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
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.
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