In a guest post, Selma Ünlü discusses an important decision in Turkey that brings to an end debates over the treatment of actions for non-use of trade marks:
Article 14 of the now-abrogated Decree Law number 556 was the basis of non-use cancellation action of trade marks in Turkey. This was cancelled on 6 January 2017 by the Constitutional Court, before the effective date of the Industrial Property Law numbered 6769 (IP Law) which entered into force on 10 January 2017. However, this cancellation decision caused several problems in the implementation.42
The IP Law regulating the obligation to use a trade mark and the cancellation of a trade mark in case of non-use entered into force just four days after the cancellation decision made by the Constitutional Court. But the provisions of the IP Law could not be applied in non-use cancellation actions filed in the period when the abrogated Decree Law numbered 556 was in force due to the principle of non-retroactivity. Therefore, courts have been dismissing cases on procedural grounds due to the lack of legal basis.
These were not the only implementation problems caused by the cancellation decision of the Constitutional Court. The decision also caused discussions whether non-use cancellation actions may be initiated before the date of 10 January 2022. Hence, some practitioners and academics assert that the use obligation of a trade mark within five years of its registration date started on the effective date of the IP Law, namely 10 January 2017. They therefore argue that such actions could not be filed without implementing the five-year grace period as of 10 January 2017, namely before 10 January 2022, even for trade marks where the five-year grace period has expired.
Supreme Court decision published
The decision of the 11th Chamber of the Supreme Court to address these questions was finally published on 25 June 2019.
The decision (numbered 2019/1765) discusses whether the relevant provisions of the IP Law should be applied retroactively or not. Although the decision emphasises the non-retroactivity of laws, it also states that there is no obstacle for legislators to introduce a law that is meant to be effective retroactively. It is indicated that the IP Law has entered into force on 10 January 2017 with its publication in the Official Gazette; however, the draft was accepted by the Parliament on 22 December 2016.
Since the Constitutional Court’s decision was not yet made by the date of its acceptance, the legal gap to be caused by the decision dated 6 January 2017 was not foreseeable by the legislator. It is indicated within the decision that the essential purpose of the legislator from the beginning was to regulate the provisions of the IP Law regarding the use of trade marks and cancellation of trade marks in case of non-use to be effective retroactively.
As stated in the decision of the Supreme Court, laws are not implemented retroactively as a rule and have effect prospectively only. But the Supreme Court has concluded with this decision that implementing IP Law 6769 to cover the period before the effective date serves the intention of the legislator and the purpose of the law.
In the light of the case law made by the Supreme Court very recently, discussions about whether non-use cancellation actions based on the IP Law would be filed before 10 January 2022 have come to an end. Accordingly, cancellation actions can be filed for trade marks where the five-year grace period is expired before 10 January 2022.
Selma Ünlü is Senior Partner of NSN Law Firm and a member of the MARQUES Unfair Competition Team