The concept of acquired right is not defined and/or regulated by either the abolished Decree-Law No. 556 of 24 June 1995 on the Protection of Trademarks, or Industrial Property Code No. 6769 (“IP Code”), which came into force on 10 January 2017.
The principles of acquired rights have been shaped in the light of the decisions of the Court of Appeal and Turkish Patent and Trademark Office (TÜRKPATENT), with some differences in practice.
With some controversial issues remaining on the implementation of the acquired right principle, this topic has been discussed in various webinars and symposiums. The most recent events include the TÜRKPATENT webinar held on 26 October 2023 and the V. Intellectual Property Law International Symposium held on 30 November-1 December 2023, in cooperation with TÜRKPATENT and Yıldırım Beyazıt University.
The related discussions, different approaches and diligence of TÜRKPATENT in harmonizing its decisions with that of the Court of Appeal – explicitly mentioned in their latest webinar – as well as the recent shift to TÜRKPATENT handling administrative cancellation actions as of 10 January 2024 are worth taking into consideration when asserting acquired right claims, even during the administrative proceedings.
Emergence of the Acquired Right Principle:
The main purpose for the emergence of the acquired right principle is to allow an entity that owns a registered trademark right to create and register new trademarks that preserve the main element of and its connection with its registered trademark in terms of origin without infringing the rights of any other entities.
In a way, the principle of acquired rights aims to enable entities to register and use their renewed brand images and trademark series without leading to a likelihood of confusion among consumers or resulting in an unfair advantage.
Accordingly, a prior-dated registered trademark of an entity constitutes an acquired right for the subsequent trademark applications of that entity under certain exceptional circumstances and conditions in accordance with the decisions of the Court of Appeal.
Conditions for Implementation of Acquired Rights:
The court decisions accepted to form the basis for the evaluation of acquired rights are the decisions of the 11th Civil Chamber of the Court of Appeal, referred to as “ECE LADY/ECE TOFF” dated 19 September 2008, under file no.2007/7547, decision no. 2008/10251, and “Ülker DONUT” dated 14 November 2008, under file no. 2007/11505 and decision no. 2008/12839.
According to these and the following court decisions, the earlier trademark of a party should constitute acquired rights for its subsequent trademark applications under the following conditions:
- The trademark that forms the basis for an acquired right claim should be registered, used for a long period of time, and not be the subject of a dispute between the parties.
- The new trademark should preserve the main element of the trademark that forms the basis for the acquired right claim, and be created in such a way as to preserve its connection with the business and the impression it creates in the eyes of the consumer.
- The new trademark should not be more similar to the trademarks of the other party than the trademark that forms the basis for the acquired right, nor should it result in a likelihood of confusion and/or an unfair advantage.
- The new trademark should cover goods/services that are identical to or the same type as those covered by the trademark that forms the basis for the acquired right claim, i.e., should not cover a broader specification.
The above-listed criteria should be evaluated all in one in terms of the specific conditions of each case.
It can be mentioned that this approach of the Court of Appeal has been adopted to a large extent by TÜRKPATENT, but it is not currently possible to speak of a uniform practice.
Different Approaches and Controversial Issues – Requirement for Use:
Implementation of the criteria to a concrete case in different ways, as in the subjective evaluation of the main element of and level of similarity between the trademarks besides the scope of the goods/services, for which TÜRKPATENT seems to be stricter, is one of the usual controversial issues encountered in the evaluation of the acquired right claim.
Nevertheless, the main factual difference between the current practices of TÜRKPATENT and the Court of Appeal can be mentioned to be the requirement for the use of the trademark registration that forms the basis for the acquired right claim.
The current practice of TÜRKPATENT is to take into consideration the period for which the trademark that forms the basis for the acquired right claim has been registered in Türkiye regardless of whether it is used or not and requires registration of the subject trademark for at least five years.
On the other hand, the recent decisions of the Court of Appeal explicitly require actual and serious long-term use for the acceptance of acquired right claims besides registration. The most prominent view on this is that a trademark that has been registered for at least five years (and is theoretically vulnerable to cancellation on non-use) but has not been used seriously should not constitute acquired rights to its owner.
Therefore, if the trademark that is considered to constitute acquired rights by TÜRKPATENT due to the reason that it has been registered for at least five years is not proved to be seriously used for a long period of time, the acquired right claim may be rejected in case of a lawsuit in accordance with the current practice of the Court of Appeal.
Evaluation in the Light of the Administrative Cancellation Actions:
In this context, it is worth reminding that cancellation actions, previously held before the relevant court as lawsuits, started to be handled by TÜRKPATENT as of 10 January 2024 as administrative proceedings under Article 26 (2), in accordance with the provisions of Article 192 of the IP Code. Accordingly, the risk of facing a cancellation action may practically increase after this date for trademarks that have been registered for at least five years but have not been validly used in Türkiye. Citing such registration as the grounds for an acquired right claim, simply due to the reason that TÜRKPATENT currently does not require use in connection with that specific proceeding, may directly alert the other party to initiate a separate administrative non-use cancellation action against that registration.
Moreover, most of the controversies on this topic focus on the importance of long-term use for the acceptance of acquired right claims, even instead of registration. From a related perspective, it is argued that a trademark registered for more than five years with no use constitutes acquired rights to a new application whereas a trademark registered for four years, for instance, but has extensive use and recognition does not, which is against the main purpose of the acquired rights principle. It is even claimed that mere long-term serious use of a trademark should be sufficient to constitute acquired rights to its owner with no requirement for registration in the scenario that the remaining criteria are met.
The Path Forward:
It is worth mentioning that during the webinar of TÜRKPATENT on “The Concept of Acquired Right in Trademark Law” held on 26 October 2023, it was mentioned that TÜRKPATENT is working on harmonizing its decisions with the recent Court of Appeal decisions. TÜRKPATENT has also given the signals that the concept of acquired rights may also be added to the Trademark Examination Guideline published with the purpose of indicating the practice of TÜRKPATENT.
The current Trademark Examination Guideline of 2021 makes a brief reference to the concept of acquired rights (pg. 91), simply indicating that acquired rights cannot be taken into consideration during the examination of an application on absolute grounds, except for Article 5/1(ç) of the IP Code prohibiting registration of identical or indistinguishably similar trademarks covering identical or same type of goods/services in the name of different owners. However, no detailed explanation is included about the concept and the criteria considered during the evaluation of acquired rights on relative grounds or on the basis of Article 5/1(ç) on absolute grounds.
The addition may result in a more uniform practice, hopefully as a result of a comprehensive consideration and evaluation of the controversial issues both in terms of the practices of TÜRKPATENT and the Court of Appeal.
For the time being, it is suggestible to strengthen acquired right claims not only through a valid trademark registered for at least five years in Türkiye, but also with evidence of actual and serious long-term use, even at the administrative proceedings before TÜRKPATENT.