OBLIGATION TO USE REGISTERED TRADEMARK AND PROOF OF TRADEMARK USE

In this article, we will evaluate the obligation to use a registered trademark under the Industrial Property Law No. 6769, the Turkish Patent and Trademark Office's process regarding proof of trademark use, and the points that registration holders should pay attention to.

1. The Importance of the Brand

A brand is the most important commercial asset an entrepreneur bases their ventures on and builds their business plans around. To explain the importance and value of a brand in terms of its historical development, while its history dates back to ancient times, the use of brands in the modern sense has been around since the 19th century. In this century, humanity began to transcend borders in trade and produce large quantities to sell its products beyond its own region. With this form of trade, which gained momentum after the Industrial Revolution, the concept of branding gained importance. This is because a branded product was easily distinguished from others and became familiar and trustworthy to consumers. The importance of brands further increased in the 20th century. Concepts such as slogans, jingles, logos, mascots, and the use of brand personality and identity shaped today's modern branding approach. In the face of increasing competition in the market, the "product brand" became the factor that enabled the product to stand out and sell more. In a sense, the "brand" began to be sold more than the product itself. This pattern continues today. It's possible for a product of the same quality as its competitors to be sold at a higher price or for a higher price under a more well-known and trusted brand. A brand is the most important asset for generating profits, the fundamental rationale for a manufacturer's production activities. Therefore, protecting the brand is of paramount importance.

1.2 Obligation to use the trademark after registration

The first step in protecting a trademark is registering it. However, simply registering a trademark is not sufficient for long-term legal protection. For a trademark to be protected long-term, it must be "used." Article 9, paragraph 1 of Industrial Property Law No. 6769, which entered into force on January 10, 2017, states: "A trademark shall be cancelled if, without justified cause, it is not used seriously in Türkiye by the trademark owner for the goods or services for which it is registered, or if its use is suspended for five consecutive years." This provision was originally included in the repealed Decree Law No. 556, but it was annulled by a Constitutional Court decision. The grounds for cancellation were explained as requiring legal protection because the trademark is a property right. In both the current IP Code, the repealed Statutory Decree, and EU trademark law, non-use of the trademark or prolonged suspension of its use is considered grounds for cancellation. The number of trademark applications in Türkiye exceeded 134,000 in 2019. With this number, Turkey is the country that filed the most trademark applications in Europe, and it has also been the country with the highest number of applications every year since 2011.1 However, an examination of trademark applications filed in Turkey reveals that not only currently used trademarks but also those likely to be used in the future, or similar ones solely for trademark protection, are registered. Similarly, it is common for trademarks to be registered in unused classes for the same reason. So much so that thousands of trademarks are registered in all 45 classes according to the Nice classification in TURKPATENT records. The legislature sought to address this excessive pollution in the trademark registry.2 For this reason, the Turkish Patent and Trademark Code (IPK) enacted Article 9, which allows for the cancellation of a trademark if it is not used. This article aims to clear up the pollution in the registry, as well as to eliminate the injustice caused by the trademark owner's right to a registered trademark, which they do not use, acting as an obstacle to those who wish to use that trademark. While the monopoly right arising from the registration of the trademark can be asserted against third parties, the trademark owner is also under the obligation to use it from the date of registration.

The procedures and principles regarding trademark cancellation under Article 9 are regulated in Article 26. It is clear that the legislature intends to prevent the protection provided by registration from being used in a manner contrary to its spirit. This prohibition also reduces legal disputes arising from trademark rights arising from registration. The institution implements the cancellation decision (Article 26 of the Civil Procedure Code). However, this procedure is currently in the hands of the courts. Starting in 2024, TURKPATENT will be able to issue cancellation decisions.

However, it is not possible to issue an ex officio cancellation decision based on non-use. According to the articles mentioned above, a third party request is required for a cancellation decision. If a person or company decides to use a trademark that is similar to a registered trademark(s), registration is not possible under Articles 5 or 6 of the Civil Procedure Code. Therefore, they must investigate whether the trademark(s) are actually being used on the goods or services for which they are registered. If they determine that they are not, they must submit the necessary cancellation requests. Following these cancellation decisions, the path to trademark registration will be open. In our country, this process is currently being handled by the courts, but after 2024, when the institution begins processing this matter, disputes will be resolved much more quickly, creating a healthier commercial environment.

1.3 Proof of Use in the Objection Process

Under the Turkish Patent and Trademark Law No. 6769, the Office (the courts until 2014) has the authority to not only cancel an unused trademark but also reject an opposition to a publication based on an unused trademark. Article 19/2 of the Turkish Patent and Trademark Law grants a trademark applicant the right to request proof of use of the trademark in question on goods or services registered if an opposition has been filed against their application and the opposition is based on a trademark that has been in use for more than five years. Acceptance of an opposition based on a trademark for which proof of use is requested, in accordance with Article 6/1 (similarity) of the Industrial Property Law No. 6769, depends on proof of use. Otherwise, the Office (Turkish Patent and Trademark Office) rejects the objection based on Article 6/1 of the Industrial Property Law No. 6769. A rejection decision based on this grounds depends on the applicant's request, and the Office does not make such a decision ex officio. Indeed, Article 6769... According to Article 5/ç of the Industrial Property Law, the use of a previous trademark registered more than 5 years ago is not required as a reason for the rejection of an application.

It's also important to clarify that in objections filed under the fourth or fifth paragraphs of Article 6, claiming the trademark is identical or similar to a well-known trademark, applicants cannot claim that the well-known trademark is not being used. In other words, if the grounds for objection are solely Article 6/1, the trademarks cited as the basis for the objection may be subject to proof of use. Pursuant to the first paragraph of Provisional Article 1 of the Civil Procedure Code (CICP), this provision will apply to applications submitted after January 10, 2017. The provisions of Statutory Decree No. 556 apply to applications submitted before January 10, 2017, and proof of use will not be requested in objections to these applications.

2. PROOF OF USE OF THE TRADEMARK

2.1 User documentation

The Turkish Patent and Trademark Office (Turkish Patent and Trademark Office) requests various documents to prove the use of trademarks subject to proof of use. These documents, which the Office accepts, can also be presented in a lawsuit related to the same claim. As stated in the PROOF OF USE GUIDE published by TURKPATENT, these documents primarily include invoices demonstrating the trademark's commercial use. In addition to invoices, other official documents such as catalogs and price lists featuring the product and trademark, documents related to visuals, videos, and expenses related to advertising and promotion, public opinion and market research reports, trade fair participation certificates, documents related to commercial activities, tax certificates, registry gazettes, chamber of commerce records, etc., also serve as proof of use. All of these documents must include the trademark subject to proof of use, the areas where the trademark is registered, the date, and company information. During use, these documents must be created in a way that cannot be disproven. It is crucial that the trademark be included on all documents used in commercial transactions, especially the documents mentioned above. Furthermore, it is crucial that these documents be dated and recorded. Since the institution or court will want to clearly understand that a document submitted is used on the goods or services for which the relevant trademark is registered, we need to ensure that the documents contain this information.

2.2 Serious use of the brand

The agency requires that trademark use be substantial, not symbolic. Infrequent use of a trademark does not necessarily mean that the trademark is being used. The same guide provides detailed explanations and examples for better understanding. Symbolic use of a trademark solely for the purpose of retaining rights acquired under that trademark is considered unfair. When measuring substantial use of a trademark, the type of goods or services for which the trademark is used is crucial. For example, it is not possible for a brand used on basic consumer goods such as wafers, water, milk, and bakery products to sell at the same rate as a brand used on luxury consumer goods such as automobiles, appliances, and housing. Indeed, depending on the sector, 1,000 wafers will not be sufficient to establish and maintain a commercial position in the relevant market, or at least to generate a commercial impact.

2.3 Territorial use of the brand

The requirement for trademark use within Turkey is stipulated in the first paragraph of Article 9 of the Turkish Commercial Code No. 6769, which states, "Within five years from the date of registration, the trademark owner has not made any significant use of the trademark in Türkiye for the goods or services for which it is registered, without justifiable cause..." However, use within the territory of the Turkish Commercial Code does not only mean selling within the country. The sale of a trademark abroad through export from within the country is also considered territorial use. Indeed, in the second paragraph, subparagraph b) of Article 9 of the Turkish Commercial Code, titled "Use of the Trademark," "Use of the Trademark on goods or packaging solely for export purposes" is also considered use. As can be seen from this, even if trade does not have territorial borders, the principle of territoriality has been adopted in the protection of trademarks in Turkish law.

CONCLUSION

Registration for the protection of a trademark, one of the most important tools of commerce, is not sufficient to protect it. Use of a registered trademark is mandatory for continued protection. As explained in our article, an unused trademark can be canceled or lose the enforceability of the rights granted by registration. As is frequently seen in our country, the notion of registering a trademark solely for the sake of protection, even in areas where it is not in use, should be abandoned. The new law provides for stronger cancellation of such registrations, making registration, or the material and moral burdens incurred until registration, pointless. It is not difficult to predict that cancellations will increase exponentially in a shorter period of time and with less financial burden, especially after 2024, when TURKPATENT begins granting cancellation rights to unused trademarks. The most important consequence of the use requirement is the public benefit created by clearing unused trademarks from the trademark registry and making it possible to register unused trademarks in the name of others. Proving such use is as important as the use of the trademark itself. In fact, if trademark use cannot be properly proven, it will be deemed non-use. Care must be taken to ensure that documentation is kept, as explained in our article. It's important to remember that canceling trademarks, which have become a hallmark of the goods or services offered and are subject to significant investment, due to the lack of proof of use, can cause companies to suffer unbearable losses.