Law No. 6769 on Industrial Property (“Law”) regulates that a trademark shall be revoked if a trademark (i) has not been genuinely used within five years of its registration or (ii) is not used uninterruptedly for five years. For this provision to apply, the use of trademark must be in relation to the goods or services for which it is registered and the trademark owner should not have a valid reason for not using the trademark.
After the mentioned five-year period, the trademark owner may be required to demonstrate use of the trademark for the relevant goods and services, by providing solid and objective evidence of effective and sufficient use on the market concerned.
Principally, the proofs of use must demonstrate the use of a trademark exactly as registered. However, the Article 9(2) of the Law deems using the trademark with different elements, without changing its distinctive character, also as “use”.
By allowing the use of the trademark with different elements, the legislator has ensured that trademarks can adapt to changes. This adaptability underlines the importance of trademark law in protecting brand integrity while facilitating growth in a dynamic business environment. On the other hand, using different element with the trademark must be within the scope of the common commercial practice.
It is also important to point out the criteria of using the trademark by preserving its distinctive character. Preserving the essential and distinctive element of a trademark ensures the consumers to easily understand the trademark and the company or person it is associated with. Here, the importance of the assessment of distinctiveness for each trademark prevails, as different trademarks appeal to different groups of consumers.
The following examples are used to illustrate the “use of a trademark” with different elements, within the limits described in the Law:
- For word marks:
- Adding/subtracting punctuation marks
- Alçıpan → Alçıpan!
- Changing the font
- Ip-tech → Ip-tech
- Using only the main element of the trademark that is registered with two words
- Super NaNa → NaNa
- Separating the elements that is registered as a combination of two words
- BabyCool → Baby Cool
- Adding/removing conjunctions or prefixes
- Viventy by Bernd Berger → Viventy Bernd Berger
- Viventy by Bernd Berger → Vıventy Bernd Berger
- Adding a generic name to identify a good or a service
- Four Seasons → Four Seasons Hotel
- Using more than one trademark of the trademark owner simultaneously (umbrella trademark and sub-brand joint use of a trademark)
- Galaxy E7 → Samsung Galaxy E7
- Using a registered trademark with additions that create the impression of a series
- AINHOA → AINHOA SPA WORLD[1]
- Adding non-dominant auxiliary word elements to the trademark
- COLORIS → COLORIS Global Coloring Concept[2]
- Adding/subtracting punctuation marks
- For sign marks:
- Using the trademark with a different shade of color
- Adding a word element to a sign mark
- Using the trademark with a different shade of color
However, using the name constituting the sign of a trademark cannot be considered to fall within the scope of the Article 9(2) of the Law, since it alters the distinctive character of the trademark.
In this context, although it is essential to use a trademark as registered; using such trademark with minor changes to the word or figurative elements will not necessarily imply that the trademark is not being used. The important factor to consider with these minor changes is to preserve the overall impression of the trademark on consumers. Changes which affect this impression and which cannot be easily associated by the consumer with the trademark will not be accepted as use of the trademark and will not be subject to proof of use where there is a risk of the trademark.
[1] Judgment T-426/13 of the General Court of the Court of Justice of the European Union
[2] Judgment T-353/07 of the General Court of the Court of Justice of the European Union
Authors: Hatice Ekici Tağa, Sümeyye Uçar, Ebru Gümüş Karasu, Göksu Tuğrul