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On February 2, 2021, the Turkish Patent and Trademark Office (“TPTO“) Re-Examination and Evaluation Board issued a ground breaking decision that under certain circumstances, repeat trademark filings would constitute bad faith, and set benchmarks in this regard (“TPTO Decision“).
As per Article 9 of the Industrial Property Law No. 6769 (“IPL“), if, within a period of five years following the date of registration, the trademark has not been put to genuine use in Turkey by the trademark proprietor in connection with the goods or services for which it is registered, or if such use was suspended during a period of subsequent five years, third parties can file an action against this trademark to cancel it via a “non-use cancellation action”. While non-use cancellation actions were utilized in practice before the IPL entered into force in 2017, after the IPL introduced the genuine use requirement as a defense for a “proof of use request,” which is also available in trademark oppositions, trademark invalidation and infringement claims.
In practice, some applicants tend to file trademark applications without any intention of use. These trademark applications are filed to avoid the risk of cancellation due to non-use or to overcome the burden of proving genuine use in case of encountering this defense. Such applications are known as repeat filings.
It has long been a matter of debate whether filing a repeat trademark without the intention of using it, in order to artificially extend the five-year grace period stipulated in the IPL, would be considered bad faith. The recent TPTO Decision mentioned in this bulletin sheds light on these discussions.
The Case Subject to the TPTO Decision
In the case subject to the TPTO Decision, the applicant (“Applicant“) opposed the trademark application filed on September 13, 2019 (“Third Party Trademark Application“) by the third party (“Third Party“), based on its prior trademark (“Prior Trademark“) and the similarity between the trademarks. The Prior Trademark was registered on May 18, 2010, for almost all of the goods and services listed in the Nice classification list.
The Third Party requested proof of use from the Applicant in the opposition as per Article 19/2 of the IPL, since the Prior Trademark was not in the grace period of five years. The Applicant failed to submit evidence of use of the Prior Trademark in the classes that the Third Party Trademark is filed in.
In the meantime, on November 21, 2019, the Applicant filed the exact same trademark application (“Repeat Filing“) bearing the Prior Trademark for the same goods and services list.
The Third Party filed an opposition against the Repeat Filing and claimed that:
- There is no legal interest in the Repeat Filing application, which is exactly the same as the Prior Trademark;
- The latter application is a bad faith repeat filing made to avoid the genuine use defense and requirement obligations of the Prior Trademark, and which aims to artificially extend the grace period recognized in the IPL;
- The Repeat Filing is the same as the Prior Trademark owned by the Applicant and registered for almost all of the classes of goods and services, on May 18, 2010;
- As of May 18, 2015, the Prior Trademark has been vulnerable for proof of use requests, and when the proof of use was requested from the Prior Trademark, the Applicant could not establish genuine use;
- It is against the ordinary course of events to assume that the Applicant uses or will use its trademark in all of these goods and services; and
- The Third Party requested the cancellation of the Prior Trademark due to non-use, although the non-use cancellation action was filed after the application date of the Repeat Filing.
Following the TPTO Local Authority’s rejection of the opposition, the Third Party appealed the decision and the TPTO Re-Examination and Evaluation Board heard the issue.
Evaluation of the TPTO Re-Examination and Evaluation Board
The TPTO Re-Examination and Evaluation Board decided that:
- As of the application date of the Repeat Filing, the Prior Trademark has been vulnerable for proof of use requests.
- The Prior Trademark would not constitute an acquired right on behalf of the Applicant due to the non-use cancellation action filed against the Prior Trademark, although the non-use cancellation action against the Prior Mark was filed after the application date of the Repeat Filing.
- Considering the ongoing dispute between the parties, the Applicant opposed the Third Party’s trademark application filed based on its Prior Trademark. The Applicant failed to submit evidence of use in the relevant class upon the Third Party’s proof of use defense.
- In this context, the Applicant could not establish genuine use of the Prior Trademark and is in a position to know that they may face a non-use attack for the unused goods and services.
- The Applicant has no interest in filing an application that is the same as the Prior Trademark for the exact same classes.
- For these reasons, and considering there is a court decision that constitutes a precedent to the dispute at hand (Ankara 1st IP Courts, 2015/47 E., 2016/320 K., dated December 12, 2016), the Repeat Filing being filed for the same goods and services is ostensibly an indicator of bad faith, which is filed in order to overcome genuine use requirements.
Consequently, the TPTO decided that the Repeat Filing would constitute a bad faith trademark application in accordance with Article 6/9 of the IPL and the Repeat Filing was rejected in all classes it was applied for.
The TPTO Decision asserted that repeat filings which aim to avoid the defense and requirement of genuine use and that attempt to artificially extend the five-year grace period granted by the IPL regarding the use of the trademark may be rejected due to bad faith. Whether repeat filings are considered bad faith applications must be evaluated according to the specifics of each case. However, in cases where it is clearly established that an applicant has no interest in making a repeat filing, as in this TPTO Decision, the TPTO has demonstrated that it will use discretion in terms of deciding that a filing was done in bad faith when the opposing party establishes the evidence and facts that the opposed party does not have any interest in filing a repeat application, instead of leaving it to the courts.