- within Criminal Law topic(s)
A. INTRODUCTION
In practice, companies frequently incorporate signs identical or similar to registered trademarks into their trade names; these signs are then highlighted in signage, on websites, on social media, in invoices, and in brochures, becoming part of the marketing communication. This raises a central question: Can use within a trade name amount to trademark infringement even if it does not constitute classic "trademark use"?
The Court of Cassation, General Assembly of the Civil Chambers, in its decision dated 8 February 2023 (Docket No. 2021/446; Decision No. 2023/61), answers in the affirmative: where there is a likelihood that the functions of the mark will be harmed, a finding of infringement may be made without additionally requiring proof of "trademark use." At the same time, in practice, requests for deletion from the trade registry are often constrained by the so-called "five-year acquiescence" principle; however, where trademark-like impact continues or bad faith is present, this constraint is not treated as absolute.
B. LEGISLATION
1. Industrial Property Code (Law No. 6769) ("IPC")
Pursuant to Art. 7/3(e) IPC, the trademark proprietor may prohibit use of the sign as a trade name or business name. Under Art. 29(1)(a) IPC, use of the mark as a trade name/business name without the proprietor's consent, by reference to Art. 7, is treated as an act of infringement.
2. Turkish Commercial Code (Law No. 6102) ("TCC")
Under Art. 18 TCC, every trader must adopt a lawful trade name. According to Art. 39, transactions relating to the commercial enterprise must be conducted under that trade name, and instruments and other documents concerning the enterprise must likewise be signed under the same trade name. Detailed rules on the selection, components, and use of the trade name are set out in Article 39 et seq. of the TCC and are further elaborated in the relevant regulations.
C. INFRINGEMENT BASED ON TRADE NAME USE ALONE
By virtue of Art. 29(1)(a) of the IPC referring to Art. 7/3(e), it is not required that the use meet the threshold of classic "trademark use" for infringement. Even use of the sign as a trade name/business name in the course of trade may be prohibited and treated as infringement where there is a likelihood of harm to the functions of the mark (e.g., indication of origin, dilution of distinctiveness, exploitation of reputation).
This approach is expressly confirmed by the Court of Cassation, General Assembly of the Civil Chambers, in its decision dated 8 February 2023 (Docket No. 2021/446; Decision No. 2023/61): under the cross-reference in Art. 29(1)(a) (referring to Art. 7/3(e)), classic "trademark use" within the trade name is not a prerequisite for a finding of infringement; a likelihood of harm to the functions of the mark suffices. In that framework, it was held that the defendant's use of the element "..." in its trade name for services similar to those covered by the claimant's "..." based trademarks constituted infringement, and the Ankara Regional Court of Appeal's resistance decision was found well-founded.
Accordingly, where a registered trademark is used by another within a trade name, the deletion of the mark from the trade name may be sought. In this framework, use of the sign within a trade name may be made the subject of a deletion claim without additionally proving classic "trademark use" provided that a likelihood of harm to the functions of the mark is demonstrated.
D. EFFECT OF FIVE-YEAR ACQUIESCENCE: TRADEMARK-LIKE IMPACT AND BAD FAITH
As noted above, within the framework of the IPC, Art. 29(1)(a) (referring to Art. 7/3(e)) brings use of a sign as a trade name or business name within the category of uses that the trademark proprietor may prohibit; accordingly, seeking deletion of a trade name from the trade registry that incorporates elements of an earlier registered mark may, in principle, be grounded (without requiring proof of classic "trademark use") on the likelihood of harm to the functions of the mark.
In practice, however, prolonged inaction following the registration of a trade name (often approximated to five years) is treated, under Art. 2 of the Turkish Civil Code (Law No. 4721), as a factor that ordinarily weakens a request for deletion. However, this should not be confused with the strict "five-year" period set out in Article 25 of the IPC for trademark invalidation actions: while the five years in invalidation is a threshold arising from the IPC, there is no fixed period in deletion actions; the Court of Cassation evaluates the matter by considering together the specific circumstances of the case (the time when the claimant learned, the intensity and channels of use, the overlap of markets/audiences, the parties' good or bad faith, investment-backed reliance, etc.). Accordingly, even where more than five years have elapsed since the trade name's registration, if the name continues to be used in a manner that creates a trademark-like impact in the market and such use poses a risk of harm to the functions of the mark, a determination of infringement and an injunction may be granted and (where the conditions are met) deletion from the trade registry may be ordered. Conversely, where the use truly remains within the confines of trade-name identification, generates no trademark-like impact, or bad faith cannot be established, a request for deletion will generally be unlikely to succeed.
E. JUDICIAL DECISIONS
➢ Decision of the Court of Cassation, General Assembly of the Civil Chambers, dated 26 February 2020 (Docket No. 2017/27; Decision No. 2020/225)
It was stated that, for the principle of loss of rights through acquiescence to apply in trademark invalidation actions, the five-year period must have elapsed; however, since there is no statutory period prescribed in the legislation with respect to trade names, the period must be determined case by case by taking into account Article 2 of the Civil Code as well as the specific circumstances of each case.
It was accepted that the plaintiff company had lost its rights through acquiescence in the action for deletion of the trade name, on the grounds that the plaintiff both sent a cease-and-desist letter only after a long period of approximately six years had passed from the registration of the defendant's trade name and failed to file the lawsuit within a reasonable time after the letters were sent.
➢ Decision of the Istanbul 1st Civil Court for Intellectual and Industrial Rights, dated 22 May 2024 (Docket No. 2021/346; Decision No. 2024/151)
It was stated that, as a rule, once five years have elapsed from the registration of a trade name, deletion of the trade name cannot be requested; however, if a trade name that has been registered for more than five years is used in a manner creating a trademark-like impact, such use would constitute trademark infringement, and this situation would give rise to the right to request deletion of the trade name. In other words, where five years have passed since registration, deletion is possible and necessary if the trade name is used in a way that creates a trademark-like impact; if the use remains purely within the scope of the trade name and does not create any trademark-like impact, it cannot be said that there is a likelihood of confusion against the trademark. In this context, it was expressed that, if the conditions of "use of the trade name being of a trademark nature and at a level constituting trademark infringement" are satisfied, deletion from the registry of a trade name registered for more than five years may be in question.
It was evaluated that the element "..." appearing in the defendant's trade name ... A.Ş. has, since September–October 2020, been used on the defendant's hotel signage and website in fonts and forms different from the defendant's trade name; this use creates a brand perception in the eyes of the target audience and elevates the usage beyond mere trade-name identification.
➢ Decision of the Bakırköy 2nd Civil Court for Intellectual and Industrial Rights, dated 21 September 2022 (Docket No. 2021/580; Decision No. 2022/169)
It was understood that the plaintiff ... A.Ş.'s trademark with registration No. ..., the defendant party's de facto trademark uses, and the defendant party's trade name all contain the essential element "..."; that the identity contained in this word gives rise to similarity and a likelihood of confusion; that the defendant party's field of commercial activity and the classes in which the plaintiff's trademark No. ... is registered likewise exhibit similarity; and that, in this state, the conditions for trademark infringement and deletion of the trade name had been met.
F. CONCLUSION
Pursuant to Art. 29(1)(a) of the IPC (referring to Art. 7/3(e)) and the approach adopted by the Court of Cassation, General Assembly of the Civil Chambers, in its decision dated 8 February 2023, it is not necessary for use within a trade name to reach the level of classic "trademark use"; the likelihood that the functions of the mark (indication of origin, distinctiveness, reputation) will be impaired is sufficient for a finding of infringement.
On the other hand, in deletion claims, the "five-year acquiescence" measure referred to in practice operates as a threshold based on Article 2 of the Civil Code on good faith; it is not a strict requirement. Therefore, even if a long time has passed since registration, where the trade name continues to be used in a manner perceived in the market as a trademark or where circumstances such as bad faith are present, it is accepted that, despite the delay, a determination of infringement and an injunction may be granted and, if the conditions of the specific case are satisfied, deletion of the trade name from the registry may be ordered. Conversely, where the use truly remains limited to the trade name, does not create a trademark-like impact, and thus the risk of confusion or functional harm does not materialize, acceptance of the request for deletion and, in many cases, the infringement claim becomes difficult.
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.
