POTENTIAL RISKS ASSOCIATED WITH THE NON-USE OF A REGISTERED TRADEMARK

24.10.2018

 

A trademark right provides many advantages for an author that can be protected against infringers. Trademark can also involve the shape, colour, name etc. After Trademark Decree Law No. 556, which had been cancelled by the Turkish Constitutional Court, the Industrial Property Law No. 6769 was promulgated. IPL regulates results from non-use of a registered trademark as follows;

“If, within a period of five years following the date of registration, the trademark has not been put to genuine use in Turkey by the trademark proprietor in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be revoked, unless there are proper reasons for non-use.”

If there is a non-use of a registered trademark, partial or full of the our trademark registration will be cancelled. Secondly, accordance with IPL Article 19/2 stating that “Regarding oppositions filed in the scope of the first paragraph of Article 6, provided that the trademark, which is the ground for opposition, has been registered for at least five years at the date of application or date of priority of the application for which the opposition is filed, upon the request of the applicant, it shall be requested from the opponent to submit evidence proving that he had genuinely used his trademark on the goods and services relating to the opposition during the five-years period before the date of application or the date of priority of the latter application or whether he has a proper reason for not using his trademark during that period. In case the opponent fails to prove the aforesaid, opposition shall be refused. If it is proven that the trademark, which is the ground for opposition, has been used only for some of the goods or services which are covered by registration, then the opposition shall be examined taking into account the goods or services whose use is proven” objections in accordance article 6/1, provided that the objection reason of the Trademark and application for the appeal has been registered at least 5 years in Turkey on application or priority date after the request from the applicant, evidences about the trademark is seriously being used and there are valid reasons for not using it in 5 years before the application or priority date will be requested from the owner objections. The objection must be rejected if these considerations can’t be proved by the owner of objections. If the reason for the appeal of the Trademark is proved that it is used only for a part of the goods or services within the scope of registration then just the proven goods and services will be taken into consideration.

According to with Article 25/7 of the IPL saying that “In the invalidation proceedings filed pursuant to first paragraph of Article 6, the provision of second paragraph of Article 19 may be asserted as a defense. In this case, date of proceeding shall be taken as the basis in determining the five-year period regarding use. If the plaintiff’s trademark has been registered for at least five years at the application date or at the date of priority right of trademark for which invalidation is requested, the plaintiff shall also prove the fulfillment of the conditions specified in the second paragraph of Article 19 at the aforesaid date of application or date of priority right”, Article 19/2 can bring forward as an exception.