III.F.1. Loss of Trademark Rights due to Non-Use
OMV Refining & Marketing GmbH instituted an action for the partial cancellation of Turkish Trademark VIVA! on grounds of non-use in accordance with Articles 14 and 42/1-c of Decree Law No. 556.
The plaintiff claimed that his filling station and commercial network meet customers' mobility and energy needs on a wide area over Europe and his filling station provides his customers not only gas filling services but also food and drink services, among his other trademarks he is using and has registered the trademark VIVA in the world and in Turkey for many goods and services in different classes. The plaintiff further claimed that the defendant is active in tourism sector and has registered the trademark VIVA!, which is identical with his trademark VIVA, for the services in classes 39, 41, 42 and 43 on 13.08.2001, that however, defendant has not used his trademark for “Services of providing food and drink: cafeteria services, canteen services, food serving (catering) services, Restaurant services, self-service of food and drink servicing vehicles services”, that according to the investigation conducted through the market and defendant’s business premises the defendant is not providing any kind of “food and drink providing services”, that although defendant is not using his trademark he is still occupying the trademark registry, that as to the nature of the case the defendant should submit documents showing that he is using his trademark seriously, that according to the Articles 14 and 42 of the Decree-Law no.556 the cited services should be removed from the specification of the trademark subject to the action and the assignment of said trademark to third parties shall be hindered.
The defendant claimed that he is providing tourism and transportation services, that according to natural flow of life the services for “providing food and drinks” are complementary to tourism and transportation service, since it would not possible to be functional for a tourism and transportation company not to provide food and drinks, that he is active in transportation and tourism field for many years and that even partial cancellation of his trademark would cause deception among average consumers considering the potential customers of the trademark VIVA!.
The court delivered the case to a panel of experts, who examined the commercial books and other document submitted by the defendant and determined that the trademark VIVA! is not being used for the services in class 43.
The Court stated that although there is no specific clause in the Decree-Law with regard to burden of proof for cancellation actions, according to the practice however the trademarks owner, who has faced a cancellation action, should prove that he has used his trademark in the past or that he has a legitimate reason not to use it. In such case, as the burden of proof is transferred to the defendant, the defendant should submit the evidences showing that he has been using his trademark seriously. Thus, he panel of experts has prepared its report according to the commercial books of the defendant and the documents, photos, catalogues, brochures and advertisements submitted by the defendant.
The Court stated that the trademark should be used on the goods/services for which the trademark has been registered before the Registry. As trademark rights are obtained by registration, the obligation of use of the trademark is only required for the goods/services it is registered for. The serious use of the trademark means the use of the trademark in such a way and frequency that the goods/services become known in the market and distinguish the goods and services of one company from the goods and services of other company in places, which would affect the market and would provide benefits. The peculiarity of use of a trademark is the type of conception by the environment to which the goods/services are provided. A trademark should be used in such a way that a person of average attention realize/understand that the trademark is promoting a specific undertaking and that it is an element that distinguishes it from other undertakings’ identical or similar goods/services. In the present case, according evaluation of the documents submitted by the defendant by the Court, the indication “including food” on the invoices is considered as defendant’s commitment to his tourist groups for fulfilling their food and drink needs rather than referring to a registered place of the defendant where food and drink services are provided. The court also notices that there exist neither any invoice issued from such place nor catalogues/brochures/photos showing the existence of such place. On the other hand, the defendant’s claims that organization and tourism services do cover as sub service the provision of food and drink services is not applicable, since these services are not directly linked and since they are in different service groups.
The court also accepted that the obligation of use is also valid for well-known trademarks, since being well-known is not a legitimate reason for non-use in every class it has been registered for. Considering Articles of the Decree-Law and the spirit thereof, just because of being well-known it is ungrounded to let a trademark occupy the trademarks registry for the goods/services for which it is not being used by way of creating exclusive rights and corruption of competition conditions.
Despite the defendant’s arguments that even partial cancellation of his trademark would cause deception among average consumers, as the plaintiff requested only partial cancellation of the trademark for “Services of providing food and drink: cafeteria services, canteen services, food serving (catering) services, Restaurant services, self-service of food and drink servicing vehicles services” are not being used and since according to the extend of the file it has been understood that the trademark has not being used for said services, it has been decided that the partial cancellation will not cause a risk of mislead with the public.
Accordingly the Court decided on the partial cancellation of the trademark VIVA! registration no.2001 15926 for the services in class 43. ”