A Recent Court of Cassation Decision on the Consequences of Non-Use of Registered Trademark Rights
Introduction
Although trademark protection grants the proprietor strong and exclusive rights, its continuation is contingent upon the trademark being genuinely and functionally used in commercial life. Article 9 of the Industrial Property Code No. 6769 (“IPC”) authorizes the cancellation of a registered trademark where it has not been used in Turkey, without a justified reason, within five years from the date of registration or where use has been suspended for an uninterrupted period of five years. The purpose of this rule is to prevent the trademark register from being cluttered with unused signs, to eliminate defensive registrations that create unnecessary barriers in the marketplace, and to ensure that trademarks remain economically meaningful assets. The decision of the 11th Civil Chamber of the Court of Cassation dated 19 June 2025 and numbered 2024/6194 E., 2025/4339 K. (“Decision”) significantly clarifies this framework by applying the genuine-use requirement—and the consequences arising from non-use—strictly and without exception, even for well-known marks. Notably, the Decision sheds important light on the doctrine of partial cancellation by illustrating its practical operation in a concrete dispute.
The Case at Hand and the Course of Proceedings
The claimant alleged that several trademarks registered in the defendant’s name had not been genuinely used for many years in certain classes of goods and services and accordingly requested that these marks be declared invalid with respect to the relevant classes. The claimant’s legal interest derived from the fact that these earlier registrations had been relied upon as grounds for the refusal of the claimant’s own trademark applications. The defendant, however, argued that its marks formed part of a well-known “…” trademark series, that the high level of recognition of this series afforded protection even across different classes, and that the claimant could in any event not obtain registration for the same sign. It further asserted that the marks had been used and that the conditions for invalidity based on non-use had therefore not been satisfied.
The First Instance Court held that the defendant had used its mark extensively, that such use had been maintained through a series of related marks, and that, due to the mark’s well-known status, it should also be regarded as protected in the classes where non-use was alleged. On this basis, the court dismissed the claim. However, upon the claimant’s appeal, the Regional Court of Appeal emphasized that the burden of proving use lies with the trademark proprietor and found that the evidence submitted by the defendant did not demonstrate genuine use in certain classes. Accordingly, it ruled for the invalidity of the marks solely in respect of the classes in which they had not been used and ordered their removal from the register. The defendant appealed to this judgment, but the 11th Civil Chamber of the Court of Cassation upheld the Regional Court of Appeal’s decision as procedurally and legally sound, thereby finalizing the ruling.
The Scope and Assessment of the Genuine-Use Requirement
One of the central issues emphasized in the Decision is the content of the notion of “genuine use”. Genuine use refers to use that goes beyond merely nominal or symbolic acts intended solely to preserve the trademark’s registration. In this respect, factors such as nature, duration, and extent of use, whether the use produces an economic impact in the relevant market, and whether the mark fulfils its essential function of indicating commercial origin are considered. The Court of Cassation’s established case law similarly holds that a limited number of invoices, undated advertising materials, or low-volume sales that do not generate tangible commercial effects are insufficient to demonstrate genuine use.[1]
The use must be real and of a scale sufficient to maintain the mark’s presence in the market. The evidence submitted by the defendant was assessed within this framework, and it was concluded that the defendant had failed to discharge its burden of proof, as the materials did not show that the mark occupied a meaningful place in commercial activity within the relevant classes.
The Position of Well-Known Marks in Non-Use Actions
One of the most significant aspects of the Decision is its clear articulation of the position of well-known marks in actions based on non-use. The defendant argued that the well-known status of its marks should afford protection even in classes where the marks had not been used, and the First Instance Court adopted this view, relying on the assumption that well-known status effectively neutralizes the requirement of use. The Regional Court of Appeal and the Court of Cassation, however, underscored that the enhanced protection granted to well-known marks applies in the context of absolute and relative grounds for refusal or in infringement assessments, whereas a non-use–based invalidity/cancellation claim serves an entirely different legal function. The obligation of genuine use does not cease to apply merely because a mark is well known; rather, concrete use is required separately for each class in which the mark is registered. This approach makes clear that even well-known marks do not enjoy limitless protection by virtue of reputation alone and that the scope of their rights must remain proportionate to their actual presence in commercial life.
The Cancellation Mechanism under Article 26 of the IPC
While Article 26(1)(a) explicitly identifies the breach of the use requirement in Article 9 as a ground for cancellation, paragraph 5 of the same provision concretizes the principle of partial cancellation by stipulating that, where the grounds for cancellation relate only to certain goods or services, the cancellation decision must be limited to those specific goods or services. In this respect, the Decision renders the internal logic of Article 26 more visible in practice and reinforces the operational role of the partial cancellation mechanism. The question of which authority is competent to order cancellation based on non-use is also shaped by Temporary Article 4 of the IPC. Pursuant to this transitional provision, until Article 26 entered into force (i.e., until 10 January 2024), the power to cancel trademarks on grounds of non-use was exercised by the Civil Courts for Intellectual and Industrial Property Rights, in accordance with the procedures and principles laid down in the statute; moreover, cancellation actions pending as of that date were to be concluded by the courts. As of 10 January 2024, however, the authority to issue cancellation decisions based on non-use has, as a rule, passed to the Turkish Patent and Trademark Institution (“TPTI”). In this new period, non-use–based cancellation requests are first examined through an administrative procedure before the TPTI, and cancellation decisions rendered by the TPTI are thereafter subject to judicial review before the Ankara Civil Courts for Intellectual and Industrial Property Rights.[2]
The Application of the Principle of Partial Invalidity
Another significant aspect of the Decision is its concretization of the principle of partial invalidity. Within the structure of the IPC, it is accepted that the grounds for invalidity or cancellation do not necessarily affect all goods and services for which a mark is registered, but only those to which the relevant ground pertains.[3]This approach serves both to preserve the accuracy of the register and to ensure that the trademark proprietor maintains protection only for the goods and services that are genuinely used. In the case at hand, the Regional Court of Appeal ordered the invalidity of the mark solely with respect to the classes in which no use had been shown, in line with the claimant’s request; the Court of Cassation affirmed this reasoning, thereby reaffirming the functional role of partial invalidity in modern trademark law. In this respect, the Decision clearly demonstrates that defensive registrations covering broad lists of goods and services are unsustainable when confronted with the genuine-use requirement.
Conclusion
The Decision constitutes an important milestone in trademark law, as it applies the genuine-use requirement and the principle of partial invalidity strictly—even in the context of well-known marks. The underlying approach adopted by the courts is that trademark protection is not a static entitlement but a dynamic right, the continuation of which must remain proportionate to the mark’s actual presence in commercial life. Even well-known marks are required to be genuinely used in each class in which they are registered to benefit from protection in those classes. Maintaining protection for unused classes is incompatible with the function of the trademark register and creates an unjustified blocking effect in the marketplace.
From this perspective, the Decision carries significant implications for both trademark proprietors and applicants whose filings are refused due to earlier unused registrations. Trademark owners must align their registration strategies with their actual use plans, avoid overly broad class specifications that cannot be substantiated, and consistently preserve evidence of use. Conversely, for applicants whose filings have been rejected on the basis of earlier marks that are no longer in use, actions for cancellation on the grounds of non-use remain an effective strategic tool.
In conclusion, the Decision represents a noteworthy precedent that carefully balances the accuracy of the trademark register, the economic rationale of the registration system, and the proprietary nature of trademark rights. It further strengthens the role of the genuine-use requirement in Turkish trademark law.
- Court of Cassation, 11th Civil Chamber, decision dated 18 November 2008, numbered 2007/4588 E., 2008/13024 K.;Court of Cassation, 11th Civil Chamber, decision dated 4 December 2014, numbered 2014/13659 E., 2014/19032 K.
- Çolak, Uğur, “Türk Marka Hukuku”, 4th Edition, Istanbul, On İki Levha Publishing, 2018, p. 1011.
- Court of Cassation, 11th Civil Chamber, decision dated 30 April 2013, numbered 2012/10228 E., 2013/8675 K.; Court of Cassation, 11th Civil Chamber, decision dated 11 February 2020, numbered 2018/3682 E., 2020/1190 K.; Court of Cassation, 11th Civil Chamber, decision dated 4 February 2021, numbered 2020/627 E., 2021/877 K.
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