Turkish Competition Authority Mandates Cancellation of 3D Trademark, Setting Precedent for IP and Antitrust Law

On August 1, 2024, the Turkish Competition Authority (TCA) issued a decision, numbered 24-32/758-319, that is expected to have lasting implications for the relationship between intellectual property (IP) and competition law in Turkey. The TCA concluded that the economic entity under investigation, referred to as the Right Owner, had abused its dominant position by using its registered three-dimensional (3D) marks to exclude competitors from the market. As a result, the Authority imposed a series of sanctions, including the unprecedented order to withdraw the registered 3D trademark and related design rights.

The case involved the Right Owner’s registration of a packaging shape as both a trademark and a design before the Turkish Patent and Trademark Office (TÜRKPATENT). The TCA found that registering the shape of a product—where patent or design protection is inherently time-limited—as a trademark could enable the holder to secure an indefinite monopoly through renewals. The Authority characterized this as a strategy aimed at monopolization.

In its analysis, the TCA relied on the concept of circumvention of the law (fraus legis). According to the decision, the trademark registrations were not used to indicate the commercial origin of goods, but rather to perpetuate exclusive rights over the product shape and prevent competitors from entering the market. The TCA noted that the Right Owner had sent cease-and-desist letters to competitors based on both registered and pending, unregistered applications, and had imposed obligations on customers to use only its packaging—a practice described as de facto tying and an abuse of rights.

The Authority concluded that the rights acquired under the Industrial Property Code (IP Code) were being used as a tool to circumvent competition law. Given the gravity of the infringement, the TCA did not limit itself to imposing an administrative monetary fine. Instead, it ordered a structural remedy: the withdrawal of the 3D trademark registration, the related design registration, and all pending 3D mark applications that had not yet been registered.

This marks the first known instance in Turkish competition law where a registered IP right has been ordered withdrawn as a structural remedy. Traditionally, competition law interventions have focused on regulating the exercise of IP rights rather than their existence. In this case, however, the TCA identified the registration itself as the main factor sustaining the violation and chose to eliminate the right entirely.

A particularly controversial aspect of the decision is the TCA’s intervention in matters typically reserved for TÜRKPATENT and specialized IP courts. One of the 3D marks at issue, dating back to 2014, had previously been definitively ruled registrable as a trademark by the Ankara 2nd IP Court and the 11th Civil Chamber of the Court of Cassation.

The TCA’s move to compel the cancellation of a trademark that had been conclusively deemed registrable by specialized courts, on the grounds that it created an unfair monopoly, has raised concerns about legal certainty. This approach suggests that any 3D trademark could potentially be stripped of protection through a competition law investigation, regardless of prior judicial decisions. Even in the case-law of the Court of Justice of the European Union, interventions have generally taken the form of compulsory licensing in exceptional circumstances, rather than outright revocation of the right.

The enforcement of the TCA’s decision, which requires the waiver of registered IP rights, carries the risk of irreparable or irrecoverable harm. Legal uncertainty may intensify during judicial review of the administrative act. If the Council of State were to annul the TCA’s decision in the future, the fate of trademarks that were mandatorily withdrawn would remain unresolved, as Turkish trademark law does not provide for the automatic reinstatement of withdrawn marks.

During the period of judicial proceedings, the distinctiveness of the mark could be eroded, and the device may become generic. If third parties use similar shapes while the trademark is removed from the register, it is unclear whether the trademark owner could claim compensation for resulting damages. Even if a future court decision restores the trademark from a legal standpoint, the commercial and legal consequences in the interim could be irreversible.

The TCA’s decision serves as a significant warning to trademark owners, making clear that a trademark registration certificate does not provide immunity from competition law scrutiny. While the stated goal of the TCA is to restore competition, the method of cancelling rights directly affects the core of property rights. The decision raises concerns that such radical interventions should be reserved for final judicial rulings, not administrative decisions, to uphold the rule of law and maintain confidence in the IP system.

The ruling underscores the delicate balance between protecting competition and safeguarding intellectual property rights. The outcome of judicial review and the broader impact on Turkish IP and competition law remain to be seen.