INTRODUCTION
As in our personal lives,
being different and unique in commercial life, standing out from the
competition and being remembered are among the main purposes of existence. Just
as we try to express our style and character through our haircuts and clothing,
commercial enterprises strive to express who they are and what they do in the
most striking and memorable way through their trademarks. Trademarks, which are
so important, are protected under national and international law and various statutory
regulations have been introduced.
Trademark right is under the concept of industrial property and is one of the absolute rights that can be asserted against anyone. Especially with the innovations brought by the Industrial Revolution, the typical definition of property has had to expand, and industrial inventions have been taken under protection under new statutory regulations. In this article, the place of the trademark right under our regulations, the conditions of trademark invalidity, loss of rights through silence, the defense of non-use of the trademark and the principle of actual right ownership, which gives rise to a special trademark invalidity, will be examined.
1. TRADEMARK RIGHT AND
INVALIDITY OF TRADEMARK UNDER OUR REGULATIONS
1.1. IN GENERAL
In our law, trademark right is
mainly regulated under the Law Nr. 6769. Article 4 of the Law defines the
trademark as follows:
"A trademark may consist
of any sign, including personal names, words, shapes, colors, letters, numbers,
sounds and the form of the goods or their packaging, provided that it enables
the goods or services of an undertaking to be distinguished from the goods or
services of other undertakings and that it can be displayed in the registry in
such a way that the subject matter of the protection provided to the trademark
owner can be clearly and precisely understood."
As it is understood from the
wording of the provision, the trademark covers all kinds of signs that provide
distinctiveness, including words, shapes, colors, letters, numbers, sounds and
the form of the goods or their packaging, including personal names. The
definition specifically requires that they must be capable of being displayed
in the register in such a way that the subject matter of the protection can be
clearly and precisely understood. Therefore, three-dimensional shapes must be
capable of being expressed in the register in two dimensions, and sounds must
be capable of being expressed by notes and certain objective indicators.
Whether scents are included in the trademark right is a matter of debate both
in our law and in the European Union law. Since it is not listed in the
definition article, it is not possible to register scents in our country, even
if they are identified with the trademark and have gained recognition. However,
in the US, for many years, scents have been registered by the US Patent and
Trademark Office (USPTO).
One of the striking decisions
in this regard is the "Play-Doh" Play Dough decision. Hasbro Inc.,
the creator of Play-Doh play dough, succeeded in registering the smell of
vanilla sweet dough, which we are all familiar with from our childhood, under
the US Trademark Law. However, since scents are difficult to express in a
clear, unambiguous, publicly known and understandable manner, they have not yet
been included within the scope of trademark rights in our law. [1]
Following the definition
article, "Absolute Grounds for Refusal in Trademark Registration" and
"Relative Grounds for Refusal in Trademark Registration" are
regulated in our Law. In addition to these regulations, as we will examine in detail,
Article 25 sets out "Cases of Invalidity and Request for
Invalidation". If the trademark is registered despite the existence of one
of the Absolute and Relative Reasons for Refusal, the protection provided by
the law is eliminated by filing an invalidation lawsuit.
1.2. TRADEMARK INVALIDITY
CONDITIONS
Nullity is defined as "removed
from force, no longer in force, rendered invalid". In trademark law,
invalidity means "cancellation of a registered trademark through a
lawsuit due to lack of the necessary conditions and thus termination of the
trademark right previously obtained." [2]
Various grounds for invalidity
are regulated in our Law and these are basically absolute and relative grounds
for refusal. Absolute grounds for refusal are ex officio observed by the
Turkish Patent Institute at the trademark registration stage due to their
public importance. Relative grounds for refusal are regulated in order to
protect the rights of real and legal persons whose interests are damaged.
Individual benefit, not public interest, is in question and is not taken into
consideration ex officio by the Institute. [3]
1.2.1 Reasons for Absolute
Refusal
Under Article 5 of the Law Nr.
6769, the following signs may not be registered as trademarks:
- Signs not covered by Article
4,
- Signs that do not have any
distinctive characteristics,
- Signs which are identical or
indistinguishably similar to a trademark which has already been registered or
for which an application for registration has already been made in respect of
the same or similar goods or services,
- Signs which exclusively or
as an essential element include signs and designations in the field of commerce
indicating the genus, variety, quality, quality, quantity, purpose, value,
geographical origin or indicating the time when the goods are produced, the
services are provided or other characteristic features of the goods and
services.
- Signs that exclusively or as
an essential element include signs and names that are used by everyone in the
field of commerce or that serve to distinguish those who belong to a certain
profession, art or trade group,
- Signs that contain the shape
of the good arising from its original natural structure or the shape that is
necessary to obtain a technical result, the shape of the good itself or the
shape that gives the good its intrinsic value,
- Signs that mislead the
public about the nature, quality or place of production, geographical origin of
the goods or services,
- Signs for which
authorization for use has not been obtained from the competent authorities and
which are therefore to be rejected in accordance with Article 6 bis 2 of the
Paris Convention,
- Signs which are outside the
scope of Article 6 bis 2 of the Paris Convention, but which are of public
interest, historical, cultural values and which contain other coats of arms,
emblems or insignia for which the relevant authorities have not granted
registration permission,
- Signs containing religious
values and symbols,
- Signs contrary to public
order and public morality.
- Signs consisting of a
registered geographical indication or containing a registered geographical
indication.
Reasons for absolute refusal arise from public order and are taken into consideration by the Institute.
1.2.2 Reasons for Relative
Refusal
Cases that prevent the
registration of a sign as a trademark because another person has a right on the
sign based on any reason are called relative grounds for refusal. Unlike
absolute grounds of refusal, relative grounds of refusal are not provisions based
on public interest but are based on the right of priority that persons have
exclusively over the trademark. Relative grounds of refusal, unlike absolute
grounds of refusal, do not arise from the nature and characteristic of the
sign, but from the fact that a third party has any right over this sign.
Relative grounds of refusal
are asserted by any third parties who have rights. Relative grounds of refusal,
unlike absolute grounds of refusal, are intended to protect the rights of the
previous trademark owner. This situation enables the persons who have
previously chosen a trademark to limit the trademark registration opportunities
of any subsequent trademark owners. Thus, prior use is protected. The existence
of an old right is not automatically taken into account. It is only taken into
account upon the objection of the right holder.
Under Article 6 of Law Nr.
6769, in case of an objection by the owner of a trademark that has been
registered or applied for registration, the trademark may not be registered in
the following cases:
- The trademark applied for
registration is identical to a trademark that has already been registered or
for which an application for registration has already been filed and covers the
same goods or services,
- If the trademark applied for
registration is identical or similar to a trademark which has been registered
or for which an application for registration has already been made, and is
identical or similar to goods or services covered by a trademark which has been
registered or for which an application for registration has already been made,
if there is a likelihood of confusion by the public as to the trademark which
has been registered or for which an application for registration has already
been made, and if that likelihood of confusion includes a likelihood that it is
related to a trademark which has been registered or for which an application
for registration has already been made.
- An application has been
filed by the trademark owner's commercial agent or representative for
registration of the trademark in its own name without the trademark owner's
consent and without a valid justification,
- Registration of an
unregistered trademark or another sign used in the course of trade is
requested;
a) if a right has been
obtained on behalf of another person for this sign before the application date
or before the priority date specified in the application for registration of
the trademark,
b) gives the proprietor the
right to prohibit later use of a trademark,
- If there is a situation in
which an unfair benefit can be obtained due to the level of recognition that
the registered trademark or the trademark applied for registration has reached
in the society, which may harm the reputation of the trademark or may have
consequences that may harm the distinctive character of the trademark applied
for registration,
- If the trademark applied for
registration covers a person's name, photograph, copyright, or any other
industrial property right belonging to someone else,
- If an application identical
or similar to the common trademark or guarantee mark has been filed within
three years of the expiry of the common and guarantee marks,
- If an application for
registration of the same or similar trademark for the same or similar goods and
services is filed within two years after expiration of the term of protection
of a trademark due to non-renewal, and
- Trademark applications made
in bad faith.
The foregoing is within the
scope of relative refusal, and it can be decided for invalidity of the
trademark when requested and sued by the right holder. In addition to all these
cases, the person claiming invalidity must be using the trademark seriously and
sincerely. Failure to use the trademark seriously can be asserted as a defense
against invalidity claims. In this article, serious and actual use will be
briefly summarized, and then the "principle of actual (priority) right
ownership" in the aforementioned article, which has developed with case
law, will be specifically discussed together with case law decisions.
2. THE CLAIMANT MUST MAKE A SERIOUS AND ACTUAL USE OF THE TRADEMARK.
There are many regulations
protecting the trademark right holder in our law. However, the trademark owner
can benefit from this legal protection under certain conditions. In addition to
the other conditions included in our article, there must also be an "actual
and serious use" of the trademark. In the event that the trademark
is registered but not actively used in commercial life, it is not a sincere
request to expect the protection of this unused trademark, and it will also be
contrary to the good faith. At the same time, requesting invalidation of
another trademark based on a trademark that is not used and no benefit is
obtained will constitute "abuse of right". Our law does not protect
the abuse of right, and these claims without any legal benefit will be
rejected.
Article 9/1 of the Industrial
Property Law Nr. 6769 reads as follows: "A trademark which has not been
seriously used by the trademark owner in Turkey in terms of the goods or
services for which it is registered within five years from the date of
registration without a justifiable reason, or the use of which has been interrupted
for a full period of five years, shall be decided to be canceled".
According to the foregoing provision,
it is set out that trademarks that are not used seriously and whose use is
interrupted for a full period of 5 years will be canceled. This regulation aims
to ensure the honest functioning of commercial life and competition
environment. [4]
The decision, bearing the
Basis number 2015/10614 and the Decision number 2016/5566 and dated 23.05.2016,
of the 11th Civil Chamber of the Court of Cassation reads as
follows: "Pursuant to Article 14 of the Decree Law Nr. 556, the
trademark owner must, as a rule, use his registered trademark domestically or
in exports, by himself or by a third party with his permission, for the goods
and services registered, in accordance with their functions, in a serious and
economic manner." Serious use of the trademark is also included in the
IPL Nr. 6769 and the relevant regulation is in parallel with the EU Trademark
Directive and Trademark Regulation. The obligation of serious use of the
trademark is to prevent the trademark right holder from monopolizing the
trademark arbitrarily, to prevent unfair competition by pretending to use a
trademark that is not actually used, and to prevent the cancellation sanction
due to non-use.
As mentioned, non-use of the
trademark in an actual, serious and sincere manner and non-use for a full
period of 5 years may be used as a defense in invalidation cases. Because the
plaintiff does not have any interest worth protecting and there is no legal
interest in the lawsuit filed.
3. PRINCIPLE OF ACTUAL
(PRIORITY) RIGHT OWNERSHIP
Although protection of the
trademark right in our law is basically dependent on registration, exceptional
regulations and jurisprudence have developed regarding protection of
unregistered trademarks as a matter of equity. Although they are not registered,
trademarks that are actively used throughout the country, have gained
recognition and continue their commercial life in this way are protected even
if they are not registered. This is referred to in our literature as the
principle of actual (priority) right ownership.
Under the Paragraph 3 of the Article
6 of the Industrial Property Law, priority right is listed as one of the
reasons for relative refusal: "If a right has been obtained for an
unregistered trademark or another sign used in the course of trade before the
application date or the priority date, if any, the trademark application shall
be rejected upon the objection of the owner of this sign."
The decision, bearing the
Basis number 2017/3943 and the Decision number 2019/1154 and dated 13.02.2019, of
the 11th Civil Chamber of the Court of Cassation states that the
condition of intensive and strict use within the country is sought for actual right
ownership: "... in accordance with the principle of actual right
ownership, in the event that a prior right has been obtained on the sign before
the trademark application and as a result of intensive and frequent use of the
sign subject to the trademark in terms of the goods and services within the
scope of the registration, the person who has the actual right on that sign is
granted priority right. However, the sign in question must have been used
intensively, ex parte and without interruption domestically and across a
geography wider than the local area."
Actual right ownership is
basically a principle developed within the framework of prevention of unfair
competition and good faith. This principle eliminates the risk that commercial
enterprises, which are recognized with a certain name and logo in commercial
life, actively operate and gain a certain level of recognition in the consumer
mass, will be deprived of legal protection just because they have not
registered their trademark and the risk of damage to competition with the
registration of their trademark by other enterprises [5].
Under the Decision,
bearing the Decision number 1998/5146, of the 11th Civil Chamber of
the Court of Cassation,
it was explained that the actual right holder is the person who makes the
trademark recognizable before the public:
"... Swiss-Turkish
trademark law is based on three important principles regarding acquisition and
protection of the right to a trademark. The right of priority over the
trademark belongs to the person who has created and used the trademark and made
it popular across the market. This is called the actual right holder, and this
registration has a constitutive effect. However, this registration can only
provide a conditional right to the right holder at the beginning. Until the
date when the actual right holder will file a lawsuit and register this
trademark, its ownership of the constitutive effect continues. This is because actual
right ownership does not give the right to another independent and individual
ownership. The actual right holder of the trademark may request abandonment of
the trademark that is registered later, if he registers the same or an
indistinguishably similar trademark as a trademark..."
As can be seen under the
decision, the right of priority on the trademark belongs to the person who has
created the trademark and made it known across the market. The owner of the
priority right is the actual owner of the right and the applications of
trademark applicants other than the actual right owner will face relative
refusal, and the actual right owner will be able to claim invalidity against
other applicants who have registered the trademark.
Under the Decision,
bearing the Basis number 2017/76, and the Decision number 2019/444, and dated 11/04/2019,
of the of the General Assembly of Civil Chambers of the Court of Cassation, it has been introduced under the case law that the
bond of trust, labor and interest provided by the trademark, which has gained
public recognition and awareness, before the consumers, is protected, thus
guaranteeing prevention of unfair competition:
"Although it is essential
that trademarks are mainly used to distinguish one good or service from
another, sometimes customers may associate a trademark not only with the
good or service but also with the enterprise providing that good or service.
Customers may prefer a branded good or service only because of their trust and appreciation
of the business that supplies it. Even if it is known that the businesses are
different from each other, the result will not change if the similarity of the
signs used leads the customer to think that there is an economic or organic
connection between these businesses...
As stated in Article 8/1-b of
the Decree Law Nr. 556, the likelihood of confusion by the
"public" is taken into account in determining whether a
trademark is similar to another trademark. The criterion for the likelihood of confusion
by the public is to take into account that the public is the consumer, not the
relevant person or expert. What is important in the likelihood of confusion is
the possibility that the public may establish a connection between these two
signs in any way and for any reason. The word "likelihood" here is a
word used carefully and specifically, and the shape, sound, meaning, general
appearance, connotation and the impression of being in a series are evaluated
within this scope." [6]
CONCLUSION
As a result, the trademark
right is regulated in detail in our law, and it is aimed both to protect and
develop commercial life and to protect intellectual property rights which fall
under the category of absolute rights. In this context, prohibition of unfair
competition, good faith, prohibition of abuse of right, and the principles of
equity have shed light on the norms and principles.
Trademark invalidity cases are
basically divided into two as relative and absolute invalidity reasons.
Briefly, these cases are enumerated and the principle of actual and serious use
and the principle of actual (priority) right ownership, which is the reflection
of the principles of equity, prevention of unfair competition and good faith in
trademark law, are specifically examined.
Although the main rule is
protection of registered trademarks, the priority right holder may also benefit
from the legal protection provided by the Law if certain conditions are met.
Att. Gamze Nur Şan
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