Introduction
The use of a trademark in commercial activities to distinguish the goods or services of one enterprise from the goods or services of another enterprise is referred to as the use of a trademark. In accordance with Article 9 of the Industrial Property Code numbered 6769 (“Code”), a registered trademark must be used genuinely in Turkey within a continuous period of 5 years by the trademark owner. Otherwise, the trademark shall be deemed as not having been duly used and thus, may be subjected to cancellation action.
In this article, we will be discussing the issues regarding the cancellation of trademarks that are not used without a justifiable reason within 5 years from the date of registration.
General Notes on the Trademark Cancellation Action
The trademark cancellation action is a lawsuit that allows a registered trademark to be removed from the trademark register. The cancellation of a trademark occurs due to the existence of reasons that did not exist at the time of registration of the trademark but emerged subsequently. The grounds for the cancellation of a trademark are listed in Article 26 of the Code. Accordingly, the following trademarks may be cancelled:
Trademarks that have not been used within 5 years (or such use has been suspended during a continuous period of five years) from the date of registration without any justifiable reason,
Trademarks that have become generic for the registered goods or services due to the acts of the trademark owners and the trademark owners have not taken sufficient measures to prevent this,
Trademarks that mislead the public about the nature, quality, or geographical origin of the goods or services due to the acts of the trademark owners,
Guarantee trademarks or collective trademarks that have not been used in compliance with the defined standards.
Obligation to Use the Registered Trademark
Non-use of a trademark, which is one of the situations in which a cancellation request may be submitted, is regulated in Article 9 of the Code. According to the Article, if the trademark is not genuinely used in Turkey by the owner of the trademark in terms of the goods or services for which it was registered without a justifiable reason within 5 years from the date of registration, or if the use of the trademark is interrupted continuously for 5 years, the trademark shall be cancelled.
Although the definition of “genuine use” is not clearly defined in the Code, it means the use of the trademark in places that will benefit from the trademark in a way suitable for its functions and affect the market.[1]
The decision to be made by the competent authority regarding the genuine use of the trademark depends on the evidence to be provided. In this respect, invoices are the strongest evidence that may be submitted for proof of genuine use. Additionally, packages, labels, price lists, catalogues, photographs and newspaper advertisements may also be submitted. However, the respective documents should show the use of the trademark by the trademark owner in Turkey on the relevant goods and services in a “genuine” way.
Whether the use of a trademark is genuine or not should be considered separately in each case. It should be noted that, it would be appropriate to make an assessment based on objective criteria such as the type, duration, scope and geographical area of use.[2]
However, if the non-use of the trademark is based on a justifiable reason, the 5-year period shall not expire as long as the justifiable reason continues.[3] The justifiable reasons are not explicitly listed in the Code, however, they are explained in Article 19 of the TRIPS. According to Article 19 of the TRIPS, circumstances arising independently of the will of the owner of the trademark which constitutes an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as justifiable reasons for non-use.
Burden of Proof
In principle, according to Article 190 of the Code of Civil Procedure numbered 6100, the burden of proof is on the claimant. However, in the cancellation action, the burden of proof shifts and passes to the respondent, i.e., the trademark owner. Therefore, in non-use cancellation actions, the trademark owner must prove that the trademark is used genuinely in Turkey within 5 years from the date of registration.
Competent Authority for Cancellation Requests
Cancellation actions based on non-use are currently handled by the Civil Court of Intellectual and Industrial Property Rights. However, as per Article 26/7 of the Code, which will enter into force on 10 January 2024 (7 years after the publication of the Code), the Turkish Patent and Trademark Office, instead of courts, will be authorized to handle and process the cancellation of the trademarks due to non-use.
Consequences of the Cancellation Decision
With the final decision regarding the cancellation of the trademark, the trademark shall be removed from the trademark register and published in the Official Trademark Bulletin. The decision on the cancellation of the trademark has a judgment against all.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
Elif Koturoglu
Attorney at Law | Trademark Attorney
Evren Firat Goklu
Attorney at Law | Trademark Attorney
[1] Turkish Patent and Trademark Office, Guidelines on the Proof of Use, 2017, p. 25 [2] Turkish Patent and Trademark Office, Guidelines on the Proof of Use, 2017, p. 4 [3] Cahit Suluk, Rauf Karasu, Temel Nal, Fikri Mülkiyet Hukuku, Ankara 2020, p. 221