Avoiding Genericide of a Trademark

Article 42/1(d) of the former Decree Law set forth that an invalidation action could be filed against a trademark if it becomes a common name of the goods or services it was registered for as a result of the trademark proprietor’s behaviours.

The same rule was preserved in the IP Code  under Article 26/1(b) as grounds for revocation, instead of invalidation, and with different wording. As per Article 26/1(b), the Office may revoke the trademark upon request, if the trademark becomes a common name for the goods or services for which it is registered, as a consequence of the failure of the trademark proprietor to perform its acts, or to take due precautions. The authority of the Office for revocation shall be used by the Courts until 10.01.2024 per Article 192 of the IP Code.

The IPC clarified the “behaviours” of the proprietor in such a way so as to include both the activity and inactivity of the proprietor, for which there is no clear wording in Decree Law No. 556.

In an invalidation action filed when the Decree Law was in force, the scope of the behaviours of the applicant was interpreted by the Court of Appeal (“CoA”) in its decision of October 15, 2014 (E. 2014/5775, K. 2014/15593).  

In its decision, the CoA, firstly, confirmed the general principle that even if a trademark becomes generic, the genericness of the trademark should be the result of activity or inactivity of the owner in order for the trademark to be invalidated due to its generic traits, and returned the file to the first instance Court for retrial.

The IP Court conducted a detailed re-examination by evaluating and discussing all evidence submitted by the owner of the trademark and by obtaining expert reports. In consequence thereof, the IP Court decided that the trademark was generic; however, the owner had taken the necessary measures to prevent its trademark from being invalidated for becoming generic.

The CoA’s decision reinforces the principle that invalidation of a trademark due to its genericness should be possible only if the genericide of the trademark have resulted from the trademark owner’s acts or failing to act. To determine this, the CoA sets forth that the Courts should firstly ensure that the evidence and information brought by both parties, and experts’ reports obtained, are sufficient to make a determination, and should then profoundly evaluate and discuss the information, evidence and findings within the experts’ reports.

The decision shows that a trademark owner should be very careful against the uses of its trademark as a name, should act against such uses when informed, and should keep the records of the actions that it takes to avoid revocation of its trademark due to becoming generic by a Court.

These decisions provide guidance for interpretation of Article 26/1(b) of the IP Code since this Article is very similar to the previous rule.

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