"Coexistence" Doctrine Inapplicable Where Parties Have Opposed Each Other's Applications — Ankara 1st IP Court 2025/72

Article 5(3) of Turkey's Industrial Property Law No. 6769 introduced the doctrine of trademark coexistence ("birlikte var olma"): where a later mark has been used alongside an earlier registered mark for many years, peacefully and without objection, the later mark may be deemed to have acquired distinctiveness through use and may therefore be registered. The conditions, however, are strict. Ankara 1st IP Court's decision 2025/72 illustrates why they were not met in this case.

Procedural History

The action was filed in 2014. The plaintiff, owner of registrations in classes 1–45, challenged the registration of a similar mark in class 44 (medical services) that TÜRKPATENT had allowed despite the plaintiff's opposition. The proceedings went through multiple rounds:

• 2015: First-instance court accepted the claim.
• 2019: Court of Cassation reversed — directed the court to examine whether the coexistence doctrine applied.
• 2021: On remand, the court rejected the claim — found that the parties had peacefully coexisted in medical services and that the defendant's mark had acquired distinctiveness through use.
• 2024: Court of Cassation reversed again — the coexistence doctrine's conditions were not satisfied.

Why Coexistence Did Not Apply

According to the Court of Cassation, the doctrine requires three cumulative conditions:

1. Long-term, continuous and intensive use of the later mark;
2. The later mark having acquired distinctiveness through strong promotion;
3. The registered mark owner having remained passive — without objection — until the later mark's application date.

Here, both parties had filed simultaneous oppositions against each other's applications throughout the administrative proceedings. This active mutual opposition is fundamentally incompatible with the peaceful, unchallenged coexistence that the doctrine requires. The appellate court also found that the contradictory expert report had produced a contradictory judgment.

Final Decision

Complying with the second reversal, the first-instance court found visual, phonetic and conceptual similarity between the marks; overlapping goods and services in class 44; a likelihood of confusion; and an absence of the conditions for coexistence. It invalidated the TÜRKPATENT decision and declared the defendant's trademark invalid, ordering its cancellation from the register.

Commentary

This decade-long case is a valuable illustration of when the coexistence doctrine will not rescue a later mark. Peaceful coexistence means exactly that — peace. A history of mutual oppositions destroys the factual premise the doctrine rests on. For trademark owners, the lesson is equally clear: consistent, timely opposition to confusingly similar applications is not merely a right, it is a strategic necessity for preserving the registered mark's enforceability.