Bakırköy 1st Civil IP Court, in an invalidation action against a registered trademark where trademark infringement and unfair competition is also claimed due to use of the challenged registered trademark, decided to accept the case and ordered for invalidation of the challenged trademark registration as per senior trademark rights of the plaintiff, also decided for determination and revocation of the trademark infringement and unfair competition caused due to use of the challenged trademark registration.
The decision was issued by Bakırköy 1st Civil IP Court in October 2021. The decision confirms that the use of even registered trademark may constitute trademark infringement and unfair competition against the earlier trademark rights.
Within the scope of the same lawsuit; upon the plaintiff’s appeal filed against the dismissal of the preliminary injunction (“PI”) request by Bakırköy 1st Civil IP Court, the 16th Civil Chamber of the Istanbul Regional Court of Appeals in its decision dated March 2018 had clearly confirmed implementation of Article 155 of the Industrial Property Law no. 6769 (“IP Code”) ruling that “a trademark, patent or industrial design holder cannot rely on its registered right as a defense in an infringement action filed by a priority right holder.”, had held that the challenged trademark registration should not create immunity to its owner against infringement and PI claims and had granted the PI in favor of the plaintiff, simply confirming that the use of a registered trademark can be prevented.
Pursuant to the decision dated October 2021 of Bakırköy 1st Civil IP Court and the decision dated March 2018 of the 16th Civil Chamber of the Istanbul Regional Court of Appeals, implementation of Article 155 of the IP Code was confirmed and it was affirmed that having a valid trademark registration will no longer create immunity against trademark infringement and unfair competition claims for its holder, who will no longer be able to set it forth as a defense against infringement claims, the use of a registered trademark in such infringing situation can even be prevented through preliminary injunction order.
Before the enactment of the IP Code in 2017, having a registered IP right – even a pending trademark application – would mean immunity against infringement claims. The Court of Appeals precedents had set forth that the use of a registered right would not create infringement, would constitute a legitimate defense against infringement claims unless and until the registered right was duly invalidated. Although being seriously criticized, this was the settled precedent and caused serious delays in prevention of infringements, as the preliminary injunction claims and infringement cases had to be delayed until the actual invalidation of the registered trademark from the registry. Infringers abused this precedent by obtaining registrations in bad-faith and using those as leverage against the senior right holders who will not be able to prevent the use - or obtain a compensation for the term the trademark was registered, even though it was eventually invalidated. Upon enactment of the IP Code, Article 155 clearly stipulated that having a valid registration will no longer create immunity for its holder, who will no longer be able to set it forth as a defense against infringement claims, hence the criticized settled precedent which set forth that the use of a registered right would not create infringement has been revoked.
The above referenced decisions given by the Local Court and the Regional Court of Appeals within the same lawsuit are important in terms of guiding implementation of Article 155 of the IP Law. It is seen that the implementation of the aforementioned provision has become uniform. These decisions reaffirm that the registrations can no longer be used as leverage against brand owners.