According to Turkish Trademark Legislation, if a trademark has
not been used or the use has been suspended for a five-year period,
the trademark shall be due for cancellation. A non-use action may
be initiated against the proprietor of the trademark on whose name
the trademark stands, at the time when the lawsuit is initiated.
However, what happens if the trademark is transferred to a third
party during the non-use action?
The Assembly of Civil Chambers rendered a landmark decision
about transfer of a trademark during the period that it is subject
to non-use actions. In a recent lawsuit covering this topic, the
assembly decided that the plaintiff should proceed to legal action
with the new proprietor. The assembly stated that the transfer of a
trademark has the same effect as the 'transfer of the
claim' and the assignee shall take over the trademark with
all its rights and claims. For this reason the ongoing non-use
action will remain as it is and will continue with the new
A new exception to use requirements
The Turkish Court of Appeals rendered a landmark decision
regarding the trademark use requirement. According to local
legislation and practice, only the use of a trademark in Turkey
fulfils that requirement. Additionally, importing goods bearing the
trademark is also considered as 'use' for that
The Court of Appeals granted a new exception to the above
explained rule. In a recent lawsuit which was filed against an
international broadcasting company for the cancellation of its
trademark (which is registered in class 38) based on non-use, the
court found that a trademark may meet the use requirement without
actually being produced or served within Turkish borders. In the
lawsuit, the plaintiff alleged that the defendant was not
broadcasting via cablecast and registered before the Radio and
Television Supreme Council for the last five years, which proved
that the subject trademark had not been in use in Turkey. The
defendant based its defence on the fact that the trademark was in
use in Turkey through Internet or satellite broadcasting. The
defendant also claimed that the subject channel can be viewed in
the public domain, including at hotels.
The Court of Appeals upheld the First Instance Court's
decision, stating that broadcasting services which are not served
within Turkey and provided via satellite or Internet are considered
as 'use of the trademark within Turkey', based on the
reason that the defendant's TV channels are easily viewed
by the general public in Turkey. The Court of Appeals stated that
'transmission' is defined as the 'initial emission
by terrestrial transmitter, by cable or by satellite or whatever
nature in encoded or unencoded form of television programme
services for reception by the general public' according to
article 2/a of the European Convention of Transfrontier
Even though the Trademark Decree Law no: 556 does not require
that the broadcasting or initial emission take place within Turkish
borders, the Court of Appeals agreed that the trademark is in use
in Turkey, since the general public can easily view a TV channel by
Internet or satellite even though the TV channel does not operate
in Turkey. In addition, developing technology enables the TV
broadcasting companies to provide their services through different
With this decision, the Court of Appeals created an important
exception to the use requirement in Turkey. In practice, the
Turkish Patent Institute and the First Instance Court have long
recognised the use of a trademark via online international shopping
sites as fulfilling the use requirement. It seems that with
globalisation, the principle of territoriality and use-requirement
within a territory will slowly be eroded.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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