The long-awaited Industrial Property Law (“IP Law”) which was entered into force on January 10, 2017 upon its publication within the Official Gazette on the same date brings significant amendments and changes to the Turkish trademark system. With this article, we would like to share the major amendments brought by the IP Law numbered 6769 to the trademark system and raise the possible ambiguities and risk areas:
- The name of the office:
The name of the office which was previously Turkish Patent Institute has been changed as Turkish Patent and Trademark Office (“Office”).
- Effective date:
The Law entered into force on 10.01.2017. However, according to the Temporary Article 1, the national and international trademark applications filed before the effective date of this Law shall be finalized in accordance with the legislation which was effective on the date of their application (meaning the Decree Law no. 566).
- Period of opposition to publication:
The opposition period following the publication of a trademark in the Official Trademark Bulletin has been decreased from 3 months to 2 months. However, according to the Temporary Article 1 of the Law no. 6769, the trademark applications filed before the effective date of this Law shall be finalized in accordance with the legislation which was effective on the date of their application, and thus it is considered that for the applications made before 10.01.2017, the period of opposition to publication will be calculated as 3 months. As a confirmation to this, in the Official Trademark Bulletin published on 12 January 2017 which was the first bulletin after entry into force of the new legislation, an announcement was made that the trademark applications published in this bulletin may be opposed within 3 months. It should be followed-up whether the Office will or will not apply a different method for the ease of operation for safeguarding the rights of the trademark owners.
- Co-existence of trademarks:
Co-existence of trademarks has, now, become possible provided that the owner of the earlier trademark provides his express consent to the registry of the application with a notarized consent letter and such consent letter is submitted to the Office. According to the “Draft Regulation on the Implementation of the IP Law”, it seems that the consent letter can either be submitted to the Office during the trademark application or until issuance of a decision by the Office upon appeal to the decision refusing the trademark application due to existence of the earlier trademark; and withdrawal of the consent letter will not be possible once it is submitted to the Office.
- Defence of non-use during an opposition:
One of the most significant changes of the Law no. 6769 is the “defence of non-use”. According to this, in the event that an opposition is filed against a trademark application on the basis of “likelihood of confusion/association”, the applicant may require with an express request made to the Office that the use of the trademark which is the basis of the opposition shall be proven by the opponent. The condition precedent, herein, is that on the date of trademark application or priority, the trademark which is the basis of the opposition shall have been registered at least for five years in Turkey. Upon request of the applicant, the Office may require submission of evidence which presents that the trademark has been seriously used in Turkey during those five years for the goods or services which constitute the ground of the opposition or there are justifiable reasons for non-use. If the use cannot be proven by the opponent, the opposition will be rejected. Moreover, if it is proven that the trademark which is the basis of the opposition is used for only a part of the goods and services within the scope of registration, the opposition will be reviewed just by taking the goods and services subject to use into consideration.
This provision brings highly important amendment within the Turkish Trademark Law which pushes all the trademark owners to re-evaluate their opposition strategies and think twice when deciding to oppose a new trademark application.
- Defence of non-use during an action:
Accordingly, in the trademark invalidation and trademark infringement actions based on “likelihood of confusion/association”, the “defence of non-use” can be raised. Although the period which shall be taken into consideration in the trademark infringement actions is “five years before the date of the action”, two separate periods shall be taken into consideration and shall be proven for invalidation actions:
- During the invalidation actions, the date of action shall be taken into consideration for the determination of five years and the proof of use during those five years prior to the date of the action is required.
- In addition, if the trademark of the plaintiff is registered at least for five years on the date of the challenged trademark application or priority, the plaintiff shall also prove that the conditions of use have been satisfied on the date of such application or priority or there are justifiable reasons for non-use.
The defence of non-use is significantly important during both the opposition proceedings and the invalidation and infringement actions and requires special evaluation for the determination of strategies in each case.
- Differences between the circumstances of invalidity and circumstances of cancellation and authority of the Office for cancellation:
The Law distinguishes between “the circumstances of invalidity” and “the circumstances of cancellation”. While the claim of invalidity can again be brought before the courts, according to article 26 of the Law, the cases of cancellation including the requests based on non-use of a trademark within five years as of the date of registration without justifiable reasons shall be evaluated and decided by the Office.
However, the provision on the cancellation authority of the Office will enter into force on 10 January 2024. Until this date, courts will use the cancellation authority.
- The effects of invalidity and cancellation
In parallel with the regulating the circumstances of invalidity and circumstances of cancellation separately, the effective dates of such decisions are regulated separately as well. According to this, in the event that the invalidity of a trademark is decided, this decision shall be effective as of the date of trademark application, and the protection conferred to this trademark shall considered as not provided. On the other hand, when the cancellation of a trademark is decided, this decision is effective as of the date of submission of such cancellation request to the Office (to the court until the entry into force). However, in the event of a request, if the conditions of cancellation have arisen on a prior date, the cancellation decision can be decided to be effective on such earlier date.
- For proving the use of trademark, the last three months of use not being taken into account:
If a registered trademark is put into use by considering that a cancellation request is likely to be filed against such trademark due to non-use, the use of this trademark in the last three months before submission of the request of cancellation to the court until 10 January 2024 and to the Office after such date will not be taken into account.
- The relative grounds of refusal for the “well-known trademarks” which are not registered in Turkey:
A provision parallel to the previous absolute ground of refusal under article 7/1-ı of the Decree Law no. 556 which was previously cancelled by the Constitutional Court has been set forth within the relative grounds of refusal under the Law. In accordance with article 6/1(4) of the Law, “the trademark applications, which are identical with or similar to the well-known trademarks within the scope of article 6bis 1 of the Paris Convention with respect to the identical or similar goods or services, shall be rejected upon opposition.”. Therefore, in accordance with article 6bis 1 of the Paris Convention, the trademarks which are well-known in their sector can be a ground for refusal of a trademark application or invalidity with respect to the identical and similar goods or services although they are not registered in Turkey.
- Special circumstance added to the circumstances of honest use:
As one of the changes brought by the Law, “the use where it is necessary to indicate the purpose of use of the good or services with respect to accessories, spare parts or replacement” is explicitly listed under the circumstances of honest use of a trademark. Accordingly, the trademark owner cannot prevent the honest use of its trademark by third parties in the ordinary course of business in the indicated manner.
- Raising an infringement claim against a registered trademark:
One of the most important provisions of the Law is that it is possible to raise an infringement claim against a registered trademark. Before the Law entered into force, it was not possible to raise an infringement claim against a registered trademark with the exception of bad faith. Therefore, the infringers tended to register the trademark first and use it afterwards and such use was not considered as infringement unless the bad faith was proven. However, now, in accordance with the wording of the article 155, a trademark owner cannot present his/her industrial property right as a ground of defence in a lawsuit filed by the right holders holding an earlier date of application or priority. Having said that interpretation and implementation of this provision by the judges will be formed in time.
- Loss of right by remaining silent:
If a trademark owner stayed silent for five consecutive years even though he/she knew or should have known that a later dated trademark is being used, he/she cannot present his/her trademark as a ground of invalidity unless the later dated trademark was registered with bad faith.
- Acts of Infringement:
In accordance with article 29 of the Law, the acts listed under Article 7 are considered as trademark infringement. Accordingly, as per article 7/3(c), “the export or import of the good carrying the sign” is an act of infringement. Under the Decree Law which was abrogated, such indication was set forth as “the entry of the good carrying the sign into the customs area, such good being subject to a transaction or use approved by the customs”. Moreover, as the Decree Law included the wording of “such good being subject to a transaction approved by the customs”, it was deemed to cover transit passes as well. Yet, since the provision of the new Law is limited with “the export or import of the good carrying the sign”, implementation of the new rule will clarify whether the transit passes not subject to export and import rules will be considered as infringing acts or not.
Again, the act indicated under article 7/3(e) as “the use of the sign as the tradename or business title” is also considered as an act of infringement. This provision imposes a significant duty of care to the merchants while they are choosing their tradenames or business titles, since the tradename or business title used by a merchant may be considered as infringement against an earlier trademark. As to the previous practice, only deregistration of the tradename or business title could have been claimed in these circumstances; however with this new provision, it became possible to raise further claims based on infringement.
Finally, the act of “use of the sign in comparative advertisement in an illegal manner” is listed within the acts of infringement.
- International Exhaustion:
Under the Decree Law, principle of exhaustion of a trademark right contained the expression of “after it is put on the market in Turkey” and in practice, this indication created discussions towards the understanding that it did not cover the “international exhaustion”. In the new Law, such a limitation has not been set forth and international exhaustion is put in practice.
- The persons who cannot be sued:
With respect to the infringing goods which (i) were put on the market by a person who paid indemnification to the trademark owner for the damages caused by such person and (ii) were not seized by the trademark owner, the trademark owner cannot file a civil lawsuit or file a complaint for the initiation of a criminal lawsuit against the third persons who use such goods for commercial purposes.
Having explained the most important amendments within the Law very briefly, it should also be stated that there was many hidden amendments within the Law which will come to light during the application of each provision on the conflicts and transactions. During this time period it is highly recommended to think twice before taking an action and discuss the possible results of the change of the law on possible strategies.