The Concept of Loss of Rights due to Acquiescence in Trademark Infringement Actions
The acts deemed as infringement of a trademark are listed under Article 29 of the Industrial Property Code No. 6769 (“IP Code”), and the claims that the right holders whose trademark rights have been infringed may request from the courts and that they may assert against the infringing party are detailed in Article 149 of the same Code.
Although it is possible for the right holder to assert the claims outlined in the Code against the infringing party as long as the infringement continues, there is, in fact, a limit to this period. Indeed, it is not possible for the right holder to bring forward their rights against the infringing party “over many years” without using their trademark rights to keep the infringing party or parties under constant threat of legal action; in other words, right holders cannot continue to keep their rights while “remaining silent”.
This situation has found its place in the IP Code in regards to invalidation actions, and it is clearly stipulated in Article 25/6 of the IP Code that “Where a trademark proprietor has acquiesced in the use of a latter trademark for a period of five successive years while being aware or should have been aware of this use, trademark proprietor cannot assert his/her trademark as an invalidation ground unless the registration of the latter trademark is in bad faith.” Loss of rights due to acquiescence is also included in Article 16 of the Regulation (EU) No. 2017/1001 of the European Parliament and the Council of the European Union of 14 June 2017 and Article 9 of Regulation (EU) No. 2015/2436 as an obstacle to the filing of an infringement action.
As there is no explicit provision in the IP Code for infringement actions, the limits of the right in these matters are regulated by Article 2 of the Turkish Civil Code, “the principle of honest behaviour[1]”. The principle of honest behaviour constitutes the foundation of jurisprudence, and the exercise of a right is only possible as long as it remains within the framework of this principle.
In judicial decisions, the assessment of whether or not the loss of rights by acquiescence has occurred in scope of infringement actions relies upon the essence of both Article 25/6 of the IP Code and the principle of honest behaviour. Indeed, while the Court of Cassation has concluded that the plaintiff has lost its rights due to acquiescence for a period of less than 5 years in some cases, in other cases, it has been evaluated that the plaintiff lost its rights for acquiescence longer than 5 years. As stated, this assessment is based on the principle of honest behaviour.
In determining the loss of rights due to acquiescence, it is necessary to determine the starting point of the period. In determining this, the concept of “acting like a prudent merchant” regulated under Article 18/2 of the Turkish Commercial Code comes into play. Accordingly, the right holder is expected to act as a prudent merchant and exercise due diligence to be aware or is in a position to know about the use or registration of the trademark in question.
Within the framework of the principles of acting honestly and acting as a prudent merchant, the prohibition of contradictory behaviour should also be mentioned. In the established precedents of the Court of Cassation, Article 2 of the Turkish Civil Code is accepted as the main basis of the loss of rights by acquiescence. In this respect, in cases where the plaintiff knows or is in a position to know about the infringement and after establishing trust that the plaintiff will not file a lawsuit against the infringing party and after allowing significant investment in the infringed right, filing a lawsuit contrary to this trust will constitute a prohibition of contradictory behaviour. In other words, such behaviour is considered as contrary to the rule of honesty in accordance with Article 2 of the Turkish Civil Code, and this behaviour will not be protected by law. Thus, the Court of Cassation has introduced the concept of “prohibition of contradictory behaviour” by combining the prudent merchant's “knowing or being in a position to know about the infringement” position under the Turkish Commercial Code and the principle of honesty under the Turkish Civil Code, and shed light on the concept of loss of rights by acquiescence in infringement cases. The prohibition of contradictory behaviour may arise not only by remaining silent, but also with other acts that may constitute acceptance/consent, followed by a lawsuit against the infringing party to end the infringement.
In a decision issued in 2023, the Istanbul 16th Civil Chamber of the Regional Court of Appeal (RCA) brought a new perspective to the concept of loss of rights due to acquiescence in infringement cases and examined some additional conditions such as “genuine use” and “acts that interrupts the time period”. In the particular case, although the plaintiff had sold the defendant's products bearing the subject trademark on its own website, it filed an infringement action against the defendant years later. The RCA stated in its decision that: “the calculation of the period should be based on the date when the defendant started to use the trademark genuinely and it is not appropriate to calculate the period from the date of the first invoice", “considering that the plaintiff gave a notice on 28.11.2016 and filed a lawsuit on 20.01.2017, the 5-year period from the date of the first invoice on 19.02.2013 until the date of the lawsuit has not passed”, “plaintiff stated that the defendant's products were not sold and that the images were removed from the plaintiff's website within a short period of time”, “plaintiff sent a notice and filed a lawsuit within a reasonable period of time therefore the rejection of the lawsuit was not deemed appropriate on these grounds.”
It is mentioned that the calculation of the loss of rights due to acquiescence is based on the date on which the right holder determined the infringing use. However, in the above mentioned decision, the RCA took the date of the right holder's learning of the “genuine use” as the date of learning of the infringing use. The meaning attributed by the RCA to the concept of “the use of a trademark” and the meaning attributed by the doctrine, case law and the IP Code to “the use of a trademark” do not coincide with each other. Indeed, while it should be accepted that the defendant's invoice indicates the use of the trademark has started, it is not possible to agree with the decision to the contrary. As a matter of fact, it is clear that the trademark enters the market and reaches the consumer with the sale of the product and trademark use is sufficient and there is no regulation, opinion or decision stating that the use must reach a certain point in order to be considered genuine use. Moreover, even if “while being aware or should have been aware of this situation” in Article 25/6 of the IP Code is strictly applied to the concrete case, and even if the use mentioned in the Article is understood as "serious use", the invoice evidence should be accepted as indicating serious and genuine use.
On the other hand, in its decision, the RCA considers the plaintiff's letter of warning as a criterion for the calculation of the loss of rights due to acquiescence. Will this period run without any interruption from the date the right holder learns of the infringing use, or are there certain actions that interrupts or suspends this period? It is accepted in the established precedents of the Court of Cassation that acts such as sending letters of warning do not interrupt or suspend the running of this period. In other words, for the right holder to assert their rights, it is not sufficient to not show “acceptance/consent” by remaining silent, nor is it sufficient to only send a warning letter to assert their rights.
In this context, the right holder must act as a prudent merchant within the framework of the principle of honest behaviour, take actions that can be expected from a reasonable and prudent merchant, and not lead to the perception that a lawsuit will not be filed against the infringing party. Otherwise, it will not be possible to legally protect the plaintiff's rights on the grounds that the plaintiff did not act as a prudent merchant and violated the principle of honest behaviour.
[1] Turkish Civil Code No. 4721, Art. 2: “Everyone must abide by the rules of honesty when exercising their rights and in fulfilling their debts. The legal order does not protect the clear abuse of a right.”
First published by Gün + Partners in Apr 03, 2025.