Non-Use Defence in Litigation Proceedings before Turkish Courts: Special Emphasis on Pharmaceutical Trademarks!

Both the Industrial Property Code No. 6769 (“the IPC”) and the Regulation on the Implementation of the IPC (“the Regulation”) were published and entered into force in 2017, uniting all IP rights in one Code which were priorly regulated by different decree-laws.

Article 25/7 of the IPC regulates invalidation actions and Article 29/2 regulates infringement actions regarding trademarks. Both articles refer in their last paragraphs to Article 19 foreseeing the procedures for the non-use defence. The non-use defence mechanism may therefore be applicable for invalidation and infringement actions.

In invalidation actions based on confusing similarity, the non-use defence may be claimed by the defendant similar to proceedings before the Turkish Patent and Trademark Office (the Office). The plaintiff must prove use of the trademark that the court action relied upon within the previous five years, starting from the filing date of the court action. This mechanism has also been incorporated into court actions. The main reason behind this is to avoid earlier trademark owners abstaining from filing oppositions where this defence is implemented and therefore bypassing such a defence mechanism by only filing court actions once the younger trademark is registered. If the trademark that a court action relied upon has been registered more than five years before the contested trademark's filing or priority date, the plaintiff must also prove the use of its trademark within the previous five years.

If the plaintiff fails to prove that the trademark was effectively used in Turkey or if the justified reason for not using the trademark is not proven, the request for invalidation will be partially or entirely dismissed. In infringement actions, if the defendant requests proof of use, in accordance with Article 29/2 the plaintiff must prove the use of its trademark within the previous five years from the filing date of the court action.

The non-use defence, both in invalidation and infringement actions can be asserted according to general procedure rules determined in the Turkish Procedure Law numbered 6100. As per the Turkish Procedure Law, upon filing the invalidation or infringement action the plaint petition and its exhibits are notified to the defendant. Once the plaint petition is notified, the defendant must submit a response petition within two weeks. In that response petition the defendant must allege the non-use defence so that the court then orders the plaintiff to submit evidence supporting the use of the trademark(s) relied upon. But the IPC provides a period of one month for submitting proof of use evidence, so these two provisions are contradictory.

Since the non-use mechanism is regulated as a defence, the courts do not have the authority to ex-officio request proof of use from the plaintiff. A decision regarding trademark use shall be made at preliminary examination stage before hearing the case on the merits if the defendant asserted the non-use defence. In practice, we see that most judges do not render such decisions regarding non-use defence at the preliminary examination phase. The courts refer to experts for evaluation of trademark use. The court may choose to appoint one expert or an expert panel and based upon their evaluation, the judge then renders a decision on the merits.

It should be noted that in case the defendant applies for such a defence mechanism, and if the court concludes that the trademark is not used and therefore dismisses the request for invalidation or infringement actions, this would not automatically cause the revocation of the plaintiff’s trademark. However, the defendant is entitled to file within two weeks a counter-action requesting the revocation of the plaintiff’s trademark.

Because of the pharmaceutical industry’s technicality, the courts usually select and appoint an expert panel consisting of three experts. The experts are required by the court to provide opinion merely on the technical points within their specialist area and not on the merits of the case. Consequently, based on parties’ submissions, evidence and the expert review of the file, the court delivers its judgment at the last hearing and within a couple of months the reasoned decision is drafted.

As to proving trademark use, invoices, price lists, catalogues, product codes, products, packaging, signboard visuals, advertisements, promotions and their invoices, marketing surveys, opinion researches, information about the commercial activity and any additional documents or statements regarding Turkey can be submitted to the courts.

In assessing genuine use, different factors must be taken into account by the court. Time, location, nature, extent of use and use for the goods/services for which the trademark is registered should be examined. All evidence submitted to the file should be explicitly linked to the trademark, dated and should show genuine trademark use in Turkey. According to Turkish regulations, pharmaceutical products should obtain a marketing authorization from the Turkish Ministry of Health to be sold only in pharmacies and marketed to healthcare professionals. Only companies or real persons residing in Turkey may apply for such marketing authorizations. The regulations prohibited the advertising of pharmaceuticals to the general public. Therefore pharmaceutical companies can only promote their products to healthcare professionals which can present difficulties when proving use. In this context, brochures, presentations, documentation regarding scientific meetings held in connection to their products and any other kind of documentation are relevant.

Another challenge, is that the company that owns the marketing authorization in Turkey and the trademark owner are often not the same. The trademark owner is expected to show documentation proving the connection with the local entity holding the marketing authorization and submit extensive documents showing that the local entity is using the trademark in Turkey.

The submission of invoices issued by the local entity is particularly important. Court-appointed experts also seek to connection between the two entities; local entity’s invoices and commercial records showing that the drug bearing the trademark has been sold in Turkey are relevant. If invoices and other documents proving the use of the trademark are provided by another entity, even if this entity is affiliated to the trademark owner, the courts may not consider such proof. Therefore it is important to submit licensing or sub-licensing agreements or franchises and/or merchandising agreements in order to prove the companies’ relationship and the use of the trademark.

In a recent case, experts reviewing the local entity’s invoices determined that they were unable to ascertain whether the sums shown in the invoices submitted to the case file were also recorded to the local entity’s commercial records. Therefore, evidence showing the local entity’s sale of the drug may not be sufficient to convince the court that the trademark was genuinely used by its owner or by an authorized representative.

Certain documents may also justify the use of the trademark. For example, the Ministry of Health sets the maximum selling prices of pharmaceuticals and published them in their official website as well as the number and date of the marketing authorization of the product. This information is publically available and may be used as evidence supporting the retrospective use claim.

Although non–use defence is a new concept in invalidation and infringement actions, IP courts and court-appointed experts are experienced in what documents should be submitted since revocation actions based on non-use were regulated before the IPC in Decree No. 556. Therefore, while evaluating this defence, the courts take into account factors such as the lack of advertising material or the likely legitimate justification for the Ministry of Health’s pending marketing authorization.

First published by PTMG - Law Lore & Practice Dec 2019, in 11.12.2019

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