A burning question in Turkey has been whether the COVID-19 pandemic could constitute a proper reason for “non-use” of a registered trade mark. Yasemin Aktaş reports on a recent decision that brings some clarity.

According to Article 9 of the Turkish Intellectual Property Code 6769 (IP Code), trade mark registrations are vulnerable to cancellation if they have not been put to genuine use on the goods and services for which they are registered within any continuous period of five years from the date of registration, unless there are “proper reasons” for non-use.

The concept of “proper reasons” is not interpreted in the IP Code. The doctrine accepts that the concept of "proper reasons" does not necessarily require the existence of an objective impossibility and states that any situation beyond the control of the trade mark owner and in (sufficiently) direct relationship to the trade mark to make use impossible or unreasonable can be deemed as "proper reasons".

Proper reasons

Natural disasters, states of war, economic crisis, changes in customs legislation, delay/failure to give the necessary administrative permission bring goods to the market are all likely to be considered “proper reasons” according to the Turkish doctrine.

Conversely, the Supreme Court has found that fire in the factory (2009/5669 E., 2010/12171 K.), seizure of the brand (2002/1719 E., 2002/2064 K.), and declaration of concordat (2007 /10093 E., 2008/13302 K.) are not “proper reasons” for non-use of a registered mark, as they are a normal part of ongoing business and can be avoided or overcome with a well-planned or adapted strategy.

Recent case

In a recent case, a US company filed a court action against a Turkish registrant for non-use cancellation of its trade mark registration covering “microphones, speakers, headphones” among others in class 9, of which the five-year grace period ended on 18 August 2021.

The registrant was using its other registered trade marks on “microphones, speakers, headphones”, but could not submit any adequate evidence proving the use of the conflicting registration. Instead, it claimed that it was preparing for the use but could not put the products onto the market due to the COVID-19 restrictions put in place in Turkey from March 2020.

It claimed that it could not start manufacturing due to imposed lockdowns and the difficulties arising from the national and global economic crisis made it impossible to generate more investment for the related mark at that time.

The First Instance Court rejected the registrant’s defences and ruled for non-use cancellation of the registration to be effective as of 19 August 2021. This was on the grounds that the economic crisis or slowdown in national/international trade due to the pandemic did not constitute a justification for not using the registered mark.

Appeal pending

The registrant appealed the decision, and the appeal is now pending before the Regional Court. Finalisation of this decision will hopefully provide some clarification as to whether the COVID-19 pandemic could constitute as a “proper reason” for non-use of a registered trade mark in Turkey.

This is of particular importance considering the defense was not accepted as a “proper reason” even though almost one-third of five years’ grace period following the registration was overlapping with the duration of the COVID-19 pandemic.

Yasemin Aktaş is a Partner of BRANDIT GmbH in Turkey and a member of the MARQUES Dispute Resolution Team

The EUIPO has announced that new pre-assessment checks are now available to EUTM applicants. These checks are designed to simplify and reduce errors in trade mark applications by allowing applicants to identify problems before filing.

The new features enable applicants to check whether a trade mark is deceptive, is offensive in any EU language, is registered as an EU domain or is in conflict with a plant variety.

In future, further checks will be added, including for distinctiveness/descriptiveness, conflicts with geographical indications and Article 6ter rights, or if a similar mark has been rejected for similar goods and services.

If an applicant has activated the checks in the EUTM filing form, and an issue is detected, an alert will appear. Applicants can also give immediate feedback via a form, which will support the further development of the tool.

Some of these features will be powered by AI. EUIPO emphasises that the results of the tool are purely informative and non-exhaustive.

The Office is also developing a standalone tool for applicants to carry out these checks before filing.

The image shows an example of the pre-assessment checks in the EUTM filing form.

The MARQUES Unfair Competition Team has added information on Germany and Italy to its chart on self-regulatory organizations (SROs) for advertising and unfair competition matters.

The updated chart can be downloaded from the Team’s page on the MARQUES website (MARQUES log-in required).

The new information has been provided by Team members Carmen Castellano, Castellano IP - Studio Legale Avv. Castellano, Italy and Rani Mallick, Lubberger Lehment, Germany. The project is led by Team member Philippe Probst, Fuhrer Marbach & Partners, Switzerland.

The table already includes contributions from Finland, Switzerland, Turkey and the United States. It provides information for each jurisdiction on: the existence and identity of SROs; matters handled; rules, eligible parties and fees; procedure; penalties and enforceability.

Further countries will be added in due course.

For more information, please contact a member of the Unfair Competition Team.

Episode 15 of the Talking MARQUES podcast is now available on the MARQUES website and on Spotify.

In this episode, three members of the MARQUES Programming Team explain more about this year’s Annual Conference, including the plenary sessions, workshops and social events.

They also discuss things to do in Berlin, the networking opportunities at the Annual Conference and plans for future MARQUES events.

The participants in this episode are Claus Eckhartt, Bardehle Pagenberg, Germany; Tanya Meedom, Elmann IPR, Denmark; and Nicholas Foot, Sandoz International, Germany.

Claus chairs the Berlin Conference Team, Tanya is Vice-Chair of the Programming Team and Nick co-chairs the MARQUES Corporate Focus Group.

The theme of this year’s Conference is “In Brands We Trust: The Next Frontier” and registration is already open on the website here.

This episode lasts about 20 minutes. You can also listen to the 14 previous episodes of Talking MARQUES, which cover a wide range of trade mark, design and copyright topics.

The next episode of Talking MARQUES will be available later this year.

EUIPO held the third audit of the quality of cancellation decisions on 1, 14 and 15 March 2023.

Roland Mallinson and Guido Donath represented MARQUES and were among 16 users from 11 user associations who took part.

The participants checked a sample of 32 cancellation decisions against the EUIPO quality criteria. They reported “excellence” for eight decisions, “compliance” for 21 decisions and “actions needed” for three decisions.

So far, 25 SQAP audits have taken place since they were launched in 2017. The SQAP enable users of the trade mark and design systems to contribute directly to improving the quality of EUIPO’s decisions.

MARQUES has taken part in the SQAP sessions since they began. The next SQAP audit will be on opposition decisions in June 2023, followed by one on design invalidity decisions in September 2023.

More information is available on EUIPO’s website here and on the SQAP page here.

Photo taken from EUIPO website

You can now book your place at the 37^th MARQUES Annual Conference, which takes place in Berlin, Germany form Tuesday 19 to Friday 22 September 2023.

The theme of this year’s Conference is “In Brands We Trust: The Next Frontier” and sessions will address issues such as how diversity and the cultural environment will affect brand authenticity

There will be panel sessions on topics including piloting brands, the metaverse, people power, brands in a time of crisis, e-commerce, and next generation content.

There will also be a session on recent CJEU and EU General Court case law and one on current opportunities and challenges faced by WIPO.

On Thursday afternoon, delegates can choose between six workshops – on China, GIs, sustainability regulations, brand engagement, the rule of neutralisation and EU design law. Each of the workshops will be repeated, meaning you can attend two sessions.

Social events include a Welcome Reception (Tuesday), Cultural Reception at the Arminius Markthalle (Wednesday) and Gala Dinner (Thursday). There will also be a choice of tours on Thursday afternoon.

Registration is now available for both MARQUES members and non-members. There is an Early Bird discount available for MARQUES members until 30 June, so it may be worth joining MARQUES to take advantage of that.

There is a non-accommodation option and modular registration are also available.

Berlin is an iconic city with a unique history and MARQUES looks forward to returning there for the 37^th Annual Conference. We hope you can join us!

Europol and EUIPO have published the Procedure manual on handling misleading payment requests for intellectual property system users: Act smart against scammers!

According to EUIPO, the new manual contains an overview of the key issues that arise when facing a misleading invoice or other payment request; profiles of the fraudsters behind the scams; tips on how to identify misleading communications; and information on how applicants and IP office can protect themselves.

Europol estimates that 2% of IPR applicants and owners, or 8,000 entities, may be targeted by these schemes.

The threat goes beyond misleading invoices and can include scam emails during prosecution and renewal periods.

As most readers will be aware, EUIPO never sends invoices or payment requests by post or email concerning the registration or renewal of IP rights. 

MARQUES has a dedicated Anti-Fraud Task Force that monitors scam invoices and similar communications, working closely with IP offices. For more information on this topic, or to share any suspicious messages received confidentially, please contact a member of the Task Force.