The Turkish Court of Appeal and Assembly of the Civil Chamber recently considered a claim where the defendant was alleged to have used the plaintiff's trade name as a trademark. The First Instance Court dismissed the plaintiff's claim, holding that the plaintiff had lost its rights by remaining silent. The higher court overturned this decision.

In the dispute at hand, the plaintiff sought a remedy for infringement as well as compensation. It claimed the defendant's use of its trade name constitutes trademark infringement. After filing the lawsuit, the plaintiff assigned the basis trademarks to a third party and notified the court.

The defendant requested dismissal of the action. The Defendant argued that it had invested in the trade name for many years and its signs are not confusingly similar with the plaintiff's signs.

The First Instance Court accepted that use of the trade name extends to its use as a trademark. However, The Court refused the plaintiff's request. The lower court held that the defendant had obtained a legal interest on the basis that the plaintiff did not take any precautions and had lost its rights regarding the trademark infringement by remaining silent. The plaintiff appealed the decision to the Court of Appeal.

The Court of Appeal ruled to reverse the First Instance Court's decision. However, the First Instance Court insisted on its ruling, causing the matter to be referred to the Assembly of the Civil Chamber.

Since the basis trademark was assigned to a third party, the Assembly of the Civil Chamber firstly noted that the party who was assigned the basis trademark may proceed as the plaintiff (Article 125 of Turkish Code of Civil Procedure).

The Assembly of the Civil Chamber overturned the First Instance Court's grounds for insistence on the basis that:

  • A five year limitation period applies to actions regarding invalidation of registered trademarks. Therefore, it is unacceptable to apply a final period of less than five years for disputes regarding non-registered trade-marks, which have less protection mechanisms than registered trademarks.
  • The plaintiff had already filed oppositions against the defendant's previous trademark applications. Therefore, the plaintiff's remaining silence period, lasting less than five years, does not constitute loss of right due to remaining silent.

The Case reference: Yarg. HGK.18.02.2015, 2013/11-1358 E. 2015/820 K.

Information first published in the MA | Gazette, a fortnightly legal update newsletter produced by Moroğlu Arseven.

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