The first instance Civil Court for Intellectual and Industrial Rights (“IP court”) in its decision rendered in October, 2020, pointed out that the use of the subject mark solely as a domain name is not deemed sufficient to prove the use of the mark as a trademark.
The decision concerns a revocation action for non-use filed against a trademark that has been registered for more than five years, but which has not been used properly and effectively with respect to the relevant services within the scope of its registration in Turkey by the trademark owner.
In revocation actions based on non-use, the defendant carries the burden of proof, and the IP courts generally obtain expert reports from court-appointed experts for examination of the evidence and commercial books of the defendants.
In the relevant case file, the defendant party submitted evidence regarding the records of the domain name, including the subject trademark and the content of the website operated under this domain name, in which the subject trademark has not been used as it is registered, but was used in a very different form from its registration.
The file was examined by the court-appointed experts, and they concluded that there is no evidence proving the use of the trademark as it is registered for the relevant services in the commercial records of the defendant and, as well, on their website. However, in view of the existence of the domain name consisting of the subject trademark that has been in use for five years, it is sufficient to prove the use of the trademark. However, the IP court, disregarding the determinations in the expert report, highlighted the importance of the requirement of the use of the trademark on the goods and services within the scope of its registration for commercial purposes, found the existence of the domain name alone to be insufficient, and decided to revoke the subject trademark due to non-use.
As emphasized in the “Proof of Use Guidelines ”of the Turkish Patent and Trademark Office published in 2017, in order to evaluate “genuine use,” the use of a trademark should be separately evaluated in terms of criteria, such as the type of goods or services the trademark is registered for, the amount of sales, whether the trademark is used in accordance with its basic function, whether a market share has been created in terms of the relevant goods or services, the customer environment it addresses, and the size of the business; and it should be examined whether there is genuine use in light of all these criteria.
In the recent decisions of the Court of Cassation, it is also clear that use of a trademark solely as a domain name is not accepted as sufficient to prove the genuine and serious use of a trademark, if there is no other commercial use of the trademark on the goods and services within the scope of its registration under this domain name. As a matter of fact, in its decision dated 28.03.2014 under Merit No. 2013/16785 and Decision No. 2014/6143, the Court of Cassation did not accept the use of the subject trademark only with the domain name and trade name as trademark use, and stated that the sign should be used in a way to show the connection with the relevant goods or services and in accordance with the function in order to qualify as trademark use. In the relevant decision, it was emphasized that a trademark should be placed on the product, its packaging, or used during the provision of the service to which a service mark is related. It was also stated in the decision that the use of a trademark alone in the business documents or catalogs cannot be accepted as trademark use.
In another invalidation action filed on the basis of priority right ownership and bad faith, the plaintiff’s use of the trademark subject to the case as a domain name over a long period time was not accepted as trademark use, and the claim was dismissed on the grounds that the plaintiff could not prove its priority use on the subject trademark. This decision was upheld by the decision of the 11th Chamber of the Court of Cassation, dated 01.11.2017 under Merit No. 2016/3969 and Decision No. 2017/5976.
In this respect, this decision along with the recent decisions of the Court of Cassation sets a precedent for future disputes and concludes that use of trademark as a domain name, by itself, is insufficient to prove genuine use.