Continuous use protects expired trademarks

Article 8 of the Turkish Trademark Decree-Law No 556 states that a trademark application that is identical or similar to an expired trademark, in terms of its content and the goods/services that it covers, should be rejected upon opposition if the earlier trademark expired during the two-year period preceding the date of the new application. Therefore, the owner of an expired trademark can still file a successful opposition against a potentially malicious application within the two-year period following the date on which the registration lapsed due to non-renewal.

However, in light of a recent decision of the Turkish Patent Institute (TPI), it seems that a trademark may still be protected after the two-year period has passed if the expired trademark is still in use.

In 2013 a worldwide-known European company active in the design and sale of power solutions for the automotive, industrial, marine, mobility, off-grid and telecom industries became aware of a trademark application by a local energy systems company in Turkey. The application was identical to:

• the European company’s earlier trademark, the registration of which had expired; and

• the sign used by the company in its commercial activities, including on its website.

Opponent’s lapsed trademark in Turkey

Opponent’s registered trademark in countries other than Turkey

Opponent’s trademark as used on its website

Opposed trademark

The opponent’s trademark was no longer registered in Turkey due to non-renewal in 2009, and had been lapsed for five years. However, as the opponent had continued to use its trademark through its distributors in Turkey since the expiry of the registration, it filed an opposition claiming that:

• it had prior rights over its trademark dating back to 2009 and was the prior user of the mark;

• the likelihood of confusion between the trademarks was obvious, as the mark applied for was simply a coloured version of the opponent’s expired trademark in Turkey; and

• the bad faith of the applicant was also obvious since, in addition to being a coloured version of the opponent’s mark, the mark applied for clearly copied the opponent’s mark as used on its website.

In its examination of the opposition, it is understood that the TPI took into account the use of the trademark during the period from the date of expiry of the registration to the date of application for the opposed trademark, as such use was continuous and was thus considered as prior use of the trademark. Accordingly, the TPI upheld the bad-faith claim, as the parties’ trademarks were visually identical. The TPI thus accepted the opposition and rejected the application in its entirety.

It is not surprising that prior use will provide protection to a non-registered trademark against the use of identical or similar trademarks. However, following the TPI’s decision in the present case, it seems that the continued use of a trademark can still provide protection against malicious registrations, even where a trademark has not been renewed and more that two years have passed since the date of non-renewal.   

Ceylin Beyli and Elfiye Kudaki, CBL Law Office, Istanbul