Despite annulment of Article 14 of the Decree No. 556 by the Turkish Constitutional Court has created a lacuna about the legal ground of the use obligation of trademarks; the proprietor always had the obligation for using its trademark in Turkish and international Trademark Law. In a nutshell a trademark that has not been genuinely used in Turkey for at least continuous 5 years, the trademark can be requested to be cancelled due to non-use of the trademark, unless there is a justification for non-use of the trademark. This article studies the justifications that can be shown for non-use of a trademark in consideration of the current case-law.
2. The Notion of "Use of Trademark" under the Current Legislation and Due Evidence of Use
The main function of a trademark is to address the commercial entity of the products or services bearing the trademark. Therefore, the driving force of having a trademark registered for the proprietor is to use the trademark. Accordingly the proprietors are expected to use their trademark on the goods and services within the scope of the trademark.
The trademarks that are not subject to "genuine use" in Turkey can be requested to be removed from the trademark registry through a request filed before competent courts. As per Article 9 of the Turkish Industrial Property Code No. 6769 ("IPC"), in short, (i) the trademark should be used; (ii) the use should be genuine; and (iii) the genuine use should be conducted in Turkey.
The notion of use of trademark refers to commercial use. In other words, the trademark can be considered to be used if the said uses aim to gain a profit and to create or protect a market share out of it. In parallel to this, performing serious efforts to protect the trademark against trademark infringements has not been considered as "trademark use" by the Court of Appeals ("CoA"), under its decision numbered 2007/4588 E. 2008/13024 K. and dated November 18, 2008.
The proprietors are given 5 years of grace period from the registration of trademark to the trademark registry as per Article 9 of the IPC, with a view to allow making necessary arrangements for genuine use, for instance R&D or creating supply chain.
The magnitude of use is also another issue in determination whether the trademark has or has not been used in the context of the obligation for trademark use. In general, use of a trademark should be genuine enough to meet the obligation. Since the concept of "genuine use" has been introduced to the IPC recently in January 2017, there are not much comprehensive precedents in Turkish Trademark Law on what the genuine use is. But it could be said that symbolic use of the trademark is not considered genuine. In fact, symbolic use of the trademark, for instance in the last three months of fifth year of non-use, is considered as an attempt to prevent the risk of facing removal of the trademark.
Also the magnitude of use should be efficient enough to create or protect the market share. The sufficiency use can differ depending on the goods and services. For instance, the sale of 500 wafers is not deemed sufficient for trademark use, while the sale of 10 luxury private jets is deemed sufficient.
Similarly, the CoA has made a similar assessment about on the magnitude of use that can be considered as genuine use, and concluded - with its decision numbered 2014/2295 E. 2014/8122 K. and dated April 30, 2014 - that 2 (two) invoices do not suffice submitted to prove the genuine use as it cannot be considered sufficient to create a market share.
The final main element of use is the "location" of the use, which should be Turkey as per Article 9 of the IPC, but the use does not necessarily have to in the whole country. From this aspect, the use of a trademark outside of Turkey will not be fulfilling the obligation. However, this is assessed with such a strict approach. As long as the goods and services can be provided in Turkey, the CoA accepts that the trademark is being used on Turkey. The SKY decision of CoA - numbered 2009/3437 E. 2011/2191 K. and dated March 03, 2011 - is a case where the world famous SKY is being evaluated in respect of the location that its services are provided. The CoA concludes that, considering the present technology, the television channels do not have to have physical organizations and equipment to provide television broadcast in a place. Accordingly, since the broadcast can be watched by more than 600.000 people on its websites online from Turkey, it is evident that the services rendered within the scope of the SKY trademark exist - and thus the trademark is being used - in Turkey.