According to Turkish Law, it is principle for the trademark right holder to use the trademark. The usage of the trademark has been arranged under the article 14/1 of Executive Order about Protection of Trademarks Numbered 556. Hereunder; ‘Trademark will be cancelled, in case of non-use of the trademark without any valid ground in five years beginning from the registration date or to discontinue to the usage of the trademark continuously for five years period.’
Constitutively, it is necessary that usage of trademark belongs to the trademark holder. However, it is also possible to give the right of using the trademark to the third parties by the permission of the trademark right holder. The usage of the third party along with the permission of the trademark right holder may actualize by ways of;
Exclusive distributorship agreement
To be given for the trademark as a license
Transfer of the trademark
If the right of usage is transferred to the third party by way of license, it will be acknowledged as the trademark right holder uses the trademark. The usage of trademark by its own holder requires to be open and in public domain as well. Lawfully, the usage of the trademark by the right holder only for the right holder’s own relations is not accepted as usage.
The subjects accepted as usage are defined under the Turkish Law and in the regard of these subjects it will be accepted as there is a usage of trademark:
The usage of the trademark in different factors without changing the characteristics of the registered trademark
The usage of the trademark on goods and packing only for exportation
The usage of the trademark with the permission of the right holder
The importation of the goods titled with the trademark
In accordance with International Law and international agreements, it is an obligation for the trademark to be used in five years beginning from the registration date, for continuity of the trademark rights which are arisen with the registration and processed from the beginning of the registration date. According to Turkish Law, legally, an invalidity case can be filed in case of there is non-use of the trademark within five years beginning from the registration date and discontinuity to the usage of the trademark continuously for five years. In order to file an invalidity lawsuit, the five years of period must be lapsed. The judge of the court will make a decision according to the conditions of the situation of trademark and if the trademark is being used or not at the date of the hearing.
In conclusion, there is not any clause about time bar or lapse of time to file an invalidity lawsuit based on non-use of registered trademark under the article 42/1c of Executive Order about Protection of Trademarks Numbered 556. Therefore, invalidity of the trademark based on non-use, can be demanded at any time. The required cause of action for the invalidity lawsuit to be filed is non-usage of trademark for five years. In these cases, burden of proof about usage is on right holder’s side under the article 1of Executive Order about Protection of Trademarks Numbered 556 4. Also, in order to file invalidity lawsuit, non-use of trademark situation has to be proven as well. Constitutively, the lawsuit can be filed after five years from the beginning of the registration date. The court will consider on its own motion if the five years period has ended or not.
