Turkish Supreme Court said the final word on non-use cancellation actions

Turkish Supreme Court (TCC) has recently clarified a long-disputed issue on non-use of trade marks.

Background

A Specialized Court of Intellectual and Industrial Property (IP Court) filed a request for the cancellation of Article 14 of the Decree Law no. 556, which includes provisions regarding use of trade marks and their cancellation in case that they are not used within five years from their registration. Meanwhile, the draft law for industrial property was enacted on December 22, 2016 by the Turkish Parliament. The new Industrial Property Law (IPL) was published and came into force on 10 January 2017.

Just before the entry into force of the IPL, the TCC’s decision cancelling Article 14 of the Decree Law No. 556 on January 06, 2017 was published and took effect. The decision of the TCC were established on the grounds that trade mark rights cannot be annulled on the basis of the provisions of Decree Law on the grounds that those rights are proprietary rights and so the fundamental rights in the constitutional meaning which are not allowed to be annulled under the Decree Laws.

As the IPL, which includes use provisions likewise, come into force after the cancellation of Article 14, many non-use pending cancellation actions filed under the Old  Decree Law were dismissed by the IP Courts due to 4-day legal gap before the effective date of the IPL and on the grounds that there are no longer provisions which allow trade marks, which are not genuinely used within the 5-years as from their registration, to be cancelled by non-use cancellation actions at the Courts.

This has not remained limited to only pending non-use cancellation actions but also raised the question about when the non-use cancellation actions can be filed under the IPL. As the IPL came into effect on January 10, 2017 and the laws are not usually made retroactively (as in this case), some academics and IP professionals have argued that non-use cancellation actions can only be filed after January 10, 2022 for the trade marks registered under both the old Decree Law and the IPL  with the following considerations:

• There is no non-use provision before the coming into force of the IPL (as a result of the cancellation of the provision related to the use of trade marks under the Old Decree Law by the TCC)
• the effective date of the IPL is January 10, 2017 and the 5-years use period, as prescribed by the IP Law, can be started as from this date of entry into force.

At the end of all these debates, the Turkish Supreme Court (TSC) has put end to the chaotic situation with its recent decision.

Decision of the Turkish Supreme Court

The TSC has firstly investigated whether the related provisions of the IPL can be applied retroactively and opined that the Laws are not made retroactively as a rule and bear legal consequences prospectively. Whereas it is the general principle, according to the TSC, there is no obstacle for the lawmaker (Turkish Parliament) to make legislations retroactively. The TSC further considered the following facts:

• The provisions of the IPL were enacted on December 22, 2016 by the Turkish Parliament and come into force on January 10, 2017.
• The cancellation decision of the TCC regarding the non-use provisions under the Old Decree Law  came into force on January 06, 2017.

In view of these, the TSC further considered and concluded that:

• It should be accepted that the will of the lawmaker emerged on 22 December 2016 (before the effective date of the decision of the TCC).
• While the main intention of the lawmaker is to implement the non-use provisions retroactively, a legal gap unpredictably emerged due to the TCC’s cancellation decision coming into effect after the enactment date but before the date of entry into force of the IP Law.

The TSC confirmed that non-use cancellation actions can be filed even before January 10, 2022 with regards to trade marks which are not used within 5-years use period.

The TSC has consequently clarified an issue which have been largely debated over 2 years in Turkey. In light of this cas law, anyone can any longer file non-use cancellation actions against trade marks based on non-use claim.

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Use or non-use matter for patents in Turkey

The period for using or working a patented invention is typically three years as from the publication of the patent grant in the Turkish Patent Bulletin or four years as from the application date of the patent, whichever is the later. This period is especially important in respect of the compulsory requests, as it is not possible for third parties to request compulsory license before the expiration of this statuary period.

The due date for use is actually relative since the actual due date for use is calculated considering the date of request for a compulsory license. In other words, the use can be performed any time during the lifetime of the patent but should be performed before the request for compulsory licence for avoiding any risk of compulsory license if three years period have already passed. For instance, if the use has been performed at a time after 3 years as from the publication of the patent grant in the Turkish Patent Bulletin but before the date when the request for compulsory license is filed, the use requirement has been deemed to performed.

In the case of European patents validated in Turkey, the initial 3-years period for the use requirement is calculated based on the publication date of the European patent in the Turkish Patent Bulletin (not the publication date in the European Patent Bulletin). After that period, any third party will be allowed to request compulsory license based on possible non-use.

Whereas the actual use is as defined above, non-use or use declarations, as prescribed by the Implement Regulation (Rule 117 (7)) but not the Law, should be filed within three years as from publication of the decision to grant patent in the Turkish Patent Bulletin or four years as from patent application date, whichever is the later. The use and non-use declarations filed for the patents are published in the Turkish Official Patent Bulletin. The patents in respect of which no use is declared are also published in the Turkish Official Patent Bulletin.

The Implementing Regulation, in general terms, specifies that the market conditions and circumstances beyond the control and will of the patentee is considered in assessing the use. Technical or economic or legal reasons of an objective nature, such as marketing authorization, compliance with standards, need for new applications to be made in different fields are to be deemed to constitute legitimate excuses for the inability to put the patent to use. These reasons in the nature of constituting obstacles for using the patented invention are accepted as reasons beyond the control and will of the patentee.

The Regulation does not prescribe any positive or negative effect on patent rights if use or non-use declaration is not filed within the prescribed due dates. This point is not sufficiently clear but it can be said that the main purpose for requiring to file non-use or use declarations is:

• to keep the third parties informed of the fact whether the patent is being used or not, on what grounds the use has been or has not been performed, or the legitimate reasons for non-use as generally defined in the Regulation, and
• to encourage the patent holders to use their inventions or to grant licenses if they do not use their patented inventions directly in Turkey.

As for the nature of the declarations, a standard form (P-34) in the nature of declaration is provided by the Turkish Patent and Trademark Office. The form, to be signed by patent attorney on behalf of the patentee, contains the following statements, one of which is selected:

• Pursuant to the seventh and eighth paragraphs of Article 117 of the Regulation on the Implementation of Turkish Industrial Property Code (Law No. 6769), it is hereby declared that the invention subject to the application/patent/utility model is used.

• Pursuant to the seventh and eighth paragraphs of Article 117 of the Regulation on the Implementation of Turkish Industrial Property Code (Law No. 6769), it is hereby declared that the invention subject to the application/patent/utility model is not used.

Although the form provides standard statements, an additional declaration can be submitted along with the form for reasoning non-use or clarifying use. Furthermore, evidences of use in the case of use, and any documents reasoning the non-use in the case of non-use can be attached to the declaration.

The declaration of non-use can cover a legitimate reason as identified above (e.g. procedures of marketing authorization ongoing). On the other hand, the declaration of use can cover a statement how the patented invention is being used in Turkey, e.g. by being imported to Turkey, or being produced in company or facility X located in Turkey etc., which may be useful to discourage third parties who would attempt to request compulsory license.

Alternatively, it is possible to file offer for license to prevent third parties from requesting the compulsory license if the subject invention is not used or will not be put into use by the patent owner. Offer for license can be always withdrawn.

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