ICE trade mark dispute: a chilling reminder to monitor trade mark registers and act against problem trade mark applications!
We take a look at the background and the judgment in the recent ICE trade mark dispute.
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On 10 January 2017, Turkey published changes to their trade mark laws. These reforms have been welcomed for improving and simplifying legislation and are considered to strengthen the protection of rights holders in this territory.
Some of the key trade mark reforms include:
Previously, trade marks would be refused by the Turkish Patent and Trademark Institution (TPTI) if they were deemed to be confusingly similar to an earlier trade mark. Even if the prior registration holder consented to the later trade mark, the refusal would not be overturned. The law now allows notarised consent letters from the earlier trade mark holder to overcome a provisional refusal.
From the time an earlier rights holder knows (or is deemed to be informed) about the use of an infringing trade mark, they have a five year period to challenge its use. After the five year period ends, a cancellation action cannot be filed unless the ensuing trademark was filed in bad faith.
Before the latest reforms, the period of acquiescence was assessed on a case-by-case basis.
In opposition proceedings based on similarity, where the opponent’s trade mark has been registered for five or more years, opponents may be asked to demonstrate proof of the use of the mark. If this cannot be proven, the opposition will be rejected.
Similarly, during cancellation proceedings based on similarity, defendants can also request proof of use.
Prior to these reforms, it was common practice for would-be infringers to register their offending marks in order to avoid liability. This used to be a legitimate tactic as use was not considered an infringement if it was based on a registration. The new law now addresses this problem by explicitly stating that industrial rights are no longer permitted as a defence during infringement proceedings.
These laws will be applied to all applications filed after 10 January 2017. Registration proceedings will be carried out according to the prior law for applications filed before that date.
For further information on these reforms or intellectual property protection in Turkey, please get in touch with your usual Wilson Gunn contact or give us a call on 08444 77 00 22.