As per the IP Code, trademark protection provided by this law is obtained through registration. However, although registration is necessary to protect the rights of trademark owners and to claim their rights against third parties, this may be insufficient.
Indeed, a trademark must be genuinely used in Turkey with respect to goods and services for which it is registered. However, if the trademark is not genuinely used within five years from registration, or if its use is interrupted for five consecutive years, it may face the risk of cancellation.
Depending on this condition of use, it is also established under Article 19/2 of the IP Code that proof of use of the trademark may be requested; i.e. a non-use defence may be asserted in oppositions that are based on the likelihood of confusion claims, if the trademark that is grounds for opposition, is registered in Turkey, for at least five years at the time of application or priority date of opposed trademark. Articles 25/7 and 29/2 regulate that if these conditions are met, a non-use defence may be asserted in invalidation and infringement actions, as well.
The significance of these provisions is that a non-use defence may only be put forward in opposition proceedings, and also in invalidation and infringement actions, if the conditions are fulfilled. However, it is necessary to address a non-use defence by making a dual distinction for civil and criminal cases based on trademark infringement.
Article 29/2 of the IP Code reads, “The provision of Article 19/2 can be put forward as a plea in infringement actions. In that case, the date of the action shall be taken as the basis for determination of the five-year period regarding the use,” where it is clearly accepted that in civil cases based on trademark infringements, a non-use defence may be asserted as a plea by the defendant. On the other hand, there is no such provision in Article 30 regulating criminal provisions.
For this reason, in practice, the question of “whether non-use of a trademark is one of the reasons for impunity, and whether it can be assessed by criminal courts, ex officio,” is an issue that has come to the forefront, and different opinions have been put forward. According to one opinion, if there is a pending cancellation action filed against a violated trademark on the grounds that conditions of cancellation have been met, then the outcome of this action should be awaited by the criminal court. According to another opinion, if a trademark has not been used on the goods or services for five years, and if the offender makes such a defence and proves non-use of the trademark during prosecution or criminal proceedings, the offender’s actions will be recognized as lawful. There is no need to give time to file a cancellation action and to await the outcome of the action.
In a recent case, it was established by the criminal court that since the trademark had been registered for more than five years, and there was no consecutive use of the trademark in Turkey for the last five years for the disputed products, it should be taken into consideration by the criminal court, ex officio, and conditions of the trademark infringement crime have not been met, but unfair competition provisions should be applied, as the seized products were counterfeit.
At this point, it should be underlined that the non-use defence is clearly regulated as a “plea.” However, in this case, the fact that the criminal court evaluated the use of trademark as if it were a civil court, considered the non-use defence to be an objection, instead of a plea, and concluded that conditions of the trademark infringement crime had not been met on the grounds that conditions of the cancellation of the trademark had been fulfilled, this is grounds for impunity without the need for a cancellation action, and is not in line with the law, in our opinion.
In respect of procedural law, a plea may only be asserted by the right holder, cannot be assessed by the judge ex officio, does not end a right, and only prevents its execution. While a non-use defence may be asserted in civil cases based on infringement of a trademark right under certain circumstances, as a result of the clear regulation of the IP Code, in terms of criminal cases, it cannot be asserted during prosecution or criminal proceedings, and it should not also be taken into account by the prosecution office or the criminal court, ex officio.
Counter-comments exceed the will of the legislator because a non-use defence may also be asserted in invalidation and infringement (civil) cases if conditions are met. As there is no reference made to criminal cases, a non-use defence cannot be taken into consideration in criminal cases.
However, if there is a pending cancellation action that may affect the criminal case, as the offender’s acts may be excluded from a trademark infringement due to a cancellation verdict with retrospective effect, it would be the correct decision for the criminal court to await the outcome of the cancellation action.