The Industrial Property Code (“IPC”) regulates the consequences of non-use of a registered trademark. One of the most important of these consequences is that, in trademark invalidation and trademark infringement actions brought by the trademark owner, the defendant may raise the defense that the trademark owner has not used its trademark. The legislator’s aim, through the provisions concerning the non-use defense, is to ensure that registered trademarks are actively used in the market.
A. The Concept of Use of a Trademark
The principles governing the use of a trademark are set out in Article 9 of the IPC. Accordingly, if, within five years from the registration date, the trademark has not been genuinely used in Türkiye by the trademark owner, without a justified reason, in relation to the goods or services for which it is registered, or if such use has been suspended for an uninterrupted period of five years, a decision for revocation of the trademark shall be issued. Pursuant to the aforementioned article, if the trademark is not used in the manner required by the article, the sanction of revocation may come into play. Through this sanction, the legislator aims to prevent merely formal use of a trademark and the unfair consequences arising therefrom. In judicial decisions, trademark use is explained as use of the trademark in the course of trade. For example, use of the trademark on advertising posters, price lists, catalogs, invoices, or employees’ clothing is considered trademark use.
Genuine use of a trademark, on the other hand, means use consistent with the function of the trademark and directly related to the goods or services for which it is registered. Within this framework, for use to be accepted as trademark use, the trademark must be used for the classes of goods or services for which it is registered. In addition, use of the trademark for only some of the goods or services for which it is registered does not satisfy the use requirement with respect to the other registered classes of goods or services.
Use of the trademark with different elements, provided that its distinctive character is not altered, and use of the trademark on goods or their packaging solely for export purposes are considered use of the trademark. Furthermore, use of the trademark with the permission of the trademark owner is also deemed use by the trademark owner. As is frequently encountered in practice, the trademark owner may authorize third parties to use the trademark through agreements such as license agreements, sub-license agreements, and franchising agreements that include trademark use.
B. Non-Use Defence in Trademark Invalidation Actions
Where one of the absolute or relative grounds for refusal exists, an invalidation action may be filed against a registered trademark. An invalidation action may be brought by interested parties, public prosecutors, or the relevant public institutions and organizations. If, as a result of the invalidation action, the trademark is declared invalid, the registered trademark is removed from the trademark registry. The effects of an invalidation action operate retroactively, and the protection provided under the IPC is deemed never to have arisen as of the trademark application date.
According to Article 19 of the IPC, in objections made under paragraph 1 of Article 6, provided that the trademark serving as the basis for the objection has been registered in Türkiye for at least five years as of the application or priority date of the contested application, upon the applicant’s request, the opponent shall be required to submit evidence showing that, during the five-year period preceding the application or priority date of the contested application, it has genuinely used the trademark forming the basis of the objection in Türkiye in connection with the goods or services relied upon in support of the objection, or that there are justified reasons for non-use. If the opponent fails to prove these matters, the objection to the trademark application shall be rejected. This provision introduces a defence mechanism for applicants against objections filed to trademark applications. Accordingly, where, under Article 6/1 of the IPC, an opponent objects to a trademark application based on its trademark, the applicant may request that the opponent prove use of the trademark during the five-year period preceding the application date, provided that the trademark relied upon by the opponent had been registered in Türkiye for at least five years as of the application date.
By virtue of the reference made to Article 19 in Article 25/7 of the IPC, the non-use defence may also be raised in invalidation actions. In this context, in an invalidation action brought on the ground of likelihood of confusion, the defendant may raise as a defense that the plaintiff has not used its trademark for more than five years in the manner prescribed by law. In determining the relevant five-year period for use, the filing date of the action is taken as the basis. If, on the application or priority date of the trademark that is the subject of the invalidation action, the plaintiff’s trademark had already been registered for at least five years, the defendant may also, under Article 19/2 of the IPC, request proof that the trademark was used during the five-year period preceding the application or priority date.
The plaintiff’s non-use of its trademark constitutes a defence, and therefore it must be expressly raised by the defendant; the court does not take this circumstance into account ex officio. If the non-use defence is raised and the plaintiff fails to prove use of its trademark, the invalidation action shall be dismissed.
C. Non-Use Defence İn Trademark Infringement Actions
The acts below shall be considered as infringement of trademark right;
- To use the trademark as set out in Article 7 without the consent of the trademark proprietor;
- To counterfeit the trademark by using the trademark or a confusingly similar trademark without the consent of the trademark proprietor;
- While being aware or should be aware that the trademark is counterfeited by use of the trademark or a confusingly similar trademark, to sell, distribute, put on the market in a different form, possess for commercial purpose, import, export the products carrying infringed trademark or to offer to make a contract related to this product,
- To broaden or to transfer to third parties, without consent, the rights given by the trademark proprietor through license.
Acts deemed to constitute trademark infringement are set out in Article 29 of the IPC. Pursuant to the
Pursuant to Article 29/2 of the IPC, the provision of Article 19/2 may be raised as a defence in infringement actions. Within this framework, in a civil action brought by the trademark owner alleging infringement of its trademark, the defendant may request that the plaintiff prove that its trademark has been used during the relevant five-year period in accordance with the principles set out in the IPC. The relevant five-year period for use is determined based on the date the action is filed.
D. Conclusion
Pursuant to Article 25/7 and Article 29 of the IPC, in trademark invalidation and trademark infringement actions, the defendant may raise the defence under Article 19/2 that the plaintiff’s trademark has not been used. In that case, the plaintiff must prove that its trademark was used during the five-year period described in the provision, in accordance with the principles set out in the IPC. Otherwise, the plaintiff’s trademark invalidation action or trademark infringement action may be dismissed.
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