Our May 2019 article in LL&P focused on the non-use defence in opposition proceedings. This time we will be concentrating on the non-use defence in court proceedings. Article 25/7 of the Industrial Property Code (IPC) regulates invalidation actions and Article 29/2 regulates infringement actions regarding trade marks. Both articles refer in their last paragraphs to Article 19 foreseeing the procedures for the non-use defence. Article 19 of the IPC governs the non-use defence in opposition proceedings. Accordingly, the mechanism of a non-use defence can 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 trade mark 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 trade mark 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 trade mark is registered.

If the trade mark that a court action relied upon has been registered more than five years before the contested trade mark's filing or priority date, the plaintiff must also prove the use of its trade mark within the previous five years. If the plaintiff fails to prove that the trade mark was effectively used in Turkey or if the justified reason for not using the trade mark 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 trade mark 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 trade mark(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 trade mark 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 trade mark is not used and therefore dismisses the request for invalidation or infringement actions, this would not automatically cause the revocation of the plaintiff's trade mark. However, the defendant is entitled to file within two weeks a counter-action requesting the revocation of the plaintiff's trade mark.

Due to the technicality of the pharmaceutical sector, usually the courts 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 trade mark 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.

While assessing genuine use the court shall take different factors into consideration. For example, time, place, nature, extent of use and use for the goods/services for which the trade mark is registered should be examined. All evidence submitted to the file should be explicitly linked to the trade mark, dated and should demonstrate genuine trade mark use in Turkey.

Under 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. Such marketing authorizations can be applied for only by entities or real persons residing in Turkey. Advertising of pharmaceuticals to the general public is prohibited. Therefore pharma companies can only promote their products to healthcare professionals which can present difficulties when proving use. Brochures, presentations, documentation regarding scientific meetings held in relation to their products and any other kind of documentation is important in this connection.

Another hurdle is the fact that often the entity owning the marketing authorization in Turkey and the trade mark owner are not the same. In such cases, the trade mark owner should explain the connection with the local entity and submit extensive documents showing that the local entity is using the trade mark in Turkey.

It is particularly important to submit invoices issued by the local entity. Experts appointed by the court often seek to find the link between the two entities; invoices and commercial books of the local entity showing that the product bearing the trade mark has been sold in Turkey are relevant. If invoices and other documents proving the use of the trade mark are issued by another entity, even if this entity is affiliated to the trade mark owner, the courts may not directly accept such evidence. Therefore it is important to submit license or sublicense agreements or franchises and/or merchandising agreements in order to prove the relation of the companies and the use of the trade mark.

In a recent case, experts examining the invoices of the local entity stated that they could not determine whether the amounts shown in the invoices submitted to the case file were recorded to the commercial books of the local entity as well. Hence evidence showing the sale of the product by the local entity might not suffice to convince the court that the trade mark has been genuinely used by the trade mark holder or by an authorized representative.

Other documentation can also support that the trade mark has been used. For example, the maximum sale prices of pharmaceuticals are set by the Ministry of Health and are published in the Ministry's official website as well as the number and date of the marketing authorization of the product. This information is available to the public 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 experts appointed by the court 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 assessing this defence, the courts take into consideration such elements as the lack of advertising material or the possible justified reason for a pending marketing authorization from the Ministry of Health.

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

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.