The Council of Appellate Circuits of the Turkish Court of
Appeals (the council) recently rendered a key decision (2010/11-695
E., 2011/47 K) with regard to well-known trademarks' usage
requirements in different classes. As it is widely known,
well-known trademarks' usage requirements and protection in
different classes is a contentious issue in many jurisdictions. The
council has finally decided that a well-known trademark cannot be
protected in different classes and will be partially cancelled if
the trademark is not in use in these classes. Actually, this
decision might create a paradox with the expanded well-known
trademark protection in different classes.
In the subject case, a foreign company started a non-use action
against a well-known Turkish furniture company that actively uses
its trademark only in class 20, but owns registrations for whole
classes. The claimant claimed the partial revocation of the subject
trademark for all classes other than class 20. The First Instance
Court (FIC) dismissed the case based on the grounds that well-known
trademarks should be protected for all the goods and services
covered. The FIC stated that, although there is no exception for
use requirement of well-known trademarks in Trademark Decree Law
no: 556, the provisions of this legal arrangement should be
interpreted together with Article 8/4 of the same, which expands
the protection of well-known trademarks.
The claimant appealed the decision. The Appeals Court reversed
the decision of the FIC with the reasoning that well-known
trademarks can be subject to non-use actions. The Appeals Court
stated that the usage requirement provisions do not have an
exception for well-known trademarks. A well-known trademark can be
subject to non-use action and to partial revocation for the classes
in which it is not in use.
The Decree Law no: 556 expands the protection of well-known
trademarks with Art. 8/4; this article gives the well-known
trademark owners the right to oppose or initiate a lawsuit against
an applicant who tries to register the well-known trademark in
different classes. In other words, the provision that provides
enhanced protection for well-known trademarks does not bring an
exception with regard to the usage requirement. The file was sent
back to the FIC.
The FIC insisted on its original decision, so it was appealed
and sent to the council by the claimant. The council reversed the
FIC's decision in keeping with the Appeals Court, but with more
detailed grounds. The council stated that there is no exception in
Decree Law no: 556 for well-known trademarks with regard to the
five year usage requirement. On the other hand, Decree Law no: 556
Art. 7/1-(i) and Art. 8/4 give the right for the trademark owner to
oppose or start a cancellation action against any trademark which
is similar/identical with the well-known trademark in different
Articles 7/1-(i) and Art. 8/4 of Decree Law no: 556 protect
well-known trademarks in case the well-known trademark owner can
prove that the other party will gain an unfair and unlawful benefit
from the well-known trademark and that the average consumer will
link the other party's trademark with the well-known trademark.
The council is of the opinion that since 7/1-(i) and Art. 8/4 will
protect well-known trademarks, there is no reason to immunise
well-known trademarks from the usage requirement. On the other
hand, as a result of the above explained reason, the Turkish Patent
Institute cannot ex-officio reject a trademark application
which is similar/identical to a well-known trademark but covers the
classes that the well-known trademark does not cover or actively
In conclusion, the council decided that well-known trademarks
can also be subject to partial revocation for the classes which are
not in use. In Turkey the decisions of the council set precedence
for the First Instance and Appeals Courts. Although this decision
might be considered fair for this case, since it will be binding
precedent, it will create a paradox with the expanded well-known
trademark protection in different classes. The well-known trademark
owners may have difficulties because of this decision.
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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