Existing legislation
According to the Article 14 of the existing version of Decree-Law 556 on Trademarks, it is possible to institute a court action for the cancellation of a registered trademark on the basis of non-use if the trademark has not been used for the previous five years. However, non-use can only be claimed before the IP Court; the Patent Institute is not entitled to evaluate the use of a trademark, even if non-use is claimed by one of the parties during the examination of an objection or opposition. Further, there is no clear provision concerning non-use in Decree-Law 556.
Proposed changes under draft IP law
Article 19 of the draft IP law states that during the examination of an opposition filed against a trademark application, the Patent Institute (on the request of the applicant) may ask the opponent to prove the use of the trademark on which the opposition is based. If the opponent cannot prove the use of the trademark in Turkey or there is no legitimate reason for non-use, the opposition will be rejected.
If use of the trademark is only proven for some of the goods or services in question, examination of the opposition will be limited to the goods or services for which use has been proven by the opponent.
Further, Article 25 states that during the examination of a cancellation action instituted on the basis of the risk of confusion between trademarks (Article 6(1)), the non-use of the trademark on which the cancellation action is based can be asserted as a counterclaim by the defendant. Similarly, Article 29 states that a non-use counterclaim can also be put forward as part of a trademark infringement action by the defendant.
Articles 19, 25 and 29 of the draft IP law clearly indicate that non-use can be asserted as a counterclaim:
- during the examination of an opposition by the applicant; or
- by the defendant during litigation before the court.
The failure of the trademark holder to prove its use will result in the rejection of the opposition to the court action (where relevant) and can trigger the counterpart in a trademark dispute to question the validity of the trademark on the basis of non-use. The proposed version of the draft IP law complies with Article 42 of EU Trademark Regulation (2015/2424/EU).
For further information on this topic please contact Bilge Taskara or Okan Çan at Deris IP Attorneys by telephone (+90 212 252 6122) or email ([email protected] or [email protected]). The Deris website can be accessed at www.deris.com.tr.
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