Decision could shake up non-use cancellation actions

Turkey

Like most European trademark laws and regulations, the Turkish Trademark Decree Law 556 provides that the following will constitute use:

  • use of the registered trademark with additional elements that do not alter the distinctive character of the mark;
  • use of the trademark on goods or packaging only for export purposes;
  • use of the trademark with the owner’s permission; and
  • importation of goods bearing the trademark.

With regard to trademarks registered for goods, what constitutes use - and what does not - seems clear. However, when trademarks are used for services, what constitutes use is less certain. In a case involving broadcasting services, a Turkish court decision has given useful guidance to trademark owners who are facing, or may face, a trademark cancellation action on the grounds of non-use.

In 2006 a local broadcasting company applied for the cancellation of a global broadcasting company’s trademark on the grounds of non-use. The defendant had used the trademark at issue, which is registered in Turkey for broadcasting services in Class 38 of the Nice Classification, until 2001 via paid digital broadcasting platforms. However, the defendant had had no local presence and had not directly used its trademark in Turkey during the five years preceding the filing of the action.

Before the court, the plaintiff stated that:

  • the defendant had not used its trademark in Turkey during the past five years;
  • the defendant had no local presence and did not broadcast in Turkey or in Turkish;
  • neither the defendant nor its television channel are registered before the Turkish Higher Board of Radio and Television.

In response, the defendant argued and documented that the broadcasting services bearing the trademark could be easily accessed by many viewers in Turkey, via satellite and the internet; therefore, the fact that the services are produced outside of Turkey in a language that is not Turkish was irrelevant. Further, the defendant argued that, due to the nature of broadcasting services, the concept of ‘use’ should be interpreted according to the characteristics of these services. The defendant alleged that, as long as the service is being received and viewed by consumers in Turkey, whether in real time or not, use of the mark should be considered as serious and continuous.

The Court of First Instance evaluated both parties’ arguments and decided in favour of the defendant. Its reasoned decision was based on the following findings:

  • In cases involving broadcasting services, the concept of ‘use’ should be analysed carefully. The Trademark Decree Law does not require that the services be produced in Turkey.

  • Broadcasting services cannot be simplified to the notion of ‘national broadcasting’ via local transmitters, buildings, hardware and staff located in Turkey: nowadays, broadcasting services are provided through both traditional methods and the internet.
  • As long as the broadcasting services are easily accessible from Turkey via the internet or satellite, there is no need for the services to be in Turkish, or include advertisements in Turkish, to conclude that the services target and reach audiences in Turkey. Therefore, the trademark at issue was in ‘use’ under the Trademark Decree Law.

The plaintiff appealed twice to the Court of Appeal, but the appeals were rejected and the summarised decision of the First Instance Court has now become final.

This is a landmark decision in relation to cancellation actions on the grounds of non-use and will be important for future reference in Turkey. As several television shows or channels broadcast only over the internet (eg, via YouTube), parties seeking to establish the role of the internet may rely on this decision to demonstrate use in cases involving broadcasting services.

Ceylin Beyli, CBL Law Office, Istanbul

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