On one hand, a registered trademark vests its proprietor broad authorities and exclusive rights; on the other hand it imposes some obligations to its proprietor. The most important of these obligations is the usage of the trademarkand it is foreseen in the Turkish Industrial Property Code. (''IPC'')
Conditions of trademark usage and situations that may be considered as usage of trademark are specified in IPC Art.9. Cancellation of a trademark due to the breach of usage obligation, is regulated in IPC Art.26.
According to these articles, "Proprietor's non-use of a trademark in Turkey staidly for five years from principal register date or recessing usage of trademark for five years continuously"are valid reasons for the cancellation of a trademark.
The term "non-use of a trademark"means using a trademark beyond the scope of IPC Art.9 or in defiance of IPC Art.9.
In accordance with the abovementioned article, these are the conditions for a trademark to be evaluated as a used-trademark:
- Usage of a trademark by its Proprietor
- Usage of a trademark in regard to goods and services for which the trademark is registered
- Not recessing the usage of a trademark for more than five years without any valid reason
- Using a trademark in Turkey
- Using a trademark staidly and severely
Under the scope of IPC, there is no necessity for setting a trademark over goods tangibly in order for usage of a trademark. For instance, using a trademark for invoices related to goods and services which the trademark registered for, or using a trademark for publicity via media is enough for a trademark to be considered as used.
Howevere, it is crucial to state that the usage of a trademark for only a part of the registered classes or groups of goods and services does not infer that usage of trademark obligation is fulfilled for all the registered classes and groups.
Exceptional situations which are accepted as usage of a trademark, under the scope of IPC Art.9, 2nd para. , are as follows:
- Usage of a trademark with different factors or elements without any transformation of its distinctive character
- Usage of a trademark on products and packages just for exportation
- Usage of a trademark by 3th persons who are authorized by Proprietor
''Usage of a trademark with different factors or elements without any transformation of its distinctive character''means usage of a trademark in different colors, shapes and dimensions or usage with insignificant additions or reductions. In that case, using a trademark by adding or reducing different factors is possible according to IPC Art.9 para. 2-a on condition that the distinctive character of the signs of the trademark is preserved and that the alteration does not cause a confusion in a way that the consumers may think there is a different trademark at hand.
Although using a trademark in Turkey is a necessity for usage of trademark obligation, according to IPC Art.9 para. 2-b, using a trademark just for exportationis denoting "usage of trademark" in case of using trademark on products and packages. In such case, there is no obligation for releasing the products to the domestic market, however the trademark have to be used staidly.
The key point is setting the trademark over exported products and services before the exportation process. Likewise, usage of the trademark has to be started intrastate in order to fall under the scope of this Article. In case an exported product which is produced in Turkey, is brand-marked abroad, this condition will not be fulfilled and the obligation with regard to the usage of trademark will not be met under the scope of IPC Art.9 para. 2-b.
As a rule, a trademark should be used by its Proprietor. There is an exception to this rule in IPC Art.9 para. 3; usage of trademark by a third person provided that the proprietor consent to such use.In order to fall under the scope of this article, the trademark has to be used by the third person in a staid way and the use must be coherent with its function.
August 16, 2018
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