How Do You Protect Your Trademark Before Working with a Foreign Distributor?

If your foreign distributor registers your trademark in its own name in that country, it becomes the legal owner of the mark in that market: it can object to the entry of your goods, to your marketplace listings and to your working with a new distributor. Article 6septies of the Paris Convention allows opposition, cancellation and, if the law of the country allows it, a request for assignment; but the procedure and time limits depend on each country's own law. Distributor trademark protection is therefore a question of sequence before it is a litigation strategy: register in the target country first, then sign the contract.

Below: where the risk comes from, the provisions you can rely on abroad and in Turkey, the trademark clauses a distribution agreement needs, and a table matching risks to timing.

Why Is Trademark Protection Obtained Country by Country?

Because trademark rights are territorial: a registration protects the mark only in the country that granted it. Paris Convention Art. 6(1) leaves the conditions for filing and registration of trademarks to each country's domestic legislation, and Art. 6(3) states that a mark duly registered in one country is independent of the marks registered in the other countries, including the country of origin.

For an exporter, this is clear: a Turkish registration does not automatically stop someone who files before you in the target country. In many countries priority goes to the first to file rather than the first to use; in some countries prior use also creates rights, and the outcome varies with local law. We explained step by step how to search the target country's register in our guide to searching trademarks abroad.

The distributor is best placed to see this gap. It knows your trademark, products, prices and the customers in that market better than you do, and it knows the local filing procedure.

What Happens If the Distributor Registers the Trademark in Its Own Name?

The distributor becomes the registered owner of the mark in that country; this may go unnoticed while the relationship goes well, but once it breaks down it becomes a bargaining chip. Typical consequences:

• Blocking a new distributor: When you terminate and turn to another company, the former distributor can object to its sales as the registered owner.
• Blocking your own goods: In some countries the registered owner may try to stop the goods you ship through customs or marketplace complaint mechanisms.
• An offer to sell: Being asked to pay a price to have the mark "assigned" to you is the most common form of this scenario.
• Conflict when extending through Madrid: When you later designate that country through the Madrid System, you may receive a provisional refusal because of the earlier registration; we covered how that process works in our guide to Madrid provisional refusals.

Not every unauthorized registration is in bad faith; the distributor may have filed in good faith to protect the brand against counterfeiters there. So the legal assessment turns on justification, yet even a good-faith filing creates a right that can later be used against you.

The Provision You Can Rely On Abroad: Paris Convention Art. 6septies

Paris Convention Art. 6septies deals with the case where the agent or representative of the person who is the proprietor of a mark in one country applies, without such proprietor's authorization, for the registration of the mark in its own name in one of the countries of the Paris Union. In that situation the proprietor has three options:

1. Opposition: Opposing the application.
2. Cancellation or assignment: Requesting cancellation of the registration or, if the law of the country allows it, assignment of the registration to the proprietor.
3. Preventing use: Opposing use that the proprietor has not authorized (Art. 6septies(2)).

The provision has two important limits. First, these options are not available if the agent or representative justifies its action. Second, Art. 6septies(3) allows national legislation to provide an equitable time limit within which these rights must be exercised. In other words, the time limit, the competent authority and whether assignment is possible at all vary from country to country; some legal systems allow only cancellation, while others open the route to direct assignment.

Two conditions apply: the proprietor must own the mark in a country of the Paris Union, and the unauthorized application must have been filed in a country of the Union. So the first step is to check in WIPO resources whether the target country is party to the Paris Convention. In a country that is not a party, the outcome is left entirely to that country's domestic law, and registering in advance becomes even more important there.

In practice, the case is only as strong as the evidence. The contract showing the relationship, order and invoice records, correspondence showing the distributor learned of the mark from you, and your ownership of the mark before the filing there are what a local attorney will need most. Translations of foreign-language documents and a chronological summary speed things up.

The Turkish Equivalent: SMK Art. 6(2) and Art. 10

If the scenario plays out in Turkey, with the Turkish distributor of a foreign brand filing the mark in its own name, Industrial Property Law No. 6769 (SMK) provides two tools on the same logic. An application filed by a commercial agent or representative without authorization and without a justified reason is refused upon the trademark owner's opposition (Art. 6(2)). If the mark has already been registered, the owner can ask the court to prohibit its use and to order the registration assigned to the owner (Art. 10).

These provisions are also a good guide to how your partner abroad is likely to be viewed: the law specially protects a relationship built on the owner's trust. We covered the general framework of bad faith in Turkey, and how to build evidence for it, in detail in our article on bad-faith trademark filings.

The Order of Prevention: Register Before You Sign

The most effective safeguard is to have filed in the target country before the distributor ever learns of the mark. You can sue later, but a registration obtained in advance prevents the dispute altogether. The order we recommend:

1. Consolidate your Turkish filing: If you will use Madrid, the international application is based on your Turkish application or registration; build its scope so that it covers your export products.
2. Run a preliminary search in the target country: Check whether an identical or similar application exists in the name of the distributor or anyone else.
3. Choose the route: An international application if the target country is a Madrid member, a national application if it is not; the current list is in our article on Madrid Protocol member countries.
4. Use the priority period: Under Paris Convention Art. 4C(1), the priority period for trademarks is 6 months from the first filing; details are in our guide to the right of priority.
5. Write the application number into the contract: The contract should state clearly which trademarks belong to you, and under which numbers.
6. Share products and logos afterward: Catalogs, packaging and new product names should be shared only after filing.

Balance the number of countries against the budget according to your sales territories when planning international trademark registration.

Trademark Clauses a Distribution Agreement Should Contain

A contract does not replace registration but complements it, and in a dispute it is the first proof of the nature of the relationship. Use the following clauses as a checklist:

• Acknowledgment of ownership: The distributor expressly acknowledges that the manufacturer is the sole owner of the trademarks, logos and packaging artwork.
• Ban on filings and domain names: The distributor will not apply for the mark or anything similar in its own name in any country, and will not register domain names or social media accounts containing the mark; any that have been opened belong to you.
• Ban on similar signs: No use of a similar mark during the agreement and for a set period after it ends.
• Assignment obligation: An undertaking to assign to you, immediately and free of charge, any application or registration made in breach of the ban.
• Rules of use and quality: How the mark is to be used, which materials require approval, and quality standards.
• Monitoring and notification: An obligation to report counterfeits and similar filings in the market to you.
• Termination: Handover of stock, advertising materials, domain names and accounts; the end date for use of the mark.
• Dispute resolution: Governing law, competent court or arbitration.

Which law governs the agreement, and how these clauses are enforced locally, should be assessed with a lawyer in that country. In relationships where use of the mark is permitted, license provisions also come into play.

Risk, Safeguard and Timing Table

The table below matches the most common risks with the safeguard to take and the stage at which to take it:

Practical Points: Customs, Marketplaces and Packaging

In many countries, the registered owner is also the one who can use additional protection mechanisms based on the registration. Customs recordation, marketplace brand protection programs and local import permits often run in the name of the owner on the register. The procedures for these mechanisms vary from country to country; what they have in common is that the record must be in your name.

In some countries, the local importer or distributor may have to handle import or product registration formalities in its own name. If so, set out in writing who holds the product registration, how it is transferred when the agreement ends, and that it is kept separate from the trademark registration. We discussed similar risks around contract manufacturing and packaging rights in our article on trademark and packaging rights in contract manufacturing.

If You Have Spotted an Unauthorized Filing: First Steps

If the application has already been filed, the priority is to assemble the evidence and local legal advice without missing deadlines or tipping off the other side too early. A hasty warning letter or termination notice can give the other side time to strengthen its application or file in other countries. In summary:

1. Establish the status of the record: Is it an application or a registration; has it been published, and is the opposition period running? Keep a dated printout of the register entry.
2. Search the other countries: Check whether the same person has filed other applications in neighboring markets or through Madrid.
3. Build the evidence file: The contract, orders, invoices, emails sending logos and catalogs, and records of trade fairs and promotions.
4. Establish the deadline with a local attorney: Find out in writing which route is open (opposition, cancellation or assignment) and what the last day is.
5. File your own application: Even if there is an obstacle, your own application can help protect your place in line once the dispute is resolved; assess this with the local attorney.
6. Plan your communication: Written notice to the distributor should be sent after legal action has begun, in language that reserves your rights.

Common Mistakes

• Thinking "my Turkish registration is enough": A Turkish registration does not provide protection abroad.
• Leaving registration to the distributor: Having the application filed in the distributor's name because "it knows the local procedure" is creating the problem with your own hands.
• Protecting only the main brand: Logos, product line names and versions translated or transliterated into the local language are left exposed.
• Leaving the contract to email exchanges: Without a written agreement, proving the representation relationship becomes harder.
• Giving notice of termination without checking the register: Not checking the target country's register before the termination letter gives the other side time.

Fictional Example: Kavrak Makine's Gulf Distributor

Fictional example: "Kavrak Makine", a manufacturer of agricultural machinery in Konya, starts working with a distributor in a Gulf country. It has a registered trademark in Turkey but no application in the target country. Two years later a pricing dispute arises; before terminating the agreement, Kavrak has the local register checked and finds that the distributor filed the trademark in its own name a year earlier.

Kavrak holds a signed distribution agreement, order records and emails showing the distributor received the logo from Kavrak. The local attorney sets the route and deadline under Paris Convention Art. 6septies and that country's national law; the termination letter is sent after this action has started. In the same period, Kavrak also files a Madrid application for its other target countries. Had the agreement contained a ban on filings and an assignment undertaking, the matter could have been closed much sooner.

Before You Sign with a Distributor

Share your target countries, the distributor's territory and your Turkish application or registration number, and we can work out together where to file, by which route and in what order. Webx handles international applications and local attorney coordination in the necessary countries through a single file, and helps you align the trademark side of your contract with this plan.

Sources

• WIPO Lex — Paris Convention for the Protection of Industrial Property (as amended in 1979) (Art. 4C(1) priority period, Art. 6 territoriality, Art. 6septies unauthorized registration in the name of an agent or representative)
• Industrial Property Law No. 6769 (SMK) — mevzuat.gov.tr (Art. 6(2) application by a commercial agent or representative, Art. 10 request for assignment of the registration)
• WIPO — Madrid System (how the international trademark registration system works)
• WIPO — Madrid System: Filing International Trademark Applications – The Process (each designated Office decides on protection under its own law)