article 51 of the Turkish Commercial Code provides that all courts, public officials, chambers of commerce and industry, notaries and the Turkish Patent Institute, if in the course of their duties they learn that a trade name has not been registered or has been registered or used contrary to the provisions of the law, are obliged to notify the competent authorities of the situation. The second and third paragraphs of the article set out the criminal sanctions to be applied in the event of non-compliance with the provisions on trade names. These sanctions are imprisonment, judicial fines and administrative fines. Where the provisions on the use of branch additions, the obligation to use the trade name and the obligation to make a distinguishing addition are breached, an administrative fine of two thousand Turkish Lira is imposed. Those who transfer, acquire and use a trade name contrary to Article 49 of the Turkish Commercial Code, and those who breach the provision of Article 46 of the Turkish Commercial Code concerning additions to trade names, will be sentenced to imprisonment of three months to two years or a judicial fine.[30] Articles 62 and 63 of the Turkish Commercial Code lay down criminal sanctions within the framework of criminal liability where the trade name is protected under the unfair competition provisions.[31]
[1] KAYIHAN, Şaban; Ticari İşletme Hukuku, 3rd ed., 2015, Ankara, p. 133
[2] AYHAN, Rıza; Ticari İşletme Hukuku, Genel Esaslar, 8th ed., 2015, Ankara, p. 304
[3] KAYAR, İsmail; Ticari İşletme Hukuku, 10th ed., 2015, Ankara, p. 230
[4] KARAYALÇIN, Yaşar; Ticaret Hukuku Dersleri, Ankara, 1968, p. 374. POROY, Reha; Ticari İşletme Hukuku, 14th ed., 2012, Istanbul
[5] KAYAR, İsmail; Ticari İşletme Hukuku, 10th ed., 2015, Ankara, p. 231
[6] ÜLGEN, Hüseyin; Ticari İşletme Hukuku, 4th ed., 2015, Istanbul, p. 420
[7] AYHAN, Rıza; Ticari İşletme Hukuku, Genel Esaslar, 8th ed., 2015, Ankara, p. 305
[8] KORKMAZ, Şerife; Ticaret Unvanının Korunması ve Marka İlişkisi, 2010, Ankara, p. 46
[9] ÜLGEN, Hüseyin; Ticari İşletme Hukuku, 4th ed., 2015, Istanbul, p. 423
[10] AYHAN, Rıza; Ticari İşletme Hukuku, Genel Esaslar, 8th ed., 2015, Ankara, p. 309
[11] POROY, Reha; Ticari İşletme Hukuku, 44th ed., 2012, Istanbul, p. 404
[12] KARAHAN, Sami; Ticari İşletme Hukuku, 26th ed., 2014, Istanbul, p. 161
[13] ÜLGEN, Hüseyin; Ticari İşletme Hukuku, 4th ed., 2015, Istanbul, p. 425
[14] ARKAN, Sabih; Ticari İşletme Hukuku, 15th ed., 2011, Ankara, p. 266
[15] AYHAN, Rıza; Ticari İşletme Hukuku, Genel Esaslar, 8th ed., 2015, Ankara, p. 310
[16] KARAYALÇIN, Yaşar; Ticaret Hukuku Dersleri, Ankara, 1968, p. 396
[17] KORKMAZ, Şerife; Ticaret Unvanının Korunması ve Marka İlişkisi, 2010, Ankara, p. 46
[18] ÇOBAN, S. Özlem; Türk Hukukunda Marka ve Ticaret Unvanı Arasındaki İlişki Dolayısıyla Ortaya Çıkan Sorunlar ve Çözüm Önerileri, 2014, Ankara, p. 43
[19] KORKMAZ, Şerife; Ticaret Unvanının Korunması ve Marka İlişkisi, 2010, Ankara, p. 54
[20] KARAHAN, Sami; Ticari İşletme Hukuku, 26th ed., 2014, Istanbul, p. 202
[21] ÇAĞLAR, Hayrettin/ÖZDAMAR, Mehmet; Ticaret Unvanının Korunması, Selçuk Üniversitesi Hukuk Fakültesi Dergisi, Vol. 14, No. 2, 2006, p. 129
[22] İMRE, Zahit; Medeni Hukuka Giriş, 3rd ed., Istanbul, 1980
[23] AKİPEK, Jale/AKINTÜRK, Turgut; Türk Medeni Hukuku, Vol. 1, 5th ed., Istanbul 2004, p. 454
[24] Article 41 of Turkish Commercial Code No. 6102
[25] Article 43 of Turkish Commercial Code No. 6102
[26] KORKMAZ, Şerife; Ticaret Unvanının Korunması ve Marka İlişkisi, 2010, Ankara, p. 58
[27] AKİPEK, Jale/AKINTÜRK, Turgut; Türk Medeni Hukuku, Vol. 1, 5th ed., Istanbul 2004, p. 453
[28] ÇAĞLAR, Hayrettin/ÖZDAMAR, Mehmet; Ticaret Unvanının Korunması, Selçuk Üniversitesi Hukuk Fakültesi Dergisi, Vol. 14, No. 2, 2006, p. 135
[29] KARAHAN, Sami; Ticari İşletme Hukuku, 26th ed., 2014, Istanbul, p. 162
[30] KAYAR, İsmail; Ticari İşletme Hukuku, 10th ed., 2015, Ankara, p. 232
[31] ÜLGEN, Hüseyin; Ticari İşletme Hukuku, 4th ed., 2015, Istanbul, p. 429
Related legislation: Turkish Commercial Code No. 6102 (mevzuat.gov.tr)
Registration is not constitutive for a trade name; an unregistered name may also be used. However, the special protection in TTK Art. 52 applies only to names duly registered and published; an unregistered name may benefit from the general provisions on unfair competition.
According to the article, the owner of the name may request a declaration that the use is contrary to commercial good faith, prohibition of the unlawful use, amendment or deletion of the unlawfully registered name, removal of the material situation resulting from the infringement, pecuniary and non-pecuniary damages, and publication of the judgment.
No. According to the article, in an action to prohibit unlawful use the respondent need not be at fault. A claim for pecuniary damages, however, requires fault on the part of the infringer, a causal link and actual damage.
The article states that if a merchant remains silent for an unjustifiable period, they may, within the framework of TMK Art. 2, lose the right to sue a person who subsequently uses the name in good faith (loss of rights through acquiescence); this requires the subsequent user to be in good faith.
According to the article, an unregistered name cannot benefit from the special protection in TTK Art. 52; it is protected by the provisions on unfair competition. If the trade name contains the first name and surname of a natural person, the TMK provisions on protection of names may also be relied upon.
Under TTK Art. 60, the actions listed in TTK Art. 56 are subject to a limitation period of one year from the date on which the right holder learned that the right arose and in any event three years from the date on which it arose. If the act is also a crime subject to a longer criminal limitation period, that period also applies to civil actions.
According to the article, under Article 8 of the Paris Convention, to which Turkey is a party, a trade name is protected without any registration requirement; however, a foreign right holder seeking protection must prove that the name is widely known in Turkey, that confusion will arise, and that it faces damage or a risk of damage.
Consultation request
At UTU Hukuk Danışmanlık, we provide legal representation and advisory services in the field of commercial law.
Fill in the form and we will call you. You can also contact us directly: