Turkey: Review Of The Constitutional Court Decision On The Cancellation Of Article 42/1(C) Of The Decree Law No. 556, Regarding Nullity Of Trademarks Based On Nonuse

Introduction

The Constitutional Court, with its recent decision of April 9th, 2014, numbered 2013/147 E. and 2014/75 K., cancelled Article 42/1(c) of the Decree Law on Protection of Trademarks No. 556 ("Decree Law"), upon request of İstanbul 4th Civil Court for Intellectual and Industrial Property Rights. Article 42/1(c) of the Decree Law, which is subject to the cancellation of the Constitutional Court, stipulated that a registered trademark should be declared null by the court in case it violates Article 14 of the Decree Law.

Article 14 of the Decree Law reads that if, the registered trademark has not been used within a period of five years without a justifiable reason, or if the use thereof has been suspended for an uninterrupted period of five years, the trademark should be declared null. Therefore, following the Constitutional Court's decision on cancellation of the relevant provision, the nonuse of a trademark will not lead to the nullity of a trademark and merely the cancellation of a trademark may be requested. In this article, the principle on compulsory use of trademark and the sanction based on the nonuse of a trademark will be examined. Then, the Constitutional Court's Decision will be evaluated by touching upon its reasons.

1. Compulsory Use of Trademarks under Decree Law.

Under Turkish law, the use of a trademark is compulsory. With the principle on compulsory use of a trademark, it is aimed to offer the trademarks to the third parties, in case they are not used and therefore to clean up the trademark records from the non-used trademarks1.

As mentioned within the Assembly of Civil Chambers' decision2, the right owner's obligation on the compulsory use of its trademark starts as from the registration date of the trademark, when the registration certificate is given to the right owner. As per Article 14 of the Decree Law, (i) use of the registered trademark in a form differing in elements that do not alter the distinctive character thereof, (ii) use of the trademark on goods or their packaging solely for export purposes, (iii) use of the trademark with the consent of the proprietor and (iv) importation of the goods bearing the trademark are considered as use of a trademark. The circumstances which are deemed a use of the trademark are not limited with the above-mentioned circumstances.

Additionally, a trademark may only be considered as used under Decree Law, in the events that (i) it is used in serious way, (ii) in Turkey, (iii) for an uninterrupted period of five years and (iv) for all goods and services in which the relevant trademark is registered3.

1.1. The trademark should be used by the right owner in a serious way.

Article 42/1(c) of the Decree Law stipulates that the use of a trademark should also be serious. The Decree Law does not have any guidance on when a use of a trademark is considered as serious. On the other hand, within the doctrine4, it is mentioned that the right owner should create a market for the goods and services in which the trademark is registered, the trademark should provide benefits to the right owner by being used effectively, consistently and in conformity with their functions.

High Court of Appeals for the 11th Circuit's decision of 07.04.20145, notes that, the commercial books, commercial records and invoices issued by the company in the last previous 5 years as from the lawsuit date should be examined in order to determine whether the right owner used its trademark seriously. This is due to the fact that consumer demands and the market of the goods or services in which the trademark is registered, should be determined upon such examination.

The length of the serious use is not important. Even the trademark is used seriously for a short time of period, the trademark should be considered as used6. Nevertheless, as per Article 42/1(c), which has already been cancelled, the court could not take into consideration the use made during the three months prior to the initiation date of the lawsuit.

1.2. The trademark should be used in Turkey.

As a result of the territoriality principle, it is accepted on the doctrine that the trademark is deemed used if it is used in all over Turkey or in some region of Turkey7. The High Court of Appeals' for the 11th Circuit, in its decision of 03.03.20118, decided that tv contents broadcasted in Turkey though Internet websites are considered as used in Turkey.

1.3. The Trademark Should Be Used For An Uninterrupted Period of Five Years.

The use of the trademark may be interrupted in case there is a valid reason. The circumstances which may be deemed a valid reason are not mentioned within the Decree Law. On that note, Article 19/1 of The Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"), to which Turkey is a signatory country, should be taken into account along with the High Court of Appeals' precedents. As per the relevant article, circumstances arising independently of the will of the right owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, are recognized as valid reasons for nonuse9. In Turkey, as per High Court of Appeals' precedents'10, the bankruptcy of a company, seize of the goods bearing the registered trademark, or expropriation are not deemed valid reasons.

1.4. The Trademark Should Be Used For All Goods And Services In Which The Relevant Trademark Is Registered.

The right owner should use the trademark in registered goods and services for which the trademark is registered and protected. If the right owner uses his/her trademark only for some groups of goods and services for which it is registered, the condition of usage will be considered as fulfilled only in respect of those goods or services. As noted by the High Court of Appeals for the 11th Circuit's decision, dated 07.04.2014, numbered 2013/18730 E. and 2014/6732 K., the nullity of the trademark for a part of the goods and services in which the trademark is not used may be requested.

2. Sanction of the Non-Use of A Trademark before the Cancellation of Article 42/1(c) of the Decree Law.

As per Article 42/1(c) of the Decree Law which is recently cancelled by the Constitutional Court; it was stipulated that a registered trademark should be declared null by the court in case it violates Article 14 of the Decree Law.

As mentioned within Article 44 of the Decree Law, the final decision declaring nullity have retroactive effects and a trademark which is recognized as null is deemed as if it has never been registered, while a cancellation of a trademark has proactive effects. Nevertheless, in Turkey, before the Constitutional Court's decision, the sanction of the non-use of a trademark was being null, in contraction of the Bylaw on European Union Community Trademark and TRIPS which stipulate that the trademark should be cancelled in case of nonuse. In fact, in doctrine, it was argued that, the sanction for a nonuse of trademark should be the cancellation as mentioned within the wording of Article 14 of the Decree Law, which regulates the use of trademark11. This is due to the fact that the nonuse of a trademark is not a reason for being null since such reason does not exist at the date of the trademark's registration. Therefore, a trademark which is lawfully registered should not be deemed as it has never been registered and not be suffering rage of nullity's retrospective effects.

In practice, the recent High Court of Appeals' decisions were in line with the doctrine and European Union legislation. In the decisions of the High Court of Appeal's 11th Circuit dated 09.01.2009 and 01.03.201312, it was mentioned that in case a trademark is deemed unused under Article 14 of the Decree Law, the trademark should not be recognized as null from the registration date but should be cancelled as of the date when the lawsuit is initiated.

3. The Constitutional Court's Decision on the Cancellation of Article 42/1(c) of the Decree Law, Regarding Nullity of Trademarks Based on Nonuse of the Right Owner

3.1. Background of the Decision.

On the dispute subject to the lawsuit, the plaintiff requested the cessation of the infringement, monetary and moral damages of its trademark along with the nullity of the trademark registered in the name of the defendant, numbered 20.03/20195. On the counter-lawsuit, the defendant requested the nullity of the plaintiff's trademark numbered 99/022976 due to nonuse. The court of first instance decided for the nullity of both trademarks based on the nonuse. The relevant decision is appealed and the High Court of Appeals reversed the decision of the court of first instance given with respect to the nullity of the trademark numbered 20.03/20195 based on insufficient examination and approved the court of first instance decision regarding the nullity of the trademark numbered 99/022976. It is stated within the High Court of Appeals that the trademark of 99/022976 is null as from its registration date, retrospectively.

3.2. The Arguments of İstanbul 4th Civil Court for Intellectual and Industrial Property Right and the Decision of the Constitutional Court.

İstanbul 4th Civil Courts for Intellectual and Industrial Property Rights applied to the Constitutional Court for the cancellation of Article 42/1(c) on the grounds that the relevant article violates Articles 2, 35 and 91 of the Turkish Constitution.

In its application, İstanbul 4th Civil Courts for Intellectual and Industrial Property Rights argued below mentioned issues:

- Although it is fair to impose sanction due to the nonuse of a trademark, this sanction should be the cancellation of the trademark, having proactive effects, instead of nullity. It is noted that in international and European Union legislation the sanction of a nonuse of trademark is the cancellation of the trademark, i.e. Article 51 of the Bylaw on European Union Community Trademark No. 207/2009 and Article 12 of Directive on European Union Trademark Community. This is due to the fact that the nonuse of a trademark is not a reason existing on the registration date of the relevant trademark but appears later, when the conditions set forth under Article 14 occur. Furthermore it is pointed out that, a trademark which will be deemed null and non-exist as of the date of the registration should not be subject to an examination on the likehood of confusion. The right owner's trademark which is ante-date will not be protected as of the date it is deemed null, against to a trademark which is registered later than itself.

- The relevant article violates Article 2 of Turkish Constitution which protects the acquired rights and enabling the security of legal transactions by stipulating that Turkish Republic is a state of law.

- It violates Article 35 of Turkish Constitution stipulating the property rights due to the fact that nullity has retroactive effects and the property right of a right owner is damaged for the period until it has been deemed null since it is deemed as if it has never been registered.

- It also violates Article 91 of Turkish Constitution, since the relevant Article 42/1(c) limits the right of property, which is protected under Turkish Constitution, by a decree instead of a law.

In conclusion, the Constitutional Court cancelled Article 42/1(c) of the Decree Law, based on Article 91 of Turkish Constitution and did not go through an examination on Article 2 and Article 35 of Turkish Constitution. The Constitutional Court noted that trademark right is a property right and as per Article 91/1 of the Turkish Constitution, Grand National Assembly of Turkey may empower the Council of Ministers to issue decrees having the force of law with the exception of martial law and states of emergency, the fundamental rights, individual rights and duties included in the first and second chapters and the political rights and duties listed in the fourth chapter of the second part of the Constitution. Therefore since the Decree Law limits the trademark right, which is an individual property right, of the right owner retrospectively being against to Article 91/1 of the Turkish Constitution, Article 42/1(c) is cancelled. It is also mentioned that nullity of a trademark is against to the principle of acquired rights.

3.3. What is Changed?

Article 42/1(c) of the Decree Law is cancelled and therefore the nullity of a trademark based on nonuse should not be any more requested before court. Nevertheless, Article 14 of the Decree Law is still in force and a trademark which is deemed unused under Article 14, should be cancelled upon request. The cancellation of a trademark has proactive effects and therefore a trademark will be considered cancelled as of the court's decision with respect to the cancellation.

The Constitutional Court's decision is indeed in line with High Court of Appeals' precedents, international legislation and doctrine. Nevertheless, the relevant decision falls short since it does not cancel other provisions which should be subject to the cancellation of a trademark instead of the nullity. Under Article 42 (i) where the trademark has become generic for the goods or services through the action of the proprietor of the trademark (ii) where, as a result of the use made by the proprietor or by the person authorized by him/her, there is a likelihood of confusion on the part of the public as to the nature, quality, place of production and geographical origin of the goods or services for which it is registered and (iii) where it is used in violation of Article 59, which regulates the use against technical regulations of the Decree Law, the nullity of a trademark should be requested. However, all those circumstances, as like as Article 42/1(c) which is cancelled, are not based on reasons which were not existed on the date of the registration and occurred in a later date. Therefore those circumstances should only lead to the cancellation of the trademark. Nevertheless, the Constitutional Court did not touch upon Article 42/1(d), Article 42/1(e), Article 42/1(f), and therefore is insufficient to solve completely the complication.

4. Conclusion

A trademark which is not used in a serious way, in Turkey, for an uninterrupted period of five years in all goods and services to which the trademark is registered, the trademark is considered as nonuse. Before the Constitutional Court's decision subject to our article, the nullity, having the retroactive effects could be requested when the conditions set forth under Article 14 exist and the trademark were deemed null as of its registration date. After the Constitutional Court's decision, in case the trademark is not used by the right owner, only its cancellation, having the proactive effects may be requested. Although the Constitutional Court's decision is based on legal grounds, it is insufficient since it does not address to the other circumstances which should lead to the cancelation of a trademark, instead of the nullity. The cancelation of the trademark should be decided on the circumstances mentioned within Article 42/1(d), Article 42/1(e), Article 42/1(f), since such circumstances occur after the registration of the trademark exist.

Footnotes

1.Sekmen, O. "Nullity of Trademarks and Its Legal Consequences" ("Markanın Hükümsüzlüğü ve Hukuki Sonuçları"), 2013, Bilge Yayınevi, Ankara, p.203.

2.The Assembly of Civil Chambers's decision dated 12.12.2007, No. 2007/11-974 E. and 2007/962 K.

3.Sekmen, O. "Nullity of Trademarks and Its Legal Consequences" ("Markanın Hükümsüzlüğü ve Hukuki Sonuçları"), 2013, Bilge Yayınevi, Ankara, p.211.

4.Tekinalp Ü., "Intellectual Property Law" ("Fikri Mülkiyet Hukuku"), 2012, Vedat Yayınevi, Istanbul, p. 460.

5.High Court of Appeals for the 11th Circuit decision of 07.04.2014, numbered 2013/18730 E. and 2014/6732 K.

6.Karakan S., Suluk, C., Saraç T., Nal, T. "Principles of the Intellectual Property Law" ("Fikri Mülkiyet Hukukunun Esasları"), 2007, Seçkin Yayınevi, Ankara, p. 154.

7.Meran N. "Trademark Rights and Their Protection" ("Marka Hakları ve Korunması"), 2008, Seçkin, Ankara, p. 263.

8.High Court of Appeals' for the 11th Circuit, in its decision of 03.03.2011, numbered 2009/3437 E. and 2011/2191 K.

9.Please see: http://www.wto.org/english/tratop_e/trips_e/t_agm3_e.htm

10.High Court of Appeals' for the 11th Circuit's decision (i) dated 09.04.2001 and numbered 2001/844 E. and 2001/3429 K., (ii) dated 29.11.2010 numbered 2009/56669 E. and 2010/12171 K. and (iii) dated 08.02.2002, numbered 2002/1709 E. and 2002/2064 K.

11.Kaya, A., "Marka Hukuku" ("Trademark Law"), 2006, Arıkan, İstanbul, p. 344.

12.High Court of Appeal for 11th Circuit's decisions dated 09.01.2009, numbered 2008/2271 E. and 2009/1685 K. and dated 01.03.2013, numbered 2012/1496 E. and 2013/3805 K.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.