A trade mark, which is among the rights capable of registration, covers any sign that distinguishes the goods and services of one undertaking from those of another. Entry in the register confers on the proprietor a range of powers and protective remedies. Conversely, where one of the absolute or relative grounds for refusal listed in the statute exists, the sign cannot lawfully be registered as a trade mark.
In practice these grounds are not always caught at the application stage. A trade mark that has been entered in the register despite the existence of a ground for refusal is removed from the legal order by way of an action for invalidity. Standing to bring the action is granted to those having an interest in the trade mark being declared invalid, to public prosecutors and to the relevant public institutions and organisations. The dispute is heard before the Civil Court for Intellectual and Industrial Property Rights at the respondent’s place of residence.
The starting point of an action for invalidity is the removal of a registration effected contrary to law. Given that character, no statute of limitations or preclusive period is prescribed for the action. The judgment of invalidity handed down at the end of the proceedings is a constitutive judgment of an extinguishing character.
The Concept of a Trade Mark
The definition of a trade mark is set out in Art. 4 of the Industrial Property Act No. 6769 (SMK). Under that provision, a trade mark is any sign used in order to distinguish the products and services of one undertaking from the products and services of another. For the sake of clarity, this relatively technical statutory wording may be reduced to any sign possessing distinctive character.
The statutory definition is not confined to “goods”; provided that the required conditions are met, “services” also fall within its scope. In other words, the concept of a trade mark — commonly perceived in practice as a simple sign placed on a product — extends to providers of services, which are also referred to as service marks. Our detailed examination of the concept of a trade mark, which has a significant field of application in industrial property law, and of the registration procedure may be found in our article entitled Choosing and Registering a Trade Mark.
Grounds for Invalidity of a Trade Mark
The absolute and relative grounds for refusal that bar registration are governed by Articles 5 and 6 of the Industrial Property Act No. 6769. Of these, the absolute grounds for refusal appear in Article 5 and, because they concern public policy, are taken into account of its own motion by the Turkish Patent and Trademark Office (TPMK).
Where, for instance, the sign for which registration is sought lacks distinctive character or incorporates religious values or symbols, that sign cannot be entered in the register as a trade mark.
The relative grounds for refusal, in turn, are laid down in Article 6 of the Act. What distinguishes them from the absolute grounds is that the TPMK does not consider them of its own motion; the obstacles in question must be raised by the right holder or the interested parties who consider that their trade mark right will be impaired. If, for example, the sign forming the subject of the application is identical or similar to an earlier trade mark, the proprietor of the registered mark may oppose that application. Where the opposition is upheld before the Office, registration does not take place.
Although the absolute and relative grounds for refusal prevent a sign from entering the register as a trade mark, they are as a rule raised and assessed at the application stage. If registration has nonetheless been completed, what exists is in substance a trade mark right that has arisen contrary to law. In such a case the grounds for refusal may be raised — this time as grounds for invalidity — and the registration may be set aside.
Our detailed assessment of the scope of the absolute and relative grounds for refusal that bar registration appears in our study entitled Which Words or Signs Cannot Be Registered as a Trade Mark.
The Action for Invalidity of a Trade Mark
Where one of the grounds for refusal exists, the sign for which registration is sought should as a rule not be entered in the register. In practice, however, one encounters cases in which signs whose registration is contrary to law have been recorded as trade marks.
In that event, the interested parties may bring an action for invalidity relying on the absolute or relative grounds for refusal and thereby have the improperly registered trade mark declared invalid. Once invalidity is ordered, the trade mark right acquired through registration ceases to exist.
Who May Bring an Action for Invalidity?
Standing to bring the action is granted to three groups: persons having an interest in the trade mark being declared invalid, public prosecutors, and the relevant public institutions and organisations may apply to the court seeking invalidity.
Court with Subject-Matter and Territorial Jurisdiction
In civil actions that may be brought under the Industrial Property Act No. 6769, subject-matter jurisdiction lies with the Civil Courts for Intellectual and Industrial Property Rights. Since the action for invalidity is among the civil actions falling within that Act, the court with subject-matter jurisdiction is that same specialised court. Where no such court has been established in the judicial district concerned, the action is heard by the Civil Court of First Instance sitting as a Civil Court for Intellectual and Industrial Property Rights.
As regards territorial jurisdiction, the criterion is the place of residence of the respondent against whom invalidity is sought.
Statute of Limitations in Invalidity Actions
The Industrial Property Act No. 6769 lays down no statute of limitations or preclusive period for the action for invalidity. The reason is that the subject of the action is, in essence, the removal of a registration effected contrary to law. Accordingly, for as long as the registration subsists, recourse may be had to the courts for the invalidity of the unlawful entry.
Effects of a Judgment of Invalidity
If it is established in the course of the proceedings that the ground of invalidity relied upon has materialised, the action is upheld and the trade mark forming the subject of the dispute is declared invalid.
The judgment given is a constitutive judgment of an extinguishing character; as a rule it produces its effects for the future.
That said, and although the point is contested in the legal literature, a judgment of invalidity concerning a trade mark registered notwithstanding the absolute grounds for refusal in Art. 5 of the SMK may also produce retroactive effect. That article contains provisions which the Office must take into account of its own motion at the application stage and which show that the trade mark should never have been registered at all. By giving the judgment retroactive effect, a transaction that should never have come into being in the legal order is removed from the outset.
On the other hand, as noted at the beginning of this note, a registered trade mark confers various rights and powers on its proprietor. The powers conferred on the proprietor of a trade mark that has not been declared invalid continue to subsist. For that reason, conduct such as using the trade mark, or a sign so similar to it as to be indistinguishable, without the right holder’s consent, or offering for sale products bearing a counterfeit mark, constitutes infringement of the trade mark right.
Our detailed explanations of the definition of infringement and of the legal remedies available to a proprietor whose right has been violated are to be found in our article entitled Infringement of Trade Mark Rights.
Independent Legal Assessment
In trade mark disputes, the action for invalidity most often arises by way of defence. The most effective counter-move available to a party faced with an allegation of infringement is to contend that the registration of the mark relied upon was defective from the outset. For that reason, framing the plea of invalidity concurrently with the infringement action and in the form of a counterclaim can prove decisive in practice.
Success in the action depends on selecting the correct ground for refusal and on proving that ground by reference to the circumstances existing at the date of registration. Developments arising subsequently are the subject not of invalidity but of revocation; confusing the two routes may lead to the claim being dismissed. The points that come to the fore in an invalidity file are the following:
- Determining, by reference to the dates of the facts relied upon, whether the claim is one of invalidity or of revocation
- Assessing the absolute and relative grounds for refusal separately and selecting the strongest basis
- Establishing earlier entitlement by means of registration, use and promotional documents
- Anticipating from the outset, according to the ground relied upon, whether the judgment will take effect retroactively or for the future
- Planning the invalidity claim together with infringement and damages actions
- Correctly identifying the court with territorial jurisdiction on the basis of the respondent’s place of residence
Independent Legal advises at every stage of industrial property disputes, including the bringing of trade mark invalidity actions and the conduct of the defence against them.