Loss of Right Due to Acquiescence in Infringement


The loss of right due to the acquiescence principle had not been regulated in Turkish Law prior to the implementation of the IP Code. However, the Court of Appeals has started to apply this principle based on the circumstances of each case within the scope of the good faith principle and prohibition on abuse of rights, which is regulated under Article 2 of the Turkish Civil Code (“TCC”), and these have become established case-law precedents.

In the decisions of the Court of Appeals, the loss of right due to acquiescence has been determined upon evaluation of the following criteria within the scope of the good faith principle and prohibition on abuse of rights, such as the attitude and reaction of the prior right holder after becoming aware of the infringement, the intensity of the investments by the infringing party on the trademark, the weight of the promotional activities for having introduced the trademark in the relevant sectors, and the possibility for the prior right owner having been made aware of the infringement. The Court of Appeals is of the opinion that it is not possible to set a definite limitation period for acknowledging loss of right due to acquiescence.

After the implementation of the IP Code, loss of right due to acquiescence has become an explicit rule for trademark invalidation actions. Article 25/6 of the IP Code regulates that where the trademark owner has known, or should have known, of the use of a subsequently dated infringing trademark, but did not take action against such use for more than 5 uninterrupted years, the trademark owner will not be able to claim invalidation of the subsequently infringing trademark on the grounds of its prior trademark registration, unless the subsequent trademark had been registered in bad faith.

Although the IP Code only rules on the principle of loss of right due to acquiescence for trademark invalidation actions, it is commonly accepted in doctrine that implementation of loss of right due to the acquiescence principle should continue to be implemented for trademark infringement cases, as established under the previous law. Some argument exists concerning the doctrine that there is no definite period of time in which to admit loss of right due to acquiescence in trademark infringement cases, and the period of limitation may be more or less than five years, depending on the circumstances of the case. On the other hand, there are other arguments that the period of limitation should not be less than five years, and the duration should be determined depending on the circumstances of each case.

It has become increasingly important how the loss of right due to acquiescence will be interpreted in trademark infringement cases by the Court of Appeals, after entry into force of the IP Code and the above-mentioned developments. However, it is not yet known as to how the implementation by the Court of Appeals will shape the practice, since the recent decisions are related to the lawsuits that have been filed prior to the implementation of the new IP Code, and whether abolished Decree Law No. 556 pertaining to Protection of Trademarks is applicable.

Considering the legal interest to be protected by loss of right due to the acquiescence principle, we believe that the previous practice by the Court of Appeals should continue, and the limitation period for loss of right due to acquiescence for trademark infringement cases should be determined depending on the circumstances of each case in light of the good faith principle. We further believe that the minimum five-year period required for invalidation cases should not be sought in infringement actions, and the duration may be more or less than five years depending on the specifics of each given case. Therefore, we urge trademark owners not to remain silent, to bring timely actions against alleged infringers and, in particular, in cases where they know about the infringement and their acquiescence may easily be proven.

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