Ercüment Erdem Att. Yesim Tokgoz

Genuine Use of the Trademarks

March 2019

In accordance with the statistics published by the Turkish Patent and Trademark Institution (TurkPatent), 105,996 trademarks were registered with the TurkPatent in 2018 in total; whereas, 81,911 of the domestic trademarks have entered into the protection sphere of the Industrial Property Law (IP Law)[i]. However, registration, alone, is insufficient to protect the rights of the trademark proprietors. The trademarks must be used in the goods or service classes in which they are registered, and this usage must be proven, in order to prevent intervention by a third party. In this manner, the effective use of the trademarks in the market is ensured, and new entrepreneurs are prevented from entering into an artificial market[ii]. This month's article sheds light on the management of trademarks and the legal processes that unused trademarks may encounter.

Genuine Use of Trademark

The protection period of trademarks under the IP Law is ten years. The proprietor of the trademark may maintain its trademark with unlimited periods of time by renewing its trademark with ten-year periods; however, the registration of the trademark by itself, and/or the renewal every ten years, are not sufficient to protect the trademark against interventions by third parties[iii]. In order for the registry to protect the trademark, actively, trademarks i) must be put to genuine use, ii) within five years following the registration, iii) in connection with the good or service classes in respect of which they are registered, iv) by the proprietors, v) in Turkey, or vi) their usage must not be suspended during an uninterrupted period of five years unless there is just cause for nonuse (“Genuine Use”).

It is difficult to establish a general rule as to Genuine Use. Therefore, it is crucial that the trademark proprietors use their trademarks with a commercial impact in Turkey, and must be able to provide evidence regarding the usage. Therefore, the trademark proprietors are expected, if possible, to use their trademarks, continuously, in such a manner so that no suspicion is created; otherwise, the trademark may become open to the intervention by third parties, regardless of how well-known they are. Within this scope, the evidence proving Genuine Use must be clear, understandable and reliable, in order to make evaluations without the need for any other information. In addition, the evidence must contain sufficient information on the type of use, location, time and scope of the goods or services for which the trademark is registered. For instance, lately, the European Union Intellectual Property Office decided to revocate the "Big Mac" trademark, since McDonald's could not prove the genuine use of its registered trademark with objective evidence due to lack of a link between the evidence and the usage[iv] in terms of time,place and extent.

It is accepted that the trademark is genuinely used in the event of the use of the trademark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, or if a simple shape is changed, or used in a color other than under which it is registered. Furthermore, Art. 9.2.b of the IP Law considers the use of the trademark, only in goods or packaging for export purposes as the Genuine Use of the trademark.

The use of the trademark by third parties with the permission of the proprietor in line with a license, franchising, distributorship agreements etc. is also considered to be Genuine Use.

The proprietor of the trademark may argue that it had to suspend the use of its trademark for just cause. Such just causes may be identified as war, economic crises, natural disasters, changes in customs legislation, import restrictions and embargoes. The deterioration of the proprietor's financial situation is not accepted as a just cause.

It should also be noted that if the trademark is used for only a part of the goods or service classes in respect of which it is registered, the remaining classes may become a target for intervention. Within this scope, it would not be incorrect to say that the protection of the precautionary registered goods and service classes is limited to five years[v].

Therefore, trademarks must not be registered for the purposes of collections; otherwise, the following processes may be encountered:

Counterclaim of Genuine Use in the Opposition to the Publication of Application

Trademark registration applications may be rejected upon the objection of the previous proprietor if it is likely to be confused with a trademark that has been registered, or applied for registration, before (“Opposition to Publication”). This issue is one of the relative grounds for refusal pursuant to Art. 6 of the IP Law. The Opposition to Publication can be filed within two months after the application is published in the Trademark Bulletin. The applicant, having encountered an objection in this respect (before the beginning of the evaluation regarding the similarities between the signs) may request from the opponent proprietor of an earlier trademark, to furnish proof that the object trademark for the opposition has been put to Genuine Use in connection with the goods or service classes in respect of which it is registered, for a period of five years (“Counterclaim of Genuine Use”). In this case, if the opponent proprietor of an earlier trademark cannot prove that it has used its trademark as described, above, its opposition to publication shall be rejected, and the trademark of the applicant shall be registered.

If the opponent proprietor of an earlier trademark can prove that it uses its trademark only in certain classes of goods or services, its opposition to publication shall be rejected in respect of unused classes, and the trademark of the applicant shall be registered in the class of unused goods or services.

It should be emphasized that the previous proprietor's trademark must have been registered for five years in order that the applicant may submit the Counterclaim of Genuine Use.

Counterclaim of Genuine Use in Trademark Infringements

Art. 29 of the IP Law lists the acts of trademark rights infringements. Within this scope the proprietor is entitled to demand the prevention of such infringements and compensation for the damages it suffered, etc. However, in such cases, the defendant may submit the Counterclaim of Genuine Use. Within this context, the proprietor cannot obtain the rights arising from the registration unless it proves that it has genuinly used its trademark within the five years prior to the date of the case.

Counterclaim of Genuine Use in Invalidation Case

Pursuant to Art. 25 of the IP Law, taking into consideration the reasons for absolute or relative rejections, the registered trademarks may be declared invalid in a manner that is retroactively effective. Upon the invalidity decision, the registration of the trademark is cancelled, and the protection provided by the IP Law to the trademark is deemed to have never arisen. In such cases, the defendant may claim the Counterclaim of Genuine Use, as well. In this case, the plaintiff is obliged to prove that it has genuinely used its trademark in the previous five years prior to the date of the case.

Grounds for Revocation

The fact that the trademark is not genuinely used for a period of five years as described above, may cause the trademark to be revocated in a prospective manner. It is also possible to partly revocate the trademark in line with the proven goods and service classes; however, the revocation decision cannot be made in such a manner so as to alter the distinctive character of the mark in the form in which it was registered.

The defendants are entitled to issue a counterclaim to the Genuine Use, as well, in such cases to be initiated before judicial courts. It should be emphasized that the usage of a trademark, symbolically, as the end of the five-year period is approaching (token use), is not considered to be Genuine Use. Therefore, the usages realized within the three months prior to the submission of the request are not taken into consideration.

Finally, it should be noted that pursuant to the Art. 192 and Temporary Art. 4 of the IP Law, the revocation requests will be submitted directly to the TurkPatent after 10.01.2024. Until that date, the authority for revocation is used by the judicial jurisdiction.

Conclusion

Although the IP Law regulates the protection period for trademarks as ten years, if a trademark is not genuinely used for five years in Turkey, the protection sphere provided by the IP Law may tighten, and trademark proprietors may lose their rights that have arisen from the registration. In the case of the absence of a Genuine Use, the proprietors cannot either prevent the registry of a similar sign with their registered trademarks by a third person, nor claim damages incurred due to an infringement. Furthermore, as a result of the cases filed by third parties in judicial proceedings, the trademarks may be declared invalid, or their registries may be cancelled, partly or wholly. Therefore, in order to avoid any loss of rights, trademarks should be actively used in the goods and service classes in which they are registered, and all footprints related to these uses should be maintained.

[i]            https://www.turkpatent.gov.tr/TURKPATENT/statistics/ (Access date: 06.04.2019).

[ii]           TurkPatent, Guide for Genuine Use Counterclaim.

[iii]           e.g.: 11th CC of Court of Cassation, No. 2012/13423 E. and 2013/12221 K., 12.06.2013.

[iv]           Revocation Decision of EUIPO, No. 14 788 C, between Supermac's (Holdings) Ltd and McDonald's International Property Company, Ltd.

[v]           e.g.: 11th CC of Court of Cassation, No. 2013/18616 E. and 2014/6720 K., 07.04.2014.