Background:
On January 06, 2017, the Constitutional Court abolished Article 14 of the Trademark Decree-Law no. 556 (the Decree-Law) that regulated the use requirement of a registered trademark. The said Article set forth the legal basis for non-use revocation of a trademark which has not been put to use in Turkey without a justifiable reason within a period of five years following the registration or of which use has been suspended during an uninterrupted period of five years.
Just four days after such annulment, the Industrial Property Law no. 6769 (the New Law) came into force on January 10, 2017 and brought exactly same use requirements for registered trademarks with its Article 9. However, the four-day’s legal gap created uncertainties on implementation of the New Law due to the non-retroactivity principle.
In doctrine, some held the view that the non-use revocation actions filed under the abolished Article 14 should be dismissed as the sole legal basis of nullification claims was annulled and Article 9 of the New Law was not deemed retrospectively effective by the legislator. Those also argued that the five years’ grace periods for compulsory use of trademarks registered before January 10, 2017 should re-start as of the entrance into force of Article 9 and these registrations may be subject to non-use revocation actions only after January 10, 2022.
Still, it is mostly argued that the legal gap should be filled by the judges by virtue of Article 9 of the New Law or the relevant articles of international conventions (Article 5 of the Paris Convention and the Article 19 of the TRIPS Agreement) to which Turkey is a party.
But the IP Courts of the First Instance did not follow the prevailing opinion and refused the non-use revocation actions pending under the abolished Article 14 on the ground of the four-day gap in law. The Court of Cassation that will have the final say on this issue has not given its verdict on any of these decisions.
The approach of the IP Courts of the First Instance has been different for the non-use revocation actions filed under Article 9 of the New Law and some of them have been accepted despite refusal of some others due to inapplicability of the related article before January 10, 2022.
The long-waited decision of Court of Cassation:
The 11th Chamber of Court of Cassation has recently issued its decision on (numbered 2019/1765 and dated June 25, 2019) and removed the uncertainty for non-use revocation actions filed under Article 9 of the New Law.
The decision recognizes the prospective effects of the laws, but points out that there is no obstacle for the legislator to enact a law retrospectively. It also says that the legislator revealed its intention about enactment date of the New Law on December 22, 2016 by approving it and it was not possible to foresee the legal gap to arise from annulment of the Article 14 of the Decree-Law on January 06, 2017. Therefore, the real intention of the legislator was to implement use requirements retrospectively and the legal gap should be filled in on this basis.
Comment:
The Court of Cassation’s decision has put an end to the discussions on implementation of Article 9 of the New Law and made it clear that non-use revocation actions can be filed without waiting until January 10, 2022.
Now, it is time for clarification of the situation for the pending non-use revocation actions based on the abolished Article 14. The Court of Cassation is expected to apply the same approach for the relevant files and to require the courts to fill the unforeseen legal gap, since all above discussions parallelly arose from it.