According to the Article 14 of the current Turkish Decree Law
no: 556 on Trademarks, it is possible to institute a court action
for the cancellation of a registered trademark on the basis of the
non-use if the trademark has not been put into use for the
past 5 years period.
However non-use can only be claimed before the
IP Court and Turkish Patent Institute is NOT entitled to consider
and evaluate the use of the trademark, even if
non-use is claimed by one of the parties during
the examination of an objection and/or opposition.
Furthermore, there is no clear additional provision concerning
non-use in the current Decree Law no: 556.
Proposed Changes by the Draft IP Law
The Article 19 of the Draft states that during the examination
of an opposition filed against the publication of a trademark
application, upon request of the applicant, the
Institute is entitled to ask the opponent to prove the use of the
trademark on which the opposition is based. In case the opponent is
unable to prove the serious use of his trademark in Turkey or there
is no legitimate reason for non-use, the opposition is
In case the use of the trademark is only proven for some of the
covered goods or services, the examination of the opposition will
be limited with such goods/ services for which the use has been
proven by the opponent.
In addition, the Article 25 states that during the examination
of a cancellation action instituted on the basis of the risk of
confusion between the trademarks (Article 6/1), the non-use of the
trademark on which the cancellation action is based can be asserted
as a counter-claim by the defendant. Likewise,
Article 29 states that the non-use counter-claim can also be put
forward in the trademark infringement actions by the defendant.
Articles 19, 25 and 29 of the Draft clearly indicate that
non-use can be asserted as a
counterclaim during the examination of an
opposition by the applicant and/or as a
counter-claim during litigation before the Court
by the defendant.
It is evident that the failure of the trademark holder to prove
the use will result in the rejection of the opposition/court action
and can trigger the counterpart to question the validity of the
trademark on the basis of non-use.
The proposed version of the draft is in compliance with of the
EU Trademark Regulation (Article 42).
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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