The Monthly Newsletter

December 2020 | Vol. 8

The Brand Becoming A Generic Trademark And The Courts Assessment Criteria

In cases where one of the cancellation situations in the Article 26 of the Turkish Industrial Property Code is existent, the authority to claim the cancellation of the trademark is the Turkish Patent and Trademark Institution, TürkPatent (“Institution”). According to the provision of Article 192 of the IP Code, Article 26 will enter into force 7 years after the date of publication of the IP Code. In the Temporary Article 4 of the IP Code, it regulates the use of the annulment power by the courts and it states that the cancellation authority will be exercised by the courts in the procedures and principles specified in the article until the provision of the 26th Article becomes effective. In this 7-year period, requests for cancellation will be made to the courts instead of the Institution. The competent authority to submit the request for the cancellation of the trademark is the court until 10.01.2024, and after this date, TürkPatent.

The court responsible for hearing annulment cases filed under the IP Code is the Civil Court of Intellectual and Industrial Rights (Specialized Court). In places where the Specialized Court has not been established, the court that is responsible for hearing the cases and affairs within the jurisdiction of the Specialized Court is the Civil Court of First Instance. The courts authorized to hear the lawsuits regarding the trademark cancellation requests to be evaluated and resolved by the courts until 10.01.2024 are the domicile court of the owner of the trademark whose annulment is requested. In the absence of the defendant trademark owner’s place of residence in Turkey, the competent court to hear this case is the court of defendant trademark’s registered deputy’s business location.

In accordance with Article 45 of the EU Trademark Directive (“Directive”) numbered 2015/2436, within the scope of the "annulment and invalidation procedure", an obligation has been adopted for the operation of administrative annulment and invalidation mechanisms within the registration offices. The aforementioned obligation includes the obligation to use the administrative revocation authority by the registration office in terms of cancellation conditions regulated in Article 26 of the IP Code, which is the equivalent of the Directive in our country. The administrative cancellation authority will start to operate in our country after 10.01.2024, corresponding to the deadline of 14.01.2023 regarding the obligation imposed by the Directive.

Who Can Request the Cancellation of the Trademark?

It is stated in IP Code Article 26/2 that "related persons" are the ones that can request the cancellation of the trademark. Since there is no determination and sampling as to the phrase of “related persons”, it can be mentioned that people who have a legal interest in the cancellation of the trademark may request cancellation. Any natural or legal person whose ability to use the trademark subject to cancellation is restricted or is in danger of being restricted may request cancellation. Institutions and organizations that want to balance the competition in the market due to brands that have become a generic name for the goods or services within their scope, institutions and organizations that try to prevent consumers from falling into error due to generic names (such as consumer rights associations) are also among the people who can request the cancellation of the brand. In the same direction, even consumers may be among the people who can request the cancellation of the brand. In the same direction, even the consumers may be among the people who can request the cancellation of the brand.

Since the "annulment request", which will be considered as a lawsuit in the courts during the seven-year postponement period, until the administrative annulment authority is transferred to TürkPatent, will be put forward by the persons mentioned above and these persons will be referred to as "plaintiffs" during the transition period when the cancellation authority is in the courts. With the transfer of the authority to TürkPatent, they will be referred to as "requesting for cancellation".

When Can The Cancellation Request Be Made?

Setting the regulations regarding the cancellation cases, there is no restriction in the 26th Article of the IP Code, that the cancellation request can be claimed within a certain period of time. In general, it will be very appropriate in terms of the cancellation procedure that the cancellation request can be claimed within the period of the protection of the brand.

What is the Effect of the Trademark’s Cancellation?

The decision regarding the cancellation of the trademark is effective from the date the cancellation request is submitted (IP Code Art. 27/2). The date in question relates to the period after the case was filed while the power is being exercised by the courts. The cancellation will be effective starting from the date the request was submitted to TürkPatent.

What Are The Conditions For The Trademark to be Cancelled?

According to the IP Code Article 26/1-b; if the trademark becomes a common name for the goods or services for which it is registered as a result of the actions of the trademark owner or the trademark owner not taking the necessary precautions, the trademark gets canceled.

For a brand to become a common name, the public must perceive that brand name as the name of a product or service. If a good and service has begun to be expressed with that brand name, the name has now become generic.

A brand becoming widespread is not enough for a brand to be canccelled. The becoming widespread must occur because the brand owner does not own the brand.

The Industrial Property Law clarified the "behaviors" of the trademark owner, which were not clearly defined in the Statutory Decree No. 556, by stating that these behaviors could be both active behaviors in the form of acts and passive behaviors in the form of not taking the necessary measures.

Brand is a sign that distinguishes the goods or services that a business produces or trades from other goods or services. The main function of the brand is to distinguish goods or services from similar products. Some brands that have a monopoly position in terms of the goods or services they use and dominate the market may become generic due to the decrease in their distinctiveness over time. In general, it is observed that the brands that create a new product, the first brands to enter the market and the brands that are widely consumed in daily life have become common names.

Brands that are the first to enter the market and are widely consumed in daily life can become the name of the product and when the product or service of this brand, which has a monopoly position, is desired to be purchased, the product or service can be purchased directly by saying the brand name instead of saying the name of the product. The brand is beginning to be identified with the product. As in the case of “Gilette” and “Selpak”.

A registered trademark may lose its distinctiveness over time and it can be used as the generic name of a product rather than a brand. This, in turn, loses the distinctive and referencing functions of the brand and can turn into a generic name for the same type of goods or services offered by different businesses. For the cancellation to be applied due to becoming a common name, the trademark must become a common name in the market in terms of the registered goods or services and it must be caused by the behavior or inactivity of the trademark owner.

As it is clearly stated in the decision of Istanbul 4th Civil Court of Intellectual Property Law No. 14.02.2013 T., 2011/280 E., 2013/10 K., Although it is accepted that “CIP” and “JIP” phrases have become a common name, since the phrases are different from the registered trademark “JEEP” and the buyers in the relevant sector still consider the “JEEP trademark” as a trademark, the invalidity case was rejected.

The plaintiff's attorney stated that the trademark value could not be protected after the registration of the JEEP trademark registered in the name of the defendant in 1986, that the defendant did not make the necessary investments in this regard, therefore, he could not prevent it from becoming a common name as a generic name, by taking preventive measures, the trademark lost its trademark feature and became a generic name, In Turkish, this brand is now described as a motor vehicle that can be used on all kinds of land, it is defined as such in the Dictionary of the Turkish Language Association, the JEEP phrase is included as a vehicle type even in the vehicle licenses of the Police Department, and the defendant remains silent in such situations. He claimed that the conditions of invalidity were met and demanded and sued that the trademarks numbered 90467 and 206817 registered on behalf of the defendant be invalid.

The court, on the other hand, has stated that it is not enough for the trademark to become a common name for the goods or services for which it was registered, it should also be as a result of the behavior of the trademark owner, it is not conclusive that this was a result of the defendant's attitude and behavior and also the statement in the lawsuit petition and according to the statements and requests during the trial, it was decided to dismiss the lawsuit, which could not be proved in terms of both brands, on the grounds that the claim of the claimant to become a common name only includes motor vehicles and land vehicles and that the claim to become a common name other than this commodity could not be proven.

The trademark owner should use the rights granted by law to protect the trademark and take the necessary measures when becomes aware of the violation. As a result of passive behavior in the form of silence, the brand owner can lead to the cancellation of the brand. Denying the use of the brand as a generic name in works such as dictionaries and encyclopedias and not opposing the use of the brand as a generic name by competitors in the relevant market can be mentioned as examples of passive behavior.

The brand owner must correct the misconception that creates the impression of a common name in the society with advertising campaigns, announcements and explanations, declaring that the brand is registered and not a generic name and defend the brand.

In the annulment case, the trademark owners are obliged to prove that the plaintiff's claims are unfounded, that the trademark has not become a common name or has taken the necessary measures to prevent it from becoming a common name, and that they benefit from the protection mechanisms provided by the Industrial Property Law. The annulment action filed due to the trademark becoming a common name can be proven by all kinds of evidence in accordance with the law.

The brand owner can show the consumer surveys showing that the brand has not become a common name, the warnings sent to the people who use the brand generically, showing that the brand has taken the necessary measures to prevent the brand from becoming a common name and informative documents such as brochures and magazines prepared to create brand awareness as an evidence in order to defend the annulment case.

When examining the annulment cases by the court, first of all, if the issues such as how the trademark is perceived in the relevant sector, to what extent the trademark is used as a common name, even if the trademark is being used as a generic name, whether the relevant consumer group still sees the phrase as a trademark, are detected, the trademark is cancelled. The trademark owner should take some actions to avoid cancellation. Preventing the violations against the trademark can prevent the cancellation of the trademark due to being generic.

İpek ATLI