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27 November 2014TrademarksÖzlem Fütman

A controversial decision: non-use litigation in Turkey

The Turkish Constitutional Court, in a April 9, 2014 decision that was published in the National Official Gazette on July 24, cancelled article 42/1(c) of the Turkish Trademark Decree Law No. 556 (Decree Law), because it violates article 91/1 of the Turkish Constitution.

Article 42/1(c) says that a registered trademark shall be invalidated by a court where it is in breach of article 14 of the Decree Law (dealing with non-use). However, if the trademark is used after the invalidity proceedings have been filed, it may not be invalidated.

This report provides non-use as one of the grounds of invalidity by referring  to article 14. The article says that if within a five-year period following a trademark’s registration it has not been put to use, the trademark will be repealed unless there is a justifiable reason for the non-use.

Background

An action was filed before the 4th Civil IP Court of Istanbul, where the owner of the trademark registration ‘Orjin’, in classes 3, 7 and 32, requested inter alia the invalidation of the defendant’s registered mark ‘Origin’ plus a device mark, in classes 5, 29 and 30. Meanwhile, the defendant asked for the cancellation of the plaintiff’s ‘Orjin’ mark based on non-use.

The trial judge partially accepted both parties’ claims, invalidating the defendant’s ‘Origin’ mark entirely and cancelling the plaintiff’s ‘Orjin’ mark in all classes except for “creams”, based on non-use. The appeal court overruled the decision.

"After the publication of the Constitutional Court’s decision, a heated debate started in the Turkish IP world, as it is unclear how the courts will react and what would happen in pending trademark non-use litigation."

After the decision, the trial judge had the option of confirming the appeal court's ruling or implementing its initial decision, or applying to the Consitutional Court for the cancellation of article 42/1(c). The judge sitting on the bench of the 4th Civil IP Court of Istanbul chose the third option and argued the following:

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