One of the most widely used and critical trademark protection strategies is cancellation cases due to non-use of a trademark. As accepted in many systems, trademarks primarily serve commercial activities and, therefore, it is expected that the trademarks will be actively used. Indeed, trademark stocking, which is to keep a trademark actively even though it is not used by the trademark owner, where the trademark owner also prevents third parties to file a trademark application is basically undesirable. The increase in trademark stocking over the years and the fact that the trademark registrations were used only one day and cannot be actively used for various reasons, have prompted the legislator in many systems, and the concept of tolerance has occurred. Accordingly, in many systems, a tolerance period, generally, of 3 or 5 years from the date of trademark registration is granted to trademark owners, and it is expected that the trademark will be used seriously during this period. In terms of trademarks that are not used at the end of this period, third parties are granted the right to claim non-use defense or to demand the cancellation of the trademark due to non-use. Again, in many systems, the obligation to prove the use of the trademark is imposed on the trademark owner and, at this point, symbolic uses and uses not supported by objective documents of appropriate nature, not intended to create market share, meaning that are not serious, are not considered sufficient in terms of accepting the fulfillment of the obligation to use the trademark.
Today, cancellation actions due to non-use have turned into a strategic item that is also used as a rightly tool to influence the parties. Because the applicants who want to register their trademark but cannot pass the ex officio examination, either first discuss with the previous dated trademark owner, or assert -directly- the defense of non-use, or - according to the nature of the dispute between the parties- file a cancellation action against the previous trademark -due to non-use- as a much stronger action. This method saves more time and expenditure compared to an appeal process with a high chance of losing the appeal or a classic cancellation action, and relatively increases the likelihood of success. As a matter of fact, the main point of the legal review is use of the trademark, and it is much easier procedure for the claimant to carry out considering that the case / counteraction is likely to be accepted if the trademark is not used, as well as the fact that that the burden of proof is on the defendant - contrary to the general order.
In this respect, a very recent decision rendered by the
To further evaluate the decision given by the
- The responsibility of proving that the trademark has been seriously used within a 5-year period rests with the trademark owner. The court ruled that
Apple failed to comply with this obligation. -
The responsibility of proving that the high level of attention of the consumers will lead to the conclusion that consumers will examine the product packaging in full detail and identify all the details on the packaging is also on the trademark owner. The court held that
Apple failed to comply with this obligation. -
It is important to prove the use of the trademark in the region where it is registered. The reports on product sales contain information about the worldwide net sales of the computers involved, but do not provide any details regarding the sales figures in the
European Union . Therefore, the documents in question have not been evaluated as sufficient in terms of the use of the trademark in theEuropean Union . - The use of the trademark must be proven with objective and up-to-date documents. Although numerous elements have been presented in relation to the launch of the "THINK DIFFERENT" brand in 1997 and the success of the respective advertising campaign, they have been found to date back more than 10 years.
-
The documents and justifications for the serious use of the trademark submitted by
Apple have been evaluated according to the relevant legal standard. -
Although it has been claimed by
Apple that an assessment has been made that the relevant trademark lacks distinctive character and that this assessment was not appropriate, it was stated that this approach byApple was originally caused by a misreading of the EUIPO decision. As a matter of fact, it has been concluded that the EUIPO's assessment that this trademark is weak does not contradict the body of evidence for the serious use of these trademarks. -
It was decided that
Apple 's right to be heard was not infringed in this case.
As can be seen, the General Court made a multifaceted evaluation for "THINK DIFFERENT" trademark, from its distinctiveness to its serious use, and found it appropriate to cancel the trademark on the grounds that it was not used appropriately.
If the decision is finalized, since "THINK DIFFERENT" trademark will not be under the protection of community trademark, the use of this trademark and similar ones by third parties in the relevant region will become relatively risk-free. As a matter of fact, with this decision, it can be evaluated that one of the possible obstacles of Swatch's trademark application has been removed.
One of the thought-provoking strategic points in this file is that
All of this, once again, reveals the importance of trademark strategy. Because the slogan trademark is used as an element on the packaging of many products around the world -without making any regional distinctions - and even though the trademark was used intensely and strongly in the past, similar with the current case, according to the General Court, it is not sufficient to prevent the cancellation of that trademark. Therefore, while implementing each trademark strategy, evaluating the current situation separately and making a long-term situation analysis will remain as a valuable strategic element for trademark owners.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Ms Işık Özdoğan, LL.M.
Moroglu Arseven
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Nişantaşı 34367
Tel: 212377 47 00
Fax: 212377 47 99
E-mail: dayyildiz@morogluarseven.com
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