The Turkish Court of Appeal and Turkish Patent and Trademark Office’s (TÜRKPATENT) diverging practices in terms of implementing the acquired rights principle has been a controversial issue (see “Navigating Controversies and Conditions of Acquired Rights, Evaluating Different Approaches of TÜRKPATENT and Court of Appeal in the Light of the Administrative Cancellation Actions”)
The key distinction between TÜRKPATENT’s practice and that of the Court of Appeal has so far lain in the requirement for the use of the trademark registration underpinning an acquired rights claim. While TÜRKPATENT has focused on the five-year registration period regardless of use, the Court of Appeal has explicitly required actual and serious long-term use as well as registration for recognizing acquired rights claims.
In its October 2023 webinar, TÜRKPATENT expressed its intention to harmonize its decisions with those of the Court of Appeal and hinted at the potential inclusion of the acquired rights concept in the Trademark Examination Guideline, which outlines its practices. While no official announcement or guideline update has been made so far, a recent decision by the Trademarks Department provides insight into TÜRKPATENT’s evolving approach on this matter.
Trademarks Department’s Decision:
Through its official decision dated 25 October 2024 regarding an opposition proceeding, the Trademarks Department has ruled in favour of the opponent, despite the existence of the applicant’s earlier trademark being registered for more than five years. The applicant’s earlier trademark was identical to and covered, inter alia, identical goods to those in its subsequent opposed application. Moreover, the earlier trademark was not the subject of a dispute between the parties. Nevertheless, TÜRKPATENT, disregarding the applicant’s earlier trademark, held that the opponent’s and applicant’s trademarks were similar, covered similar goods, and could thereby cause a likelihood of confusion.
Essentially, the applicant’s earlier trademark was not considered to constitute acquired rights for its subsequent trademark application where all the criteria previously required by TÜRKPATENT for the acceptance of acquired rights were met. The Trademarks Department, however, was unconvinced by the evidence of actual and serious long-term use.
The accuracy of the Trademark Department’s determination about the insufficiency of the evidence presented is beyond the scope of this article. Instead, the focus is on the observed shift in its approach to the acquired rights principle, which appears to be aligning with the decisions of the Court of Appeal.
The Road Ahead:
The recent decision suggests that TÜRKPATENT is beginning to adopt and implement the widely accepted view in its decisions—starting as early as the initial examination stage by the Trademarks Department—that a trademark registered for at least five years, and thus theoretically vulnerable to non-use cancellation, cannot establish acquired rights if it has not been used in a serious and substantial manner.
An official announcement or guideline update would provide more details into the evolving practice of the TÜRKPATENT and result in a more uniform practice.
Nevertheless, in the light of the recent decision of the Trademarks Department, the right holders should be cautious when claiming acquired rights based on an earlier trademark registration. To strengthen their claims, they should not only rely on a valid trademark registered for at least five years but also provide evidence of actual and serious long-term use, even during the initial administrative examination stage. Asserting acquired rights based on an earlier trademark registration that fails to meet the use requirement may not only result in an unfavourable decision in that specific case but also risk prompting the opposing party to file a separate administrative non-use cancellation action, potentially leading to the loss of the earlier trademark right.
From the opponents’ perspective, on the other hand, it is important to note that a previous registration does not guarantee a favourable outcome for the applicant. Opponents should be aware that they can highlight lack of actual and substantial long-term use of the earlier trademark relied upon as the basis for an acquired rights claim, even during opposition proceedings before the Trademarks Department.