Sponsored Briefing: Use Requirement of Trade Marks and Potential Consequences of Non-use under Turkish Law-Part 1

Please be noted that this article is the first part of the report, the second part could be seen here.

Under the Industrial Property Law numbered 6769 (IP Law), an important obligation imposed on trade mark owners after obtaining registration is the requirement to use the trade mark. The IP Law attaches two important potential consequences for non-use of the trade marks, after the completion of the five-year grace period. First, the trade mark can be revoked due to non-use upon the request of the interested parties and second, its enforceability can be weakened by a non-use defence asserted by the applicants in the opposition actions before the Turkish Patent and Trademark Office (the Office) or by the defendants in invalidation or infringement actions before the courts.

The non-use defence has been introduced as a revenue granted to applicants and defendants for the first time with the IP Law, with its entry into force in 2017. This expanded the potential consequences that could be faced by trade mark owners with vulnerable trade marks, by adding to the already existing risk of facing a non-use revocation claim under the late Decree Law numbered 556 on the Protection of Trademarks (Trademark Decree Law). Changes in practice will also take place as of 10 January 2024, with the transfer of the authority of the courts to evaluate non-use revocation claims to the Office. Thus, trade mark owners with trade marks registered for more than five years in Turkey should be cautious of the various avenues available to third parties against their trade marks, when deciding on enforcing their rights.

The Requirement of Use under the IP Law

The primary clause governing the use requirement is Article 9 of the IP Law, which indicates that if, within a period of five years following the date of registration, a trade mark has not been put to genuine use without a justifiable reason or if the use has been suspended for an uninterrupted period of five years, the trade mark shall be revoked.

The relevant provision grants a five-year grace period as of the registration date for a trade mark to be put to use, during which the trade mark cannot be challenged due to non-use. After the completion of the grace period, the trade mark becomes vulnerable against a revocation claim based on non-use, as well as against a potential non-use defence in the opposition, invalidation and/or infringement proceedings.

When faced with a potential revocation claim or a non-use defence, the burden of proof is on the trade mark owner, who must either prove that the trade mark has been put to genuine use in Turkey by submitting solid evidences or that there were ‘justified reasons’ for not using the trade mark, occurring beyond its willpower and control, which makes the use of the trade mark impossible.

The Principles of Use under the IP Law

a. Genuine use of the trade mark

Under Article 9 of the IP Law, the use of the trade mark should be ‘genuine’ in order to fulfil the use requirement. The IP Law makes no definition of what constitutes ‘genuine’ use of the trade mark, however, it is accepted this concept encompasses; (i) a use frequent enough to enable the trade mark to fulfil its essential function of identifying the source or origin of the relevant goods and services3, (ii) use in commerce, with the intent of creating a market share.

There is no set standard as to the volume or frequency required to accept existence of genuine use. The evaluation of whether a trade mark has been put to genuine is carried out on a case-by-case basis, by taking into consideration the nature of the goods and/or services covered by the registration.

b. Use of the trade mark for the goods/services covered by the registration

In order to constitute use within the meaning of the IP Law, the trade mark must also be used for the goods and/or services for which it has been registered. Use for goods and/or services similar to those covered by the registration is not sufficient to satisfy this requirement.5 If use of the trade mark can only be proven for certain goods/services covered by the registration, the trade mark would be partially revoked for goods/services for which use could not be proven.

c. Use of the trade mark by its owner or other authorised third parties

Under Article 9 of the IP Law, the trade mark must be used either by the trade mark owner or by the third parties authorised by the trade mark owner.7 Accordingly, unauthorised uses of the trade mark will not constitute trade mark use within the meaning of the IP Law.

d. Use of the trade mark in Turkey

The trade mark must lastly be used in Turkey (in any part of Turkey) to meet the use requirement under Article 9 of the IP Law. Placement of the trade mark on goods or their packages within Turkey with the purpose of exporting the goods abroad is also considered as trade mark use within the meaning of the IP Law8, as well as the online use of the trade marks accessible in Turkey.

Source: legalbusiness.co.uk

Editor: IPR Daily-selly