Landmark decision on time limits in trademark cancellation actions

In a landmark decision (Case 2006/367- 2007/257, November 9 2007), the Istanbul d Civil IP Court of First Instance has ruled on the issue of time limits in trademark cancellation actions.

On May 23 2000 the defendant, a local company, registered the trademark ICE BOYS (Registration 2000/09712) for goods in Class 25 of the Nice Classification. In September 2005 Gilmar SpA filed an action for the cancellation of the trademark on the grounds that it was confusingly similar to its earlier registered trademarks ICE and ICEBERG.

The defendant alleged that:

• there was no likelihood of confusion between the marks;
  
  
• the time limit for filing a cancellation action (five years) had expired; and
  
  
• Gilmar had lost the right to file a cancellation action by remaining silent during such a long period of time.

Under the Trademark Decree Law, the time limit for filing an invalidation action is five years starting from the date of registration. However, there is "no limit in case of bad faith registration" of a well-known mark by a third party without consent of the rights holder. One area of debate was whether the expression 'date of registration' should be interpreted as the date of application for registration or the date of publication in the Official Gazette.

The court held that the trademark ICEBERG is well known in Turkey. Therefore, the defendant, which operates in the same sector as Gilmar, should have been aware of the trademarks ICE and ICEBERG and should have acted as a prudent merchant under Article 20(2) of the Commercial Code. The court stated that in today's global economy, a prudent merchant should be aware of all trademark registrations not only in Turkey, but also in other countries - at least in the sector in which it operates. Consequently, the court found that the defendant had acted in bad faith and rejected the argument that the time limit for filing a cancellation action had expired.

Moreover, the court concluded that even if the defendant had not acted in bad faith, the lawsuit was not time barred since the five-year limitation period should not be calculated from the date of application for registration, but from the date of publication of the trademark in the Official Gazette (in 2002).

The principle that an applicant may lose the right to file a cancellation action due to its silence is not explicitly contained in the Trademark Decree Law, but is recognized in the doctrine and the case law of the Court of Appeals. Referring to the First Trademarks Directive (89/104/EC) and the Community Trademark Regulation (40/94), as well as to the case law of the Court of Appeals, the court ruled that the principle of loss of right due to silence applies only where the following conditions are met:

• The owner of the earlier trademark is aware of the registration and use of the later trademark;
  
  
• The owner has not filed a lawsuit or taken any other actions against the registration and use of the later trademark;
  
  
• The owner has remained silent for a period of time of at least five years; and
  
  
• The owner of the later trademark has registered and is using the trademark in good faith.

Applying these principles to the case at hand, the court found that Gilmar had remained silent for a period of only three years and nine months from the publication of the trademark. Therefore, Gilmar had not lost its right to file a cancellation action.

The decision of the Istanbul Civil IP Court of First Instance may be subject to appeal. If the decision is appealed, the interpretation of the Court of Appeals will be significant as only a few decisions address the issue of time limits in cancellation actions.

Ugur Aktekin and Hande Hançer, Mehmet Gün & Partners, Istanbul