Bilge Taskara Emre Kerim Yardımcı November 7 2016 Refiling of trademark subject to cancellation action deemed to be in bad faith Deriş Patents and Trademarks Agency | Intellectual Property - Turkey Bilge Taskara, Emre Kerim Yardımcı Intellectual Property FactsDecisionCommentIn an August 22 2016 decision (2016-M-8281), the Turkish Patent Institute's Higher Council determined that:the refiling of a trademark that is subject to a cancellation action cannot be deemed to have been in good faith; andprior registration does not constitute an acquired right to the new application.FactsCompany A was the owner of the registered trademark 2003/XXXX for Classes 6, 19 and 20. Company B filed a trademark application for the same trademark in Class 20 with the application number 2010/XXXX, which was rejected due to the prior registered trademark 2003/XXXX.Company B instituted a court action for the cancellation of Company A's registered trademark 2003/XXXX on the basis of non-use before the Supreme Court. During the court action, Company A refiled an application for a trademark with an identical denomination for the same classes. The application was recorded with the Turkish Patent Institute under application number 2011/XXXX.Subsequently, Company B filed an opposition against the refiled application 2011/XXXX, claiming that Company A had refiled in order to overcome any possible negative outcome of the pending court action instituted against its prior registered trademark. Thus, the application had been filed in bad faith.Company B had enjoyed a prior use on the trademark in Class 20 before 2010.DecisionCompany A's 2011/XXXX application was definitively rejected by the Higher Council, which determined that the prior registered trademark 2003/XXXX had been the subject of a dispute between the parties before the courts and was under threat of cancellation. Therefore, the prior registered trademark 2003/XXXX did not constitute an acquired right on the denomination subject to the opposition (ie, trademark 2011/XXXX).The approval of application 2011/XXXX would have nullified any legal outcome that arose (in the event that registered trademark 2003/XXXX had been cancelled by the court) in favour of Company B. It was therefore decided that application 2011/XXXX had been filed in bad faith.CommentThe Higher Council's decision is an important and expected development in preventing the accumulation of non-use trademarks in the Trademark Register.It is yet to be determined whether the refiling of a trademark application in the absence of an ongoing dispute can be considered a bad-faith application.For further information on this topic please contact Bilge Taşkara or Emre Kerim Yardimci at Deris Attorneys At Law Partnership by telephone (+90 212 252 6122) or email ([email protected] or [email protected]). The Deris website can be accessed at www.deris.com.tr.