- Bensu Özdemir
LOSS OF RIGHTS DUE TO REMAINING SILENT
The protection period of the registered trademark is ten years from the application date, as regulated in the Industrial Property Law numbered 6769 (“SMK”), and as long as the trademark is registered, it can benefit from the protection provisions stipulated in the SMK. In this context, trademark owner can demand invalidity of a trademark for subsequent trademark registration applications by showing its own trademark registration as a reason. SMK stipulated some conditions for the continuation of this protection and regulated some situations where registered trademark owner’s right is not protected. Loss of rights due to remaining silent is one of these situations.
Loss of right due to remaining silent is the trademark owner’s loss of the right to sue for invalidation against the person who subsequently registered the trademark in good faith, as a result of remaining silent. In order for this loss of right to occur, some conditions have been regulated under the SMK.
One of the conditions for loss of right due to remaining silent is the existence of the right to sue. Within this scope, primarily, previous right owner must have an interest to file an invalidation lawsuit. The invalidity of the trademark is regulated in detail in Art.5 and Art.6 under the SMK. If the trademark was still registered despite the existence of the conditions listed in these articles, the trademark can be invalidated with an invalidation lawsuit. In case of invalidation, it may be mentioned that the person who has the previous right and interest has the right of action against the later trademark registered in the trademark registry.
The other condition of loss of right due to remaining silent is the use of the subsequently registered trademark. If the subsequent trademark owner does not use the trademark, it cannot be claimed that the previous trademark owner lost the right due to remaining silent. To be able to claim loss of right, the subsequent trademark owner must have serious use of the relevant trademark. The meaning of the serious use of the trademark is that the trademark should be used in accordance with its function and for the goods or services it was registered under. Also, the previous trademark owner must have not objected and must remain silent. The 5-year period for remaining silent starts when the previous trademark owner become aware of this use. When considering the phrase “becoming aware”, the "obligation to act as a prudent businessperson" should be taken into account.
The last condition for the loss of right due to remaining silent is that the subsequent trademark owner’s registration must not made in bad faith. The concept of bad faith in the SMK refers to the abuse of the right. If the application owner was in bad faith at the registration time, they will not be able to claim loss of right due to remaining silent. Furthermore, if the existence of bad faith can be proven, the 5-year silence of the previous trademark owner will not have a legal consequence.
In addition to that, Supreme Court accepts that loss of right due to remaining silent is an objection. As so, it should be evaluated ex officio by the judge, even if it is not claimed. Right to sue for the invalidation lawsuit is lost only against the person who allege it. As long as the conditions do not occur for third parties, they cannot benefit from that loss of right due to remaining silent.