An Evaluation on the Trademark Registration of Work Titles

Article 83 of Law No. 5846 on Intellectual and Artistic Works (“LIAW”) stipulates that the names of works can be protected independently of the works themselves under the provisions on unfair competition. Our assessment of this protection is discussed in our article, 'Protection of Work Titles'

An important aspect of work title protection is their registration as trademarks. In practice, it is common for elements of cinematographic works, such as characters and locations, as well as literary works like novels, stories, and poems, and even song or composition titles, to be registered as trademarks. This benefits both the trademark owner and other commercial entities through licensing agreements, while also allowing consumers to experience the work in various forms. For instance, characters from popular animated films are often used in commercial products like toys, clothing, stationery, textiles, magazines, and other printed materials. In such cases, registering the work title for merchandise, as well as magazines and printed materials, provides a significant advantage in the production and marketing of these licensed products.

However, the registration of the work title as a trademark does not provide direct legal protection to the work itself or its elements. For example, even if the name of a song is registered as a trademark, the use of this name in another song by a different artist may not infringe on the originality of the work. Therefore, when the work title is registered as a trademark, it only offers protection within the scope of Trademark Law, and at this point, understanding the concept of 'trademark use' becomes essential.

This debate becomes particularly significant when the work title is registered under 'film, television, and radio program production services' in Class 41 and 'motion pictures, series, and video music clips recorded on optical and electronic media' in Class 09. This is because the service type in Class 41 primarily refers to the production service itself. In this context, trademark use may only be considered if the work title is used in connection with the name of a production company or related production activities. Similarly, regarding the category of goods in Class 09, the registered trademark protects not the content of the work but the physical product recorded on optical and electronic media itself. Therefore, in our opinion, the protection of the work title as a trademark would not constitute trademark use in this case either.

In the disputes before the courts, the issue of whether the use of a work name can be considered as trademark use is evaluated separately according to the circumstances of the case.

For example, within the scope of the decision of the 16th Civil Chamber of the Istanbul Regional Court of Appeals (RcA) No. E. 2017/2449 K. 2019/2091, dated 11.10.2019, the use of the name “Diriliş/Resurrection” was assessed in this regard within the lawsuit filed by the plaintiff against the defendant’s use of the title as a book name based on its registered trademarks and the rights to the series it produced, on the grounds of trademark and copyright infringement as well as unfair competition. In the relevant dispute, the Court clearly stated that although the plaintiff's trademarks are registered in Class 41 under "book, magazine, printing, and publishing services," the term  “Resurrection" does not constitute trademark use that distinguishes the book commodity it appears on from other entrepreneurs' books and publishing services. The Court also clarified that the defendant did not use the term in a way that could be associated with a particular good or service as a trademark.

Similarly, in the decision of the 11th Civil Chamber of the Court of Cassation (CoC) dated 18.04.2017, numbered E. 2015/14472 K. 2017/2229, a lawsuit was filed to annul the Turkish Patent and Trademark Office’s rejection of the plaintiff's objections to the defendant's trademark application for the title of a book published by the plaintiff between 2009 and 2014. The plaintiff claimed to be the first to use the relevant phrase and the owner of the sign under copyright and industrial property rights. However, the Court concluded that the plaintiff’s use could not be considered as “trademark use” under Classes 16 and 41 for goods and services. The work belonged to a different author, and the plaintiff failed to provide evidence of holding the material rights or the authorization to use the work. Even if the plaintiff were the owner of the material rights, the defendant's use was not considered an infringement of rights related to processing, reproduction, or distribution as the Court dismissed the case, noting that the phrase had been used as the title of hundreds of works, was an anecdote, and was widely used. As a result, it could not be considered original or distinctive, and unfair competition protection was not applicable. The decision was upheld by the CoC.

In our opinion, this is a natural consequence of the function of trademark protection, which, among other things, aims to distinguish the goods/services of one undertaking from those of others, allowing the average consumer to recognize the source of the relevant goods/services and thus differentiate them from other offerings. Trademark protection, by its very nature, requires the existence of use specific to a particular good/service. In contrast, copyright protection primarily seeks to safeguard and reward the creative activity of the human mind, encouraging further creativity. As such, creations that are embodied, reflect the personality of the creator, and fall within the categories specified in the LIAW are protected as works. Unlike trademark protection, these works do not need to be specific to a certain good/service. In this context, although there may be situations where both types of protection coexist in a single case, the difference between their purposes and functions becomes clearly evident. The use of a title as a work and as a trademark can thus be distinguished from one another.