The Industrial Property Law No. 6769 (hereinafter referred to as the “IPL”), which is the main statute on trademarks in Turkish law, comprises the substantial regulations on the use of registered trademarks, taking into account the European Union (EU) Directives and Regulations thereof¹.
In contrast to US law, Turkish law does not examine whether the applicant has used or intend to use the trademark in the future.
In this article, we will first explain how the obligation to use trademark is regulated under Turkish law and then we will provide information on the purpose, conditions and legal consequences thereof.
A- PURPOSE
The trademark proprietor shall use the trademark as registered. The use of trademark is the launch of the goods and services of an enterprise to the commercial field in order to distinguish them from the same or similar goods and services of other enterprises².
Since there is no examination as to whether the trademark has been used or whether there is an intention to use the trademark in the future, the trademark proprietors have the medium to register an unlimited number of signs that they will not actually use as trademark in different classes If there is no restriction on actual use, it will be impossible to use the trademark on the part of others who intend to use it effectively. In this respect, it is important to oversee whether the trademark has been used after the registration³.
In a decree of the General Assembly of Civil Chambers of the Court of Cassation, it is expressly stated that the protection and absolute exclusive right provided to the trademark proprietor by the registration process is conditional upon the use of the trademark in a way to fulfill its function, and the purpose of the obligation to use is to prevent this monopoly right from turning the trademark registry into a warehouse of trademarks that are not used, out of sight, intact and thrown away by anyone else⁴.
B-CONDITIONS
1-Genuine Use
Article 9/1 of the IPL stipulates that the use of trademark shall be a genine use. Accordingly, a trademark which has not been genuinely used by the trademark proprietor in Turkey in respect of the goods or services for which it is registered within five years from the date of registration without a justifiable reason, or the use of which has been interrupted for five years without interruption, shall be revoked. Genuine use shall be severally considered in each present case.
Genuine use of trademark primarily refers to the placement of the trademark on the goods or packaging and its use in the enterprise's business documents or advertisements should be considered sufficient⁵.
In this context, the type of trademark should also be taken into consideration. In particular, since the functions of an individual, collective or guarantee trademark will be different, the criteria for the use of trademark will be distinctive, as well.
In the case of guarantee trademarks, as it is improbable for the trademark proprietor to use the trademark in and of itself, the obligation of use here should be understood as the obligation to use the trademark to the trademark proprietors who meet the requirements of the technical regulation. In the case of collective trademarks, since more than one enterprise use the trademark with equal rights on the same trademark, the obligation of use is fulfilled when one of the enterprises uses it. In the event that the collective trademark is not used by any enterprise within the scope of registration, it will be possible for the third parties to file a revocation action for non-use⁶.
It should also be taken into account whether the use of the relevant trademark has constituted or maintained a market share in the goods or services sector in which it is registered. In this case, the nature of the goods or services will be important when assessing what is a sufficient amount of use⁷.
2-Trademark Shall Be Used In Turkey
In accordance with Article 9/1 of the IPL, the use of trademark shall take place in Turkey. In this sense, granting a license for use abroad will not be considered as a use in Turkey. The placement of a trademark on goods exported without ever being placed on the Turkish market or on their packaging also indicates that the trademark is used in Turkey⁸. As per the principal of territoriality, it is deemed appropriate that the use shall also be domestic. The Court of Cassation, in one of its precedent, has upheld that the use of trademark does not have to cover the whole of Turkey, and that the use of trademark is domestic in the event the TV broadcasts performed on the internet using a platform abroad can be watched from Turkey⁹.
3-Trademark Shall Be Used by Trademark Proprietor or by Third Party With A Consent
In order to fulfill the obligation to use of trademark, it is not required for the trademark to be used by the trademark proprietor; pursuant to Article 9/3 of the IPL, the use of trademark by a third party with the consent of the trademark proprietor shall also be deemed as the use of trademark. However, the third party using the trademark must use the trademark in such a way as to constitute a significant market share, and the consent to use of trademark must have been obtained prior to the use of the trademark¹⁰. The third party may use the trademark right on the basis of a license from the trademark proprietor, an exclusive distributorship agreement¹¹ or a limited real right¹² .
4- Trademark Shall Be Used In The Goods & Services For Which It Is Registered
Pursuant to Article 9/1 of the IPL, the trademark must be used for each class and subclass of goods or services for which it is registered. If the use is solely for some of the goods and services within the scope of the registration, the trademark proprietor may incur legal sanctions for noncompliance with the obligation to use in respect of the unused goods or services.
The use of trademark in the advertising and promotion of the goods and services for which the trademark is registered is deemed as the use of trademark¹³. On the other hand, the use of the sign in the business name, trade name or internet domain name merely, provided that it is not associated with the goods or services subject to the trademark, is not considered the use of trademark¹⁴.
C- CASES CONSTITUTING USE OF TRADEMARK
The trademark shall be essentially used as registered. On the other hand, it is also considered adequate to use the trademark with different elements without altering its distinctive character. This is because the purpose here is to emphasize that the registered sign may be used in accordance with the dynamics of commercial life without damaging the essential elements of the trademark, even if there are changes in the sign as a result of needs such as modernization thereof. In this context, according to Article 9 of the IPL, the cases set forth below are deemed as the use of trademark;
Use of trademark with different elements without altering its distinctive character
Use of trademark on goods or on the packaging solely for export purposes
The use of trademark by adding or subtracting insignificant signs, words, etc. with some attachments in a different size or colour than the one in the registration shall be considered within this scope¹⁵.
The use of trademark on the goods or its packaging merely for export purposes is also considered as trademark use. The importation of goods bearing the trademark is not included in the cases regarded as the use of trademark.
It is necessary to evaluate whether the circles related to the trademark perceive the new form as the same as the registered trademark. In this regard, it may be asserted that the removal of the hyphen sign between the words constituting the trademark or the subsequent capitalization of the trademark registered in lower case letters will not affect the distinctive character of the trademark¹⁶ .
The burden of proof of using trademark is on the trademark proprietor¹⁷. Invoices, catalogs, price lists and product codes, product, packaging and signboard samples, advertisements, publicity, promotions, market research, public opinion polls may be utilised to prove the use as per the Guidelines¹⁸.
D-TRADEMARK SHALL BE UNINTERRUPTEDLY USED WITHIN THE GRACE PERIOD
The trademark proprietor is granted a grace period of five years from the registration to begin using the trademark. During the five-year preparation period after registration, the trademark cannot be revoked due to non-use. The trademark proprietors cannot be requested to prove that they have used the trademark during this period. The main reason for this grace period is to give the trademark proprietor the necessary preparation period for the market launch of the goods or services that will bear the trademark¹⁹. Even if the trademark proprietor does not start using within this grace period, it will be able to prevent new registration requests that constitute a likelihood of confusion due to the same or similarity²⁰ .
Nevertheless, the use of trademark shall not be interrupted for more than five years. Otherwise, the trademark will be revoked and this will also prevent the trademark proprietor from exercising its rights arising from the registration. Further, pursuant to Article 26/4 of the IPL, uses that take place within three months prior to the date of the revocation request or request for proof will not be taken into account in the calculation of the period of use.
E-JUSTIFIABLE REASONS FOR NON-USE
If there is a justifiable reason, there is no obligation to use the trademark. Article 9/1 of the IPL comprises solely the term “justifiable reason” and does not regulate which matters are deemed as justifiable reason. Thus, the legislator aims to severally evaluate the existence of a justifiable reason in each present case.
According to Article 19/2 of the IPL, the failure of the trademark proprietor to use the trademark shall be based on justifiable reasons. The term “justifiable reason” in the aforementioned provision refers to any actual or legal obstacle that makes it impossible to use the trademark for the period in question due to reasons that do not arise from the misconduct of trademark proprietors and that occur beyond their own will. The concept of justifiable reason should not be understood only in cases of force majeure.
The important point is that the obstacle shall be serious and caused by reasons beyond the will, control and sphere of influence of the trademark proprietor. Examples may include war, economic crises, acts of god, amendments in customs legislation, import restrictions and embargoes²¹.
In principle, the bankruptcy of the trademark proprietor should also not be regarded as a justifiable reason. With the exception of bankruptcy due to the general economic crisis or the expropriation of the trademark proprietor's production facility, which the trademark owner cannot prevent despite all due diligence, it is possible to use the trademark during the bankruptcy phase through usufructuary lease or license agreements and similar methods²² . However, reasons such as the trademark proprietor's inability to manufacture owing to the deterioration of its financial situation and prolonged negotiations regarding the granting of a license do not constitute justifiable reason²³.
Article 19/1 of TRIPS²⁴, one of the significant international agreements to which Turkey is a member, sets out exemplary criteria for justifiable reason. In the aforesaid provision, it is expressly stipulated that the conditions that prevent the use of trademark due to import restrictions on the goods or services subject to registration or other reasons imposed by the state and which are beyond the will of the trademark proprietor shall be deemed as valid reasons for not using the trademark. Accordingly; war, economic crisis, acts of god, hardships in the supply of raw materials, restrictions and delays arising from administrative procedures may be construed within this scope.
F- LEGAL CONSEQUENCES OF NON-USE
1- Revocation of Unused Trademarks
Revocation of a trademark occurs when certain circumstances that did not exist at the time of registration subsequently arise due to the conduct of the trademark proprietor²⁵. A trademark proprietor who does not use his trademark shall not automatically lose his trademark right. Nonetheless, under such circumstances, the assertion of the trademark right is significantly limited and is also under the threat of revocation²⁶. Article 9 of the IPL regulates the obligation to use the trademark and stipulates that the trademark shall be revoked if it is not used genuinely in Turkey for five years without a justifiable reason. In this respect, the most severe sanction for not using the trademark is the revocation of the trademark.
The request for revocation is made by the relevant persons to the Turkish Patent and Trademark Office (TPTO). This request shall be notified by the Office to the trademark proprietor, and the response and evidence shall be submitted to the Office within one month following the notification. If requested, an additional one month period is granted to the trademark proprietor by the Office. If deemed necessary, the Office may request additional documents and information from the both parties. The Office renders its decision on the file with the evidence collected and the decision is subject to appeal. The trademark may be partially revoked solely for solely certain goods or services. The decision to revoke the trademark is not retroactive like the decision of invalidity, but takes effect as of the date the request for revocation is submitted to the Office²⁷.
However, under Article 27/2 of the IPL, if the ground for revocation arose before the date of the request, it may be held upon request that the revocation decision will be effective as of this date. This will not affect the finalised and executed decrees in trademark infringement actions prior to the decree, and the contracts that were concluded and executed theretofore²⁸.
2- Exceptio of Proof of Use
Pursuant to Article 19/2 of the IPL, in the case of oppositions filed within the scope of relative grounds for refusal, providing that the ground for opposition has been registered in Turkey for at least five years as of the filing or priority date of the application subject to the opposition, the opposer may be requested, upon the request of the applicant, to submit evidence that it has been using the ground for opposition trademark genuinely in Turkey in respect of the goods or services on which the opposition is based, or that it has justifiable reasons for not using it, within the five-year period prior to the filing or priority date of the application subject to the opposition. If the opposer fails to prove these matters, the opposition shall be rejected. If it is proved that the trademark is used for only some of the goods or services covered by the registration, the opposition shall be examined merely on the basis of the goods or services whose use is proved.
The commencement of the five-year period to be calculated is the filing or priority date of the application subject to the opposition. If the use is proved for only a part of the goods or services covered by the registration, the opposition shall be examined for the goods and services that are proved, and the opposition shall be rejected for the goods and services that cannot be proved²⁹.
3- Exceptio of Non-Use In Invalidation Actions
Article 25/7 of the IPL stipulates that the defense of non-use of a trademark may be asserted as an exceptio in invalidation actions. In accordance with the said provision, in invalidation actions filed by the proprietor of an unused trademark for the same or similar subsequent registrations based on relative grounds for refusal, the defendant may allege the exceptio that the plaintiff has not used the trademark for five years. In this case, the lawsuit will be accepted if the plaintiffs prove that they have used the trademark within 5 years from the date of the lawsuit or that they have a justifiable reason for not using it. For instance, if the plaintiff objected to the subsequent trademark application on the part of former trademark proprietor, and this opposition was rejected pursuant to Article 19/2 of the IPL owing to the non-use of trademark, the subsequent use of trademark by these trademark proprietors shall not confer upon them the right to file an invalidation action³⁰.
In invalidation actions, unlike the exceptio of proof of use in opposition to a trademark application, the date of the lawsuit shall be taken as a basis for the commencement of the fiveyear period to be calculated³¹.
4- Exceptio of Non-Use In Trademark Infringement Actions
Pursuant to Article 29/2 of the IPL, in trademark infringement actions, it may be asserted as an exceptio that the trademark upon which the claims are based has not been used. The date of the lawsuit shall be taken as a basis for determining the five-year period of non-use. In the event the defendant exercises its right of exceptio and the plaintiff proves that it has used the trademark in the sense required by the IPL, the action will proceed to be tried, and if it cannot be proved, the action will be dismissed³² .
This article is the 1st part of the series titled "THE OBLIGATION OF USING TRADEMARK."
The 2nd part will be shared at following days.
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