B. PLAIN PACKAGING CONSIDERATIONS UNDER TURKISH TRADEMARK
4. Non-Use of Trademarks Due to Plain Packaging Measures
179
180 a. Concept of Proper Reasons That Justify Non-Use
It is stated in Art. 9(1) that trademarks shall not be revoked if there are “proper reasons” for non-use. Similarly, according to Art. 19(2) and Art. 25(7), it is provided that the owner of the earlier trademark must either use the trademark or has had proper reasons for non-use. Accordingly, a trademark owner can justify non-use and avoid the related legal consequences by submitting proper reasons. However, what is meant by such reasons was not defined in the mentioned provision487. The preamble of the LIP defines
“proper reasons” to the extent that they are “legal or actual obstacles that render the use of trademark impossible”. It is also stipulated that such obstacles shall not arise from wrongful acts of the trademark owner. Whilst laying out these conditions, the explanations in the preamble do not clearly define or determine the extent of “proper reasons” concept either.
The EU legislation that form the basis of the LIP does not contain further explanations with regards to proper reasons either. The Paris Convention provides that the trademark owner may prevent cancellation due to non-use as long as he can “justify his inaction488”. Nonetheless, there are no further explanations concerning justifiability.
On the other hand, Art. 19(1) of the TRIPS Agreement entitled “Requirement of Use”
487 The wording of the provisions of the LIP actually involves the phrase “haklı nedenler” which can be literally translated as “justifiable reasons” or “legitimate reasons”. However, probably because the mentioned clause had been originated from the EU Legislation, the phrase was translated into the English version of the law as “proper reasons”.
488 Art. 5/C (1) of the Paris Convention reads as follows: “If, in any country, use of the registered mark is compulsory, the registration may be cancelled only after a reasonable period, and then only if the person concerned does not justify his inaction.”
181 provides that:
“If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use.”
As it is seen, TRIPS requires “valid reasons” that can prevent revocation for non-use to arise out of the will of the owner of trademark. It also provides non-exhaustive list of valid reasons that are “import restrictions on or other government requirements for goods or services protected by the trademark”489.
It is commonly acknowledged in the literature that assessment of proper reasons should be made subjectively on each dispute depending the related facts490. Legal or actual obstacles that render the use of trademark impossible constitute proper reasons as long as they arise out of the will of the trademark owner491. In this respect, the most common reasons that justify non-use are force majeure events that restrict the production activities such as natural disaster, war or economic crisis. Furthermore, in connection
489 Voon and Mitchell highlighted the use of “such as” in Art. 19(1) when arguing that it provides a non-exhaustive list. See Voon/Mitchell, Implications of WTO Law, p. 117.
490 Çoşğun G.: Sınai Mülkiyet Kanunu Kapsamında Markanın Kullanılması, Ankara 2018, p. 59; Oğuz, p.
26; Karaca, p. 69; Özarmağan, p. 50.
491 Bozgeyik H.: Tescilli Markanın Kullanılması ve Kullanmamaya Bağlı Sonuçlar, Prof. Dr. Fırat Öztan’a Armağan, C. I, Ankara, 2010, pp. 471-473; Karaca, p. 71; Kaya A.: Marka Hukuku, İstanbul 2006, p. 202;
182 with the exemplary reasons provided under Art. 19 of the TRIPS Agreement, bureaucratic obstacles such as embargo or customs requirements as well as import restrictions can justify non-use492. All in all, the most important criteria are that each specific reason must be liberated from the trademark owner’s intention and must have a direct relationship with non-use of the trademark493. In fact, in one of its decisions, CJEU ruled that the use requirement must be read as “meaning that obstacles have a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute 'proper reasons for non-use' of the mark494”.
In its precedence of limited number with regards to non-use of trademarks, it can be seen that the Turkish Court of Appeals (CoA) has generally considered the concept of
“proper reasons” to apply in limited circumstances in which the owners have no opportunity left to utilize their trademarks in any way495. The CoA has considered, for example, that financial difficulties, even in the existence of bankruptcy or concordat of the trademark owner or seizure of trademark owners’ assets did not constitute proper reasons496. Similarly, justification arguments based on fire outbreak in the company
492 Yasaman/Yüksel, p. 649; Dirikkan, p. 259; Arkan, p. 148.
493 Özarmağan, s. 47; Çolak, p. 973.
494 CJEU, Armin Häupl v Lidl Stiftung & Co. KG, C-246/05 Judgement of 14 June, available at:
<http://curia.europa.eu/juris/showPdf.jsf;jsessionid=2C4CD01416C0B3AAF330D8ABD509ADBF?text=
&docid=60995&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=4447593>. (last accessed: 30.12.2019)
495 For a study on CoA case law regarding proper reasons for non-use, see generally Gürkaynak/Uluay.
496 CoA, 11th Civil Chamber, Decision No. E. 2001/844, K. 2001/3429, 9 January 2001; Decision No. E.
2007/10093, K. 2008/13302, 24 November 2008. For the decisions, see Çolak, pp. 974-975.
183 factory or pending administrative procedures for manufacturing license were ruled out by the court497. The court considered that the obstacles to use trademark must be impossible to be foreseen or overcome by the trademark owner.
b. Whether Plain Packaging Measures Constitute Proper Reasons
The case law on the proper reasons generally relate to circumstances which are applicable to the manufacturing or sales of the product in question. On the other hand, plain packaging creates obstacles that impact use of trademarks. In the meantime, there are no actual obstacles on manufacturing or trading of tobacco products. Considering this unique nature of plain packaging, it is hard to think of any other regulatory measure that resembles to it in terms of restricting trademark use. However, there is one reported decision of the CoA in a similar context which has not been made publicly available yet.
Reportedly, the case was based on an infringement claim, where the defendant made a counter-claim of non-use. The earlier trademark has not been used in Turkey since it was registered in 2001 in class 33. Owner of the earlier trademark contended that there had been proper reasons for non-use due to regulatory prohibitions on the exportation and sales of the specific product (cocktail beverage containing distilled alcohol) that the trademark has been registered for in Turkey. The first instance court ruled that such regulatory restrictions constituted proper reasons indeed. The decision was reportedly upheld by the CoA as well in December 2018498. This unpublished case could indicate
497 CoA, 11th Civil Chamber, Decision No. E. 2009/5669, K. 2010/12171, 29 November 2010; Also see Kaya B., p. 68.
498 For the article that reports the related decision, see: Köse M.Y.: Proper Reasons for Non-use in Turkey,