The Turkish Constitutional Court had annulled Article 14 of the Decree Law No. 556 pertaining to the Protection of Trademarks ("Decree-Law"), which provided cancellation actions on the basis of non-use of a trademark, on December 14, 2016. The Constitutional Court had reasoned that no property right could be legislated through a decree-law. The annulment decision of the Turkish Constitutional Court was published in the Official Gazette on January 6, 2017. At that time, there were no other regulations on this issue other than the Decree-Law, and the only grounds for cancellation had thereby been removed.
Only 4 days after the annulment decision of the Turkish Constitutional Court, on January 10, 2017, the Industrial Property Law No. 6769 ("IPL"), which contained a legal stipulation for cancellation actions on the basis of non-use of a trademark, was published in the Official Gazette and entered into force. Nevertheless, that four-day period (during which there was a legal lacuna for cancellation actions on the grounds of non-use of a trademark) was sufficient to create legal chaos in Turkey with respect to both pending and potential cancellation actions on the grounds of non-use of a trademark.
The relevant doctrine and legal practitioners were split on the correct implementation of the ruling regarding the cancellation actions on the basis of non-use of a trademark. The High Court of Appeals, in the meantime, has reversed all of the appeals regarding such cancellation actions for re-assessment.
The first opinion, which defended the position that the motion of cancellation action on the grounds of non-use should be maintained, argued that the legal lacuna should be filled by the judicial authorities, and that, accordingly, judges should allow cancellation actions on the grounds of non-use to proceed, since such motions had been allowed before the annulment action, and would still be allowed going forward as well; and thus, it was evident that the actual will of the legislator was not to remove such cancellation actions from Turkish IP Law. On the other hand, other commentators put forth arguments from a technical point of view, suggesting that an annulment makes it as though the annulled provision had never existed, and if the same provision is brought forth with another legislation, then this new provision should be considered and treated as if it was introduced into the legal realm for the first time; therefore, any cancellation action could only be filed starting from 5 years after the enforcement date of the IPL, i.e., on January 10, 2022.
While the legal gap on this issue has been dealt with in different and inconsistent ways by the legal doctrine and the courts, the High Court of Appeals ended the divergence between the courts with its decision in 2019,1 favoring and implementing the first opinion explained above. Accordingly, the High Court stated that, although the IPL had entered into force on January 10, 2017, the actual enactment date of the IPL was December 22, 2016, which is earlier than the publication date of the annulment decision of Turkish Commercial Court, i.e., January 6, 2017. The High Court further stated that the will of the legislator regarding the IPL was shaped before the annulment of Article 14 of the Decree- Law and therefore, the legal lacuna could be filled through retrospective implementation of the IPL for cancellation actions on the grounds of non-use.
Consequently, the High Court of Appeals has clarified that there is no need to wait until the 5th anniversary of the IPL to be able to file a cancellation action on the grounds of non-use of a trademark. Cancellation actions on the grounds of non-use can be filed in accordance with the provisions of the IPL without further doubt, now that the discussion on the legal lacuna for cancellation actions, as well as inconsistent implementation of the courts in this regard, has mercifully been brought to a close.
This article was first published in Legal Insights Quarterly by ELIG Gürkaynak Attorneys-at-Law in March 2020. A link to the full Legal Insight Quarterly may be found here
1 The 11th Civil Chamber of High Court of Appeals, decision numbered 2019/1765 E. 2019/4421 K.
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