Registered Use Defense in Infringement Actions

As per the settled Court of Appeals (“the CoA”) precedents established during the Trademark Decree-Law era – which ended upon enactment of the new Intellectual Property Code No. 6769 (“IP Code”) on January 10, 2017, it was accepted that use, which was based on a registered trademark, cannot create infringement, regardless of whether this use creates confusion and infringement with a senior trademark registration.

As a result of these precedents, use based on a registered trademark right provided its owner with absolute protection; in other words, immunity and, accordingly, no preliminary injunctions were available against the use of registered rights, and infringement claims were rejected. The owners of the senior registrations whose rights were infringed had to have the other parties’ registrations cancelled or invalidated, first, and then an infringement claim could be filed against the use. Even in such case, the losses that occurred during the term that the mark was registered were off-limits and could not have been recompensed.

This “right” based on a registered trademark was seriously criticized, as it provoked the abuse of the registration system through bad-faith filings. Even though use clearly creates infringement, if it could somehow obtain a registration, it was “legally” protected.

With the enactment of the IP Code, “The use of a registered trademark does not constitute infringement” principle, which resulted from CoA precedents, has lost its validity. Article 155 of the IP Code rules 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,” and sets forth clearly that a registered trademark would not serve its owner as a valid defense in an infringement action filed by a senior right holder.

This regulation introduced by the IP Code was generally welcomed by the practitioners. In the early months, the first instance courts, even the specialized courts, abstained from the implementation of this new rule – yet in its decision dated March 14, 2018, the 16th Civil Chamber of the Istanbul District Court of Appeals, implemented the new ruling of the IP Code to a pending conflict, and granted preliminary injunction in favor of the claimant, simply confirming that the use of a registered trademark can be prevented. We have experienced that the first instance courts have followed this ruling more commonly since then and, especially, the implementation of the rule seems to not be an issue for the civil IP courts.

In short, with this regulation set forth by Article 155 of the IP Code, it is no longer possible to make use of a registered right as a defense in legal proceedings against senior marks, and its use can be prevented.

On the other hand, this new rule indeed means that the “absolute protection” that we believe was granted through trademark registration is no longer available. That is to say, even if a trademark is granted with registration – without any issues during the opposition term – and in good faith, the owner of a senior mark may claim that the use of this registered trademark creates infringement against theirs, and request a preliminary injunction and/or an infringement ruling against the use, without claiming cancellation or invalidation of the registered trademark.

Accordingly, while Article 155 of the IP Code introduced a valid solution to the infringing registrations, especially those made in bad-faith, it also invalidated the well-grounded sense of security that the registered trademark entitles its owner to that absolute protection and the use of a registered trademark are rightful. It is now much more important than before that one acts with due diligence while choosing a trademark, making use of registration searches that would reveal earlier similar marks, and request a legal evaluation before applying for registration and initiating use.

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