With its decision dated 31.01.2019, General Assembly of Civil Chambers of the Court of Cassation concluded that having business activity in the same sector of both the plaintiff and the defendant is sufficient to accept presence of legal interest in actions with a revocation request of a trademark based on non – use.
In the lawsuit filed before Istanbul (Closed) 4th Intellectual and Industrial Rights Civil Court in 2012, the defendant’s trademark was requested to be revoked partially for the goods that are not subject to use.
The defendant could not prove its serious use over the trademark however defended itself by noting that the trademark was “well-known” and includes the defendant’s trade name and therefore it would not be possible for the plaintiff to register this trademark even if it would provide its revocation. Moreover, there is not even a trademark application filed by the plaintiff and rejected based on the defendant’s trademark and in the light of these information the defendant is lack of legal interest.
The first instance court, after listening to parties’ allegations and defenses, decided on the refusal of the action by noting that the plaintiff could not prove the harm it has faced caused by the registration of the trademark, it is not possible for the plaintiff to register the trademark as it contains the defendant’s trade name and therefore there is no legal interest in filing the action.
Upon annulment of this decision upon appeal examination, the first instance has reviewed the file and decided to resist on its prior decision. This decision has been appealed by the plaintiff and examined by the General Assembly of Civil Chambers of the Court of Cassation (“Assembly”).
The Assembly has evaluated the “legal interest” and “aggrieved party” terms in details and noted that the “aggrieved party” is not required to have a trademark registration and everyone whom enjoys the protection arising from the Decree Law numbered 556 (prior to the implementation of the IP code numbered 6769) can file a Court action provided that its interest is harmed. ın this regard, the Assembly concluded that the plaintiff that is in the same business sector with the defendant can request revocation of the defendant’s trademark based on non-use. However the Assembly upheld the decision of the first instance due to procedural economy arising from the cancellation of Article 14 of the Decree Law numbered 556 by the Constitutional Court with its decision dated 14.12.2016.
As a result, even though the Assembly has upheld the decision of the first instance due to procedural economy arising from the cancellation of the ground Article, it has in fact declared its opinion on the legal interest explicitly. In the light of this decision, having business activity in the same sector of the parties are considered solely sufficient to prove presence of “legal interest” and “aggrieved party”.
The IP Code numbered 6769 which entered into force as of January 10, 2017, regulates that the “relevant persons” may file a revocation request which extends the scope of the “aggrieved party” term regulated in the Decree Law numbered 556. Thus, the evaluations of the Assembly as to the presence of “legal interest” and its decision thereto is considered to be applicable for disputes during the enforcement of the IP Code as well.