Reforms to Turkey’s IP regime have expanded the circumstances in which a party can demand that a trademark owner prove use of a disputed mark. Until now, trademark owners could launch oppositions or lawsuits without having to consider addressing a non-use counter-claim. Therefore, trademark owners should now be more careful than ever in Turkey when challenging trademarks or infringing use.
The new alternatives offer relief to trademark applicants which face difficulties due to the existence of a registered, although inactive, trademark. The expanded use requirement mechanism is intended to prevent the trademark registry from being clogged with inactive trademarks.
Reforms were introduced by the Industrial Property Law and published in the Official Gazette on January 10, 2017, with the majority of provisions entering into effect on the same date.
Parties could previously argue non-use of a trademark only by initiating a lawsuit before the first instance courts, claiming the trademark should be revoked based on non-use (or suspended use) for a five-year period.
"The new system prevents earlier trademark owners stopping registration of potentially similar later trademarks."
The IP Law introduces additional circumstances where parties can now claim non-use of a trademark:
Plaintiffs can request proof of the defendant’s use during opposition proceedings based on similarity, where the defendant’s (senior) trademark is registered for five years or more. The defendant’s use will be considered as of the filing date, or date of priority for the later trademark application. The opposition will be rejected if the defendant does not prove use. If the use covers only some of the goods and services for which the trademark is registered, the claim will be examined only in terms of these limited goods and services.
Defendants (earlier trademark owners) can request proof of the plaintiff’s use when defending cancellation proceedings based on similarity. The plaintiff’s use will be examined in two respects:
The plaintiff must prove its use retrospectively if the basis (senior) trademark has been registered for five years as of the earlier trademark’s filing date. The plaintiff must prove its use within the five years leading up to the earlier trademark’s filing date.
The plaintiff must prove use if the trademark has been registered for five years as of the later trademark’s filing date or the defendant’s trademark priority date. The plaintiff must prove use as of the filing or priority date.
Defendants in trademark infringement actions can request proof of the plaintiff’s use. If the basis trademark has been registered for five or more years on the date the action is filed, defendants can ask plaintiffs to prove their use of the trademark within the five years leading up to the action date.
Under the new regime, arguments available to trademark owners in an opposition or cancellation action have been restricted for inactive trademarks. In effect, the new system prevents earlier trademark owners stopping registration of potentially similar later trademarks, unless the earlier party has actively established a Turkish presence for the goods in question.
Işık Özdoğan is a partner at Moroğlu Arseven. She can be contacted at: firstname.lastname@example.org
Ezgi Baklacı is a partner at Moroğlu Arseven. She can be contacted at: email@example.com
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