Bad-Faith Trademark Application

A bad-faith trademark application is one filed not to use the sign genuinely, but to block another party, demand money or exploit its efforts. Under IPL Article 6(9), applications filed in bad faith are refused upon opposition. If registered, bad faith is a ground for trademark invalidity.

Typical Examples

• A foreign brand being registered in Turkey by an unrelated person before the brand enters the market
• A former distributor, agent or business partner registering the represented brand in its own name
• Registering a competitor’s unregistered sign to block the competitor
• Mass filings without use, to sell or license the marks for a fee

Indicators of Bad Faith

• A prior business relationship or correspondence between the parties
• Timing that coincides with the right holder’s preparations to enter the market
• Similar filings by the applicant for other brands
• Offers to assign the mark for payment after filing
• A distinctive and original sign, which makes coincidence less likely

Remedies

• Trademark opposition (within two months of publication)
• Invalidity action in court: the five-year acquiescence defence does not apply to bad-faith registrations (IPL Article 25(6)).
• Where there is a contract, claims for breach of contract and unfair competition
• Opposition under IPL Article 6(2) against unauthorised filings by agents or representatives

The most effective prevention is to file in a country before entering its market and to include a prohibition on trademark filings in distribution and agency agreements.