This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.
Session 3: Well-Known Trademarks
Court of Cassation, Grand Chamber, Türkiye [2023]: Case No. E. 2023/11-83, K. 2023/7
Date of judgment: February 1, 2023
Issuing authority: Court of Cassation
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Civil)
Subject matter: Trademarks
Plaintiff: S. OLIVER Bernd Freier GmbH & Co. Kg
Defendant: Süleyman Aydın Textile Products Industry and Trade Co. Ltd.
Keywords: Well-known trademarks, reputed marks, well-known trademark register, evidentiary standard, dilution
Basic facts: The case concerned a dispute between an international company (plaintiff), established in 1969 and owner of internationally recognized trademarks, and a Turkish company (defendant) that had registered several similar signs such as “S’OVER” and its variations in different classes. The plaintiff argued that the defendant had registered several trademarks in bad faith that were confusingly similar to its earlier and internationally well-known mark “S.OLİVER”. Claims included invalidity, infringement, unfair competition, injunctive relief, and declaratory ruling that “S.OLİVER” was a well-known mark. The trial court accepted the action in full, invalidated the defendant’s registrations on the grounds of bad faith, and declared the plaintiff’s mark to be well-known.
On appeal, the 11th Civil Chamber of the Court of Cassation partly reversed the decision. While it agreed with certain findings, it held that the use of a registered trademark could not amount to infringement until invalidity became final, and that declaration of a mark as well-known cannot be sought directly from the courts without first applying to TÜRKPATENT (the Turkish Patent and Trademark Office). The trial court resisted this reversal, and after two rounds of resistance, the matter was referred to the Grand Chamber of the Court of Cassation for final resolution.
In these regards, the Court was asked two questions: First, can a court issue a separate ruling in its judgment declaring a mark to be “well-known”, and second must a claimant first apply to TÜRKPATENT before a court can consider such declaration?
Held: The Grand Chamber held that well-known status is not a permanent legal status but a factual circumstance that must be proven in each individual case. The Grand Chamber underlined that the so-called “well-known trademark register” maintained by TÜRKPATENT has no binding legal effect, as the Office lacks statutory authority to maintain such a register. Even if a mark appears in this register, it cannot replace the evidentiary burden of the party relying on well-known status. First-instance and appellate courts must assess well-known status of the mark based on evidence submitted in each individual case. Furthermore, the Grand Chamber held that recognition of well-known status cannot be the object of an independent action or a binding declaration in the operative part of a judgment but may only be assessed incidentally in the context of a dispute.
Relevant holdings in relation to well-known trademarks: The decision provides important clarifications on Turkish law regarding the protection of well-known marks. First, well-known status must always be demonstrated through concrete evidence such as surveys, sales data, advertising records, or previous judicial or administrative decisions. Second, well-knownness is dynamic and changes over time; it cannot be presumed once and for all. Third, the scope of protection for reputed marks extends beyond identical or similar goods, covering also dissimilar goods or services where unfair advantage, damage to reputation, or dilution of distinctiveness may occur. Most importantly, the ruling reshaped Turkish practice by rejecting reliance on TÜRKPATENT’s well-known trademark register as a substitute for proof, and by holding that courts may not issue declaratory rulings recognizing well-known status. Instead, recognition of well-known status may only be considered incidentally in the context of disputes, such as those involving confusion, dilution, or unfair advantage.
Relevant legislation:
- Decree-Law No. 556 on the Protection of Trademarks, Articles 7, 8/4, 42, 44
- Industrial Property Code (6769), Articles 5, 6(4), 6(5), 27
- Paris Convention, Article 6bis
- TRIPS Agreement, Article 16(2)–(3)