The popularity of e-commerce websites has been growing in recent years. It is absolute that the reason for this popularity is that the consumer may reach all the same and different kind of goods provided by different companies. Furthermore, from the perspective of companies, these kinds of websites provide the small or medium sized companies with the possibility to reach the rest of the world.1 In Turkey, the figures are also quite interesting that the volume of e-commerce is increased 37% and thus reaching 47 million Turkish Liras last year2 and it is expected that the volume of e-commerce websites will be doubled in 20193. On the other hand, even though the e commerce websites are valid assets for the economy, their position in terms of trademark protection is a controversial topic in Turkey.
According to the Turkish classification system, the classes from 1 to 34 were designated for the goods whereas the classes from 35 to 45 were designated for the services. Therefore, the retail services of goods will fall into class 35. For instance, if the producer X, which produces watches, intends to obtain a trademark registration for the watches, the trademark shall be filed in class 14. On the other hand, if this producer is also willing to obtain a registration for the retail services of these watches; then the class 35 shall be added to the coverage of trademark application. It should be borne in mind that obtaining a registration for the goods also indirectly provides to the right of use their trademark for the retail services for the subject watches.
However, as it has been mentioned in the beginning of the paper, for the full trademark protection, it is important to identify the exact classification of e-commerce websites which provides a retail services for different trademarks of companies that are related with the provider or not. As the failure to provide full protection may cause a fatal right of loss to the owners. The reason why this subject is controversial is that; the e-commerce website owner which is Y, for instance, does not produce its own products but provides a website that other sellers can sell their products through the website.
To explain in more details, the companies4 which produce its own products and sell these products through its website shall obtain a registration in subclass 35.05, namely ''the bringing together, for the benefit of other, of a variety of goods5, enabling customers to conveniently view and purchase those goods (such services may be provided by means of retail, wholesale stores, electronic media, catalogs and similar other methods)''6 in Turkish Classification System. However, the companies7 which are providers of an e-commerce website for different companies to give a chance them to sell products, shall obtain a registration in subclass 35.01, namely ''services related to advertisement, marketing and public relations, organization of exhibitions and fairs for commercial and advertisement purposes, design services for advertisement purposes; provision of online marketplaces (website) for buyers and sellers''8 in Turkish Classification System.
As stated above, the company Y does not produce and sell its own products on its website, it provides a service of providing e-commerce website for other companies to sell products. On the other hand, in some cases, the e-commerce website provider9 may also sell its own products under the same trademark. In this scenario, adding the subclass of 35.05 into the coverage of trademark application would be beneficial for the protection. For instance;
a- If Amazon provides e-commerce website service for different companies to give a chance them to sell their products, the correct class will be 35.0110 for the registration.
b- If Amazon produces smart watches, in class 0911, and provides the retail services of smart watches regardless of on online or at the store, the correct class will be class 09 and obtaining the class 35.0512 (in respect of class 09) will be beneficial for the trademark protection.
c- If Amazon does not produce smart watches, in class 09, and provides the retail services of smart watches of third parties regardless of on online or at the store, then the correct class will be 35.05 (in respect of class 09) for the registration.
On the other side of the medallion, another question that pops up is whether it can also be applied to the companies13 which provide e-commerce website for the service providers. The number of this kind of companies in Turkey is undeniable, but are they registered in the correct classes to have a proper trademark protection?
Footnotes
1 Alibaba platforms is 'open sesame' which opens a doorway to fortune for small businesses. 'Alibaba: How Did the Chinese Company Gets Its Name?' (https://abcnews.go.com/Business/alibaba-chinese-company/story?id=25591454).
2 'Turkiye e-Ticaret 2017 Pazar Buyuklugu' (http://www.tubisad.org.tr/tr/images/pdf/tubisad_2018_eticaret_sunum_tr.pdf).
3 'TUSIAD, Turkiye e-ticaret pazarina dair kapsamli raporunu yayinladi' (https://webrazzi.com/2017/04/25/tusiadturkiye-e-ticaret-pazarina-dair-kapsamli-raporunu-yayinladi/ ).
4 For instance, Apple, Samsung, Nespresso, Amazon.
5 The list of goods will be indicated here.
6 Turkish Classification 2017 (www.turkpatent.gov.tr/TURKPATENT/getFile?fileId=ACF64416-D5F1-46A3-B75A7C1899D18291).
7 For instance, Amazon, eBay, Rakuten, Alibaba.
8 Turkish Classification 2017 (www.turkpatent.gov.tr/TURKPATENT/getFile?fileId=ACF64416-D5F1-46A3-B75A7C1899D18291 ).
9 For instance, Amazon. 10 Class 35.01: Provision of online marketplaces (website) for buyers and sellers.
11 Class 09.02: Smart watches.
12 Class 35.05: The bringing together, for the benefit of other, of a variety of smart watches, enabling customers to conveniently view and purchase those goods (such services may be provided by means of retail, wholesale stores, electronic media, catalogs and similar other methods).
13 For instance, HomeAdvisor (ServiceMagic).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
