In 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; and
  • prior registration does not constitute an acquired right to the new application.

Facts

Company 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.

Decision

Company 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.

Comment

The 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 Taskara or Emre Kerim Yardimci at Deris Attorneys At Law Partnership by telephone (+90 212 252 6122) or email (bilge.taskara@deris.com or kyardimci@deris.com.tr). The Deris website can be accessed at www.deris.com.tr.

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