The Higher Council of the Turkish Patent Institute has determined in a very recent decision dated 22 August 2016 (decision no: 2016-M-8281) that re-filing of a trademark subject to a cancellation action cannot be deemed as good faith, moreover the prior registration shall not constitute acquired right to the new filing.
The facts of the case on which the Higher Council has ruled out are as follows in chronological orders;
- The Company A is the owner of the registered trademark No. 2003/XXXX in classes 06/19/20
- The Company B files a trademark application for the same trademark in class 20 with the application number No. 2010/XXXX which is rejected due to the registered trademark No. 2003/XXXX
- In 2011 a court action instituted by the Company B for the cancellation of the Company A’s registered trademark No. 2003/XXXX on the basis of the non-use is pending before the Supreme Court
- After the court action, the Company A has re-filed a new application for identical denomination for the same classes. The said application has been recorded before the Institute with the number 2011/XXXX
- The Company B has filed an opposition against the re-filed application No. 2011/XXXX of the Company A claiming the following:
- The application has been re-filed by the Company A in order to overcome any possible negative outcome of the pending court action instituted against its prior registered trademark. Thus, the application has been filed in bad faith,
- Company B has a prior use on the trademark in the class 20 before 2010.
The application No. 2011/XXXX of the Company A has been definitively rejected by the Higher Council on the basis of the following facts:
- it is determined that the prior registered trademark No. 2003/XXXX has become a subject of a dispute between the parties before the court and is under threat of cancellation, therefore the prior registered trademark no. 2003/XXXX shall not constitute an acquired right on the denomination subject to the opposition, i.e. the trademark No. 2011/XXXX,
- the allowance of the opposed application No. 2011/XXXX to mature into registration would neutralize any legal outcome to arise (in the event that the registered trademark 2003/XXXX is cancelled by the court) in the favor of the opponent (i.e. Company B) and therefore, it is considered that the application 2011/XXXX cannot be deemed to be filed in good faith.
The T.P.I.’s decision is an important and expected development in aim to thwart the accumulation of non-use trademark on the Register.
It is yet to be determined that whether the mere re-filing of trademark application in the absence of any ongoing dispute can be considered as a bad faith application.