The Industrial Property Code No. 6769 ("IP Code") which entered into force as of January 10, 2017 regulated within Article 9 that a registered trademark will be vulnerable to cancellation if not used within five years term as from the date of registration.
The wording of Article 9 of the IP Code was similar to the previous Article 14 of the repealed legislation Decree-Law no. 556 on the Protection of Trademarks.
However, the Turkish Constitutional Court's ruled the annulment of the former Article 14 of the Decree Law no. 556 on grounds that the provision was unconstitutional since it had to be regulated through a Parliament Act but not a Decree Law. The decision was published on the Official Gazette on January 6, 2017; only four days before the IP Code entered into force.
Consequently, this four day gap paved a way for discussions whether if the related article within the IP Code could be enforced in terms of current cancellation actions. Even though the general opinion was that the traditional non-use claim was in full effect, this general opinion was being objected on grounds that the enforcement of the related article should be awaited for five years as from the enforcement date of the IP Code. In other words, the adverse opinion was claiming that the institution of non-use cancellation actions could be possible only after January 10, 2023.
During the period of more than two years since the IP Code entered into force, majority of the IP courts proceeded with non-use cancellation actions. Most of the Courts indicated that the IP Code did not put forward legal consequences to come into force five years later. However, there were a few Courts which rejected the cancellation actions during first instance proceedings due to their dissenting opinion stating that the provisions for non-use of the IP Code cannot be enforced retroactively.
Following a controversial term of two and a half years since the cancellation of the previous article regarding "use of trademarks" and enforcement of the IP Code, the Supreme Court recently rendered its decision as to institution of non-use cancellation actions and enforcement of the respective article retroactively.
The Supreme Court decided that even though the IP Code was published on the Official Gazette on January 10, 2017, the date of ratification of the IP Code was December 22, 2016; which was before the Turkish Constitutional Court's decision on the annulment of Article 14 of the Decree Law. It was founded clear that the regulation of the relevant article of the IP Code being prior to the cancellation of the similar article within the previous legislation explicitly put forward the will of the legislature before the annulment of the previous article.
Therefore, the Article 9 of the IP Code on "use of trademarks" should be evaluated that the legislator could not have foreseen the enforcement date of the Turkish Constitutional Court's decision on the annulment of Article 14 of the Decree Law and regulated the relevant article of the IP Code days before the Constitutional Court's decision.
Accordingly, the Supreme Court ruled that the legislator's primary objective was that the trademarks shall be subjected to cancellation retroactively if not used within five years term as from the date of registration.
Comment:
The Supreme Court has by such decision clarified the longstanding debate and unpredictability concerning the implementation of the non-use provision of the new IP Code. The Courts will now implement Article 9 of the new IP Code against the non-used trademarks without hesitation.
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