turkeypunch
1 August 2013TrademarksErsin Dereligil

What's the use? Trademark challenges in Turkey

Turkey receives more than 100,000 trademark applications every year, and more than half of them obtain registrations. Many applicants want broader trademark protection so as to include non-marketed or would-not-be marketed goods or services. More than one-third of applications are filed for two or more classes of goods or services, and most one-class applications include almost all goods or services in the specified class. This naturally leads to an increase in number of conflicts and court cases based on non-use of a trademark.

This article aims to outline key points in understanding the use requirement and routine practices of the Turkish Patent Institute (TPI) and Turkish courts.

Basic rule

It is not sufficient just to register a trademark in Turkey; it is also necessary to use it in the Turkish market. Where the trademark is not used within a period of five years from the registration date or where the use of the trademark is discontinued for an interrupted period of five years without a valid reason, the trademark can be cancelled provided that a third party files a case based on non-use before the court.

Registration date

The duty of the trademark owner to use the registered trademark starts on the date on which the trademark is actually registered with the trade registry. Therefore, the five-year period starts from the registration date of a trademark, not the filing date.

Substantial use during the period between the expiry of the five-year term and the date on which legal action is commenced shall not be considered a reason for invalidity. This means a trademark which has not been used within five years of the registration but has started a serious use, eg, after seven years cannot be successfully challenged by initiating a court action with arguments directed to the earlier non-use period.

However, if usage was made in contemplation of legal action, the court shall not take into consideration that use during the three months prior to the commencement of the action.

Valid reasons for non-use

Valid reasons for non-use may include an extraordinary governmental situation such as a trade embargo or war, or product/market-dependent events such as prolongation of formalities for marketing approval, allowance, authorisation or licence negotiations.

Procedures before the TPI

It is not necessary to file a request for intent to use or evidence of use to the TPI. Therefore, non-use of a trademark does not mean that it is automatically cancelled.

Third parties cannot oppose a published trademark application based on non-use. Likewise, an applicant whose trademark application is rejected based on conflicts or confusing similarities with the marks of earlier applications/registrations is not allowed to argue their non-use status before the TPI.

Valid and serious use

In order to fulfil the use requirement, a registered trademark should have been used for the last five years for the goods and services for which it is registered in a ‘serious’ way that suits the basic function of a trademark.

Such use can be realised in four ways:

•  Use with different components without changing its ‘distinctive character’;

•  Use on products or their packaging for export purposes only;

•  Use by others with the permission of the trademark owner, and

•  Use on imported products.

The concept of serious use requires a clear differentiation from others in origin or source of a good or service to avoid confusion, should create a specific clientele circle and help the owner reach a market and not remain limited solely to the relevant enterprise.

The degree of serious use shall be determined in accordance with objective criteria such as the type of goods/services, originality and way, scope and duration of use of the mark. For example, large quantities of sales are not expected for a product with expensive and advanced technology, whereas quickly consumed goods such as stationery, clothing or cigarettes may require high turnovers. Likewise, extensive use may be required for a weak mark with regard to pronunciation, permanence, attention, appeal and distinctive features.

If the trademark is used only for some of the goods and services in the class(es) for which it is registered, the use obligation has not been fulfilled for the remaining goods or services and those which have not been used can be challenged and invalidated by the court.

Invoices, customs clearances, advertisements, news and/or catalogues bearing the trademark are the most useful evidence to prove use in Turkey.

It is worth noting that well-known trademarks are not exempt from obligations of use within this context. In addition, online trademark use is not solely sufficient to prove use in general.

Burden of proof

To invalidate a trademark based on non-use, an interested party should file a case before the court. In such a case, the burden of proof is on the party who owns the trademark for which the invalidation is requested.

Then, the trademark owner will need to submit evidence to demonstrate that the trademark has been substantially used in commerce. The use of a trademark is not provable by a witness. For that purpose:

•   The use has to be in Turkey (the use in foreign countries is not considered, but affixing of the mark on goods in Turkey exclusively for export is considered as a use in Turkey);

•  
The trademark has to appear in the evidence clearly. For instance, invoices simply indicating a reference shall be furnished together with a proof that this reference corresponds to the trademark;

•   The evidence shall bear a clear date within the last five years (eg, date of publication of a magazine containing advertising, date of invoices);

•   The trademark used must be the one registered. Slight differences or sub marks without changing its ‘distinctive character’ will not have a negative effect;

•   Evidence shall be presented for each contested good or service in the trademark registration;

•   The use has to be by the trademark owner; otherwise additional evidence is required to prove connection the between the parties;

•   The use has to be serious and substantial, it is therefore important to accumulate lots of evidence;

•   The evidence has to be in Turkish or translated into Turkish; and

•   The sign has to be used as a mark, eg, the use as a company name is not sufficient.

Routine court procedure

Following the institution of the litigation, the legal interest of the plaintiff and selection of correct court are first examined. The points of claim, the plea, the replication and the rejoinder along with the respective evidence are mutually served on and exchanged between the parties.

The contested trademark’s application files and records are summoned by the TPI and the validity and conditions of the litigation are reviewed.

A preliminary examination trial is held and the parties to the litigation are invited to reach an amicable settlement. If this invitation yields no result, the issues where the parties are in dispute with each other are identified and following the necessary examinations and investigations, the attorneys of the parties are asked to state their final opinions regarding the overall course of the investigation and trial and are allowed to make verbal statements before the court decision.

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