On December 14, 2016, the Turkish Constitutional Court cancelled Article 14 of the Decree No. 556 on the Protection of Trademarks1 ("Trademark Decree"). Article 14 of the Trademark Decree enables those interested to institute a court action for the cancellation of a registered trademark based on non-use if the trademark has not been in use for 5 years starting from the date of registration. The cancelled article was the only one in the Trademark Decree that sets the criteria for the term of "use," which is defined as follows:
- use of the registered mark with different elements which do not alter the distinctive character of the trademark;
- use of the trademark on goods or their packaging solely for export purposes;
- use of the trademark with the consent of the proprietor; and
- importing of the goods carrying the trademark.
The Trademark Decree had long been criticized for lacking constitutional grounds: under the Turkish Constitution, fundamental rights can only be limited by law and not by decree. The Turkish Constitutional Court ruled that, as a fundamental property right, a trademark right cannot be cancelled due to lack of use based on a decree regulation.
Legal Basis for Cancellation
The Istanbul 2nd Intellectual Property Courts of First Instance filed a request with the Turkish Constitutional Court asking for the cancellation of Article 14 of the Trademark Decree, claiming that trademark right is a property right and cannot be regulated based on a decree.
Turkey has suffered a chronic weakness in protecting industrial property rights (trademarks, patents and designs); these were first regulated by various decrees (Kanun Hükmünde Kararname) adopted in 1995.2 The decrees were Turkey's first steps toward harmonizing its intellectual property laws with EU regulations and fulfilling its obligations to the European Union–Turkey Customs Union. The decrees were intended to be a temporary solution during the transition period of harmonization, but have remained in force for over twenty years. In the last two years, the Turkish Constitutional Court cancelled many other provisions found to limit such rights.3 The Trademark Decree has proved problematic, for in various instances over the last decade, the Turkish courts have concluded that it limits fundamental rights.
The Constitutional Court accepted the local court's reasoning and annulled Article 14 in its entirety. As a result, the Turkish Constitutional Court abolished one of the most utilized tools against unused trademarks.
How this will affect the practice?
The annulment of Article 14 is a ground breaking development for both right owners and practitioners in Turkey. With its annulment, a new law will address Article 14's issues and enable the cancellation of the unused trademarks: the Law No. 6769 on the Protection of Industrial Property Rights ("Industrial Property Law").4 The Industrial Property Law passed the Grand National Assembly on December 22, 2016 and will be in force once published in the Official Gazette. Until the law's publication, and with Article 14's cancellation, there is no effective governing regulation.
One of the most important aspects of the Trademark Decree was abolished with the annulment of Article 14; with this annulment, and until the new law is in force, there is currently no available remedy against unused trademarks with expired grace periods. Practitioners' main concern is that ongoing cases will be affected by this decision since they are under threat of being dismissed. It is still unclear whether the Courts will wait the enforcement of the Industrial Property Law to hold a decision or dismiss the pending cases on lack of legal grounds.
As has been discussed for years, the Trademark Decree is inadequate and does not meet modern intellectual property practice. The Industrial Property Law will ensure that Turkey’s intellectual property law is better suited to the needs of intellectual property right owners, and in a framework more harmonized with EU and global practice.