Introduction
In an era where change is constant, the Turkish Intellectual Property Law syncs with the dynamic nature of the legal developments in 2023. As Moroğlu Arseven, we evaluated the past year by bringing together 12 articles regarding these current developments. We will continue to share the most recent developments with you in 2024.
I. Cancellation of Trademark due to Non-Use. How will Practice of the Turkish Patent and Trademark Office Look Like?
In 2023, the most buzzworthy topic in the IP community in Türkiye was undoubtedly the transfer of the authority to cancel trademarks due to nonuse from courts to the Turkish Patent and Trademark Office ("TPTO "). This amendment took effect on January 10, 2024. The fact that no guidance has been published and no explanation has been made on this issue has brought about sectoral discussions and preliminary comments. Question marks have increased, but the answers are not clear yet.
Pursuant to Article 26 of the Industrial Property Law ("IPL"), it is possible to cancel a trademark due to nonuse if the trademark has not been seriously used without a justifiable reason within five years from the date of registration, or if such use has been discontinued for five years without interruption. Before the IPL came into force in January 2017, the request for the cancellation of a trademark due to nonuse could only be made by filing a lawsuit before the competent court. The IPL, however, originally granted the power to cancel a trademark due to nonuse to the TPTO upon the request of those with a legal interest, but envisaged a transition period, too. The transition period granted by the IPL expired on January 10, 2024, and as of this date, trademark cancellation claims for nonuse are to be heard before the TPTO.
The novelty of this practice in Türkiye will certainly lead to some issues especially since no regulation or guideline/information letter has been published by the TPTO yet. Some of the vital issues that this amendment could bring about are as follow:
a) The fact that trademark cancellation claims for nonuse were examined by the courts made them a part of the judicial system. However, now that the relevant request can be evaluated by the TPTO, it turns into an administrative process. This creates fundamental differences in terms of the procedure to be followed and the assessment of the merits. Three differences are pointed out here:
- In nonuse cancellation cases before the court, the determination of the use of the trademark was made by experts appointed by the court. The file was evaluated by multiple experts, both in terms of trademark law and the sector to which the trademark at issue was related. This examination could even take place more than once if the parties objected or if the court deemed it necessary. In the post-amendment period, however, it has not yet been clarified which unit will carry out the examination and what procedure will be followed in cases before the TPTO.
- Some of the most crucial documents to demonstrate proof of use of a trademark are invoices, product labels, dated catalogs and trade books. The caveat, however, was that these documents could contain trade secrets, which the trademark holders certainly strive to protect even while submitting them to the court. Now that the amendment has taken effect, it remains to be seen how the process will be handled before the TPTO and what measures will be taken to ensure the confidentiality of the documents. It is also unclear how documents whose evaluation requires additional competence will be examined. This is because the examination of commercial books and assessing whether the relevant records constitute evidence require special legal knowledge. However, this could lead to ambiguity when the case at issue requires knowledge other than IP, thus posing the question of how the TPTO will address such matters.
- While it is possible to appeal a court decision at a higher court (Regional Court of Appeal / Court of Cassation), a practice already in place during the IPL period, it is not clear whether it will be possible to lodge an appeal at the Board of Appeals when the review period of the TPTO begins. Obviously, while it is possible to apply to the Board of Appeals even in trademark opposition files, it is expected that there will be a right to apply to the Board of Appeals in the examination that will lead to the loss of rights in this way. In the absence of this, it may be possible to file a lawsuit before the Ankara Intellectual and Industrial Rights Law Court to request the annulment of the decision.
b) On the other hand, nonuse cases are subject to a written procedure in accordance with the Code of Civil Procedure ("CCP"). The parties are required to file two petitions: a statement of claim, a response, a counter-response, and a rejoinder. While it is obvious that the TPTO, as an administrative authority, will not be obliged to follow a procedure subject to the CCP, it is expected to adopt a similar examination procedure for ease of implementation.
c) In the cases before the court, if the defendant – the trademark owner – was not at their specified address, they could be notified in other ways in accordance with the Notification Law. Considering that the trademarks for which cancellation is requested must have been registered for at least 5 years, the address of the trademark owner registered in the TPTO might not be an up to date one. In this case, it has not been clarified whether the same practice will be applied by the TPTO.
d) It is obvious that the judicial system in Türkiye is overburdened. Therefore, transferring the duty and authority to examine files such as trademark cancellations to the TPTO could alleviate the burden on courts. On the other hand, nobody can deny that the workload of the TPTO is high, too. Although the TPTO itself admits that there are opposition files that are concluded quite quickly, there are other opposition cases that might take between 1-10 months. Considering that the examination of a matter that will terminate the trademark right should be carried out meticulously, it remains to be seen how long these processes will last.
e) Another positive outcome will be the fact that, compared to the litigation processes, the modified system will incur lower costs for legal beneficiaries.
This amendment is a significant reform in the Turkish industrial property law. Since no preliminary guidelines have been published yet, and there will not be any precedent in this regard even after its publication, it is not possible to predict how the implementation will take place. The first days of 2024 will be closely monitored by the IP community, and it will take some time for the system to settle.
II. Within the Scope of Combating Greenwashing, Guideline on Misleading Environmental Claims in Advertisement has been Published
Tackling the adverse effects of the climate crisis has become a top priority for both governments and companies. The public's awareness about environmental matters, especially sustainability, has increased greatly and companies attempt to reflect the importance of this issue through their environmentally friendly products and services. Recently, there have been increasing numbers of a malpractice called "greenwashing," a deceitful marketing strategy employed by companies to falsely claim their products or services contribute greatly to the protection of the environment to attract more customers.
Monitoring this trend closely, the Board of Advertisement issued a Guideline on Advertisements Containing Environmental Declarations ("Guideline") at the end of 2022 to tackle such misleading claims. It provides guidance to all persons, institutions, and organizations about compliance of their environmental statements and visuals in their commercial advertisements and practices.
The Guideline specifies an environmental claim as a statement or visual in a commercial advertisement or practice which indicates that a good or service provides environmental benefits or does not have a negative impact on the environment during its composition, production, supply to the market, use or disposal processes. The Guideline holds advertisers, advertising agencies and broadcasting organizations individually responsible for environmental claims.
The principles in the Guide are similar to those in its counterpart in the European Union. Three months after the Guideline was published in Türkiye, the European Commission published the Proposal for a Directive of the European Parliament and of the Council on Substantiation and Communication of Explicit Environmental Claims (Green Claims Directive). The Proposal states that consumers are willing to contribute to a greener and more circular economy, but such active and effective participation is hindered by lack of trust in the credibility of environmental claims and an increase in misleading advertisement practices regarding the sustainability of products. The Proposal sets forth regulations on two main topics: preventing greenwashing based on ambiguous or inadequately substantiated claims and ensuring the use of reliable and transparent environmental labels.
In 2023, the Board of Advertisement in Türkiye had greenwashing on its radar and in several decisions addressed cases containing environmental claims.
The following are decisions the Board issued after the adoption of the Guideline:
- At a meeting dated 14.02.2023 and numbered 330, the Board examined the information and documents in the file 2022/6001 regarding an advertisement titled "Flat Packaging: An environmentally friendly idea." The Board held that flat packaging of the products resulted in the use of fewer vehicles for the shipping of the products, subsequently reducing fuel usage and carbon emission, and concluded that the advertisement was not contrary to the Law and the Regulation.
- At another Board meeting dated 10.01.2023 and numbered 329, in the file 2022/4415, the Board accepted the objection against its initial decision upon assessing the information, documents and test results submitted as proof of the following claims: "Biodegradable Ingredients", "It is made of 25% recycled plastic. (...) We aim to prevent the production of 70 tons of pure plastic on average with our bottles made of 25% recycled plastic.", "100% recyclable packaging". The objection, however, was rejected in terms of the comparative environmental claim "More Sensitive to Nature". In its first decision, the Board had contended that the statements in the promotions were "environmental claims." However, the Board pointed out that it was not clear whether the products were compared with the advertiser's previous products under the same brand or with the competitors' products. The Board added that the presented evidence should provide in a comparative manner the overall environmental impact of the detergents throughout the whole or a part of their life cycle. In the decision subject to the opposition, the Board ruled that the advertisements were also in violation of Articles 7, 9 and 17 of the Regulation.
The year 2023 saw policymakers in Türkiye and other parts of the world taking first steps towards regulating against greenwashing. Regulators are expected to define greenwashing more clearly and impose heavier repercussions on corporations for their exaggerated and misleading green claims to ensure that consumers will receive enhanced and accurate information about products and services.
III. A Review of the Novelty of Designs in Cancellation Actions Regarding TPTO's Decisions
In 2023, the Court of Cassation General Assembly of Civil Chambers ("the General Assembly") rendered two decisions regarding novelty examination in designs. In both decisions, the General Assembly considered that the novelty assessment should be made ex officio without being limited to the information and documents in the file, even in the actions filed against the decisions of the Turkish Patent and Trademark Office ("TPTO"). In 2013, the General Assembly had held that the novelty assessment in design should be limited to the information and documents in the file, since the cancellation actions filed against the TPTO's decisions consisted of an administrative review. The fact that the General Assembly has changed its view after 10 years is of great importance.
Legal Process
In the case regarding the decision of the General Assembly numbered 2021/943 E. and 2023/288 K. and dated 29.03.2023, the plaintiff's design application was opposed by a previous design owner for lacking novelty and distinctiveness. The "TPTO" accepted the opposition. The plaintiff requested the annulment of the TPTO's decision. Following an expert examination, it was determined that the design application could be considered new and distinctive within the scope of the information and documents available in the opposition file. However, in the research conducted by the expert regarding absolute novelty, it was argued that the application had previously been presented to the public and was therefore devoid of novelty.
The Ankara 1st Civil Court of Intellectual and Industrial Property Rights ruled that since the subject matter of the lawsuit was the annulment of the decision of the TPTO, the examination was limited to the review of propriety and a decision should be made by examining the evidence submitted during the opposition phase. Accordingly, the lawsuit was accepted on the grounds that ex officio evidence search could not be made except for the evidence submitted regarding the absolute novelty criterion.
The TPTO appealed the decision. During appeal, the 11th Civil Chamber of the Court of Cassation argued that the Decree Law No. 554 ("Decree Law"), which has since 2017 been replaced with the Industrial Property Law No. 6769 ("IPL"), accepted the condition of absolute novelty, and in that context, an ex officio examination had to be made without being limited to the evidence in the file. The appeals court, therefore, ruled that the decision of the first instance court had to be reversed. Upon the first instance court's resistance, the case was examined by the General Assembly.
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