Under the Industrial Property Code 6769 (IP Code), which entered into force on 10 January 2017, a registered trademark will be vulnerable to cancellation if it is not used within five years of being registered.
The wording of Article 9 of the IP Code is similar to Article 14 of the now-repealed Decree-Law 556 on the Protection of Trademarks.
However, the Constitutional Court annulled Article 14 of Decree-Law 556 on the grounds that it was unconstitutional, as it had been regulated through an act of parliament rather than a decree-law. The decision was published in the Official Gazette on 6 January 2017, only four days before the IP Code entered into force.
As a result, this four-day gap paved the way for discussions on whether Article 9 of the IP Code could be enforced for existing cancellation actions. Although the general opinion was that non-use claims were in full effect from the IP Code's introduction, this general opinion was challenged on the grounds that Article 9 should not be enforced for five years. In other words, non-use cancellation actions would be possible only after 10 January 2023.
Most IP courts have proceeded with non-use cancellation actions since the IP Code came into force. However, a number of courts have rejected cancellation actions during first-instance proceedings due to dissenting opinions, stating that the provisions for non-use under the IP Code cannot be enforced retroactively.
The Supreme Court recently issued a decision regarding non-use cancellation actions and the enforcement of Article 9 of the IP Code retroactively.
The court decided that even though the IP Code was published in the Official Gazette on 10 January 2017, it had been ratified on 22 December 2016, before the Constitutional Court's decision on the annulment of Article 14 of Decree-Law 556.
The Supreme Court found that as Article 9 of the new IP Code had been introduced prior to Article 14's cancellation, the legislature could not have foreseen the date of the Constitutional Court's decision to annul Article 14 and thus Article 9 had been ratified days before the Constitutional Court's decision.
Accordingly, the Supreme Court ruled that the legislature's primary objective was that trademarks be cancelled retroactively if not used within five years of being registered.
The Supreme Court's decision has clarified the longstanding debate and unpredictability concerning the implementation of the new IP Code's non-use provision. The courts will now implement Article 9 against non-used trademarks without hesitation.
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