The stated article was also published on Mondaq.
ABSTRACT
The new legislation regulating the matters of trademark, design, patent, utility model, and other industrial property issues entered into force in Turkey as of January 10, 2017, by the enactment of Industrial Property Law No. 6769. Perhaps, one of the most important regulations introduced by that Law is evidencing the use of trademarks in the presence of certain conditions.
When we examine the Guidelines on evidencing trademark use published by the Turkish Patent and Trademark Office and also the decisions of the same Office, it can be seen that, unless other supporting documents (especially invoices) are submitted, the trademark use made over the Internet (in particular via social media) is not being accepted as sufficient evidence.
The current commentary discusses whether the evaluations made on the basis of this traditional approach with regard to evidencing trademark use in certain specific classes could produce unfair results so far as the Internet and social media are concerned. [1]
I. INTRODUCTION
Many factors have been at play in the making of the modern world over the last two or three hundred years, but changes in technology stand at the center of all accounts, notably the Industrial Revolution which shift away from traditional agriculture and trade to the mechanization of production, the elaboration of the factory system, and the development of global market systems to industrial production. [2] Scientific revolutions carried out within this context overturned not only the reigning theories but also carried with them significant consequences outside their respective scientific disciplines. [3] One of the significant consequences of these developments was the mass production of goods and the increase observed in the variety, quantity, and quality of said products. These advances observed in manufacturing processes paved the way for the emergence of the need to become discernible among rivals which caused trademarks started to be used on enterprises’ goods and services.
As trade names and trademarks come into use as a means of promotion under the influence of the Industrial Revolution, and disputes arose between traders on these marks, demands regarding a more precise and stronger framework for this field increased. [4] The inadequacy of many national legal arrangements to meet the needs of international companies has gradually led to the emergence of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which is one of the annexes of the World Trade Organization Agreement, and the system presented in this context. In parallel to these developments, new and effective trademark protection has started to be implemented in Turkey, especially with the effect of the TRIPS Agreement and the 1/95 numbered resolution of the European Union-Turkey Association Council. [5]
At present, the regular functioning, and development of commercial life depend on the existence of trademark protection among many other factors. Such protection requires that any development and change in the matter be assessed and reflected in the relevant regulations.
The most important change and development affecting trademark law, undoubtedly, appear as the Internet has started to be intensely used. Especially after the 1990s, the development in the field of science and technology and resulting in information and communication technologies have changed the cultural and social structure of societies and the characteristics of commercial relationships, which are commonly applied. As one of the information and communication technologies, the Internet allows fast and cheap global access to information, which leads to a change in methods of trading and recognition of the internet as the most important means of marketing for all persons involved in trading all over the world.
Although the global character of the Internet has not changed the existing legal system, it has made the simple regulatory issue more complex, a phenomenon which arises also (and is pushed further forward as a result of the opportunities offered by the Internet) in other areas like copyright, trademark, competition policy, the pharmaceutical market, air transport, etc. where global legal protection does not exist. [6] [Wolfgang Kleinwächter, Internet Co-Governance, Towards a Multilayer Multiplayer Mechanism of Consultation, Coordination, and Cooperation 3 (2004), https://www.wgig.org/docs/Kleinwachter.pdf (last visited Apr 25, 2020).]
The results of a statistical survey [7] performed in 2020, in which the frequency of Internet users worldwide are shared along with country-specific rankings and figures, indicate that, as of 2020, more than 4.5 billion people worldwide are using the Internet. Given that the world population is approximately 7.594 billion as of 2018 according to World Bank statistics, it would not be wrong to claim that more than half of the total world population is using the Internet. [8]
Internet technology is undergoing rapid development and change. Through this technology, applications, trademarks, and platforms that we never had heard of or came across about 10 years ago have become part of our daily lives and influenced our business conduct, tendencies, and basic behaviors. In this context, social media, thanks to Internet technology, has become an indispensable component of our daily lives. Today, applications like Facebook, Twitter, Instagram, LinkedIn, or Medium, can be regarded as some of the most preferred and most frequently used types of social media.
The new legislation regulating the matters of trademark, design, patent, utility model, and other industrial property issues, entered into force in Turkey as of January 10, 2017, by the enactment of Industrial Property Law No 6769. [9] With the enactment of said Law, although the existing structure was preserved in its general framework, additional regulations have been introduced with the intention to eliminate some of the problems experienced during the abolished Decree-Laws period. Perhaps, one of the most important regulations made in this context is, evidencing the use of trademarks in the presence of certain conditions.
Evidencing the use of trademarks may become necessary in the course of trademark application opposition proceedings lodged with the Turkish Patent and Trademark Office. [10] This necessity may also arise in the course of trademark invalidation and infringement proceedings. It can also come into question at the stage of proving the prior rights and/or acquired rights on any sign.
When we examine the Guidelines on evidencing trademark use published by the Turkish Patent and Trademark Office and also the decisions of the same Office, it can be seen that, unless other supporting documents (especially invoices) are submitted, the trademark use made over the Internet (in particular via social media) is not being accepted as sufficient evidence.
To prove whether a trademark is being used in particular via social media within the meaning and functions of Turkish IP Law, is the actual sale thereof a must, especially when advertising, marketing, public relations, and similar services are at stake? When the differences and diversity of today's ways of doing business and commercial relations are taken into consideration, would it be fair to ignore trademark usages performed only through social media, especially in advertising, marketing, and public relations services? And again, would it be fair to conclude that these kinds of transactions are excluded from the scope of trademark usage, hinging on the ground that no invoice is presented?
This commentary discusses whether the evaluations made on the basis of this traditional approach with regard to evidencing trademark use in certain specific classes could produce unfair results so far as the Internet and social media are concerned.
II. The Scope: The Classes Subject to the Commentary
One of the most important and fundamental elements of the law to fulfill its social function is the proper utilization of legal reasoning. [11] As it is mentioned in many decisions of the Turkish Constitutional Court, the Turkish Supreme Court of Appeals, and other Supreme Courts, it is essential that each individual case shall be evaluated within its own circumstances on a case-by-case basis.
Thus, a detailed assessment needs to be made for each class at the stage of proving the use of a trademark. Taking these explanations into account, it should be noted that the classes discussed in the scope of this commentary are solely related to ‘advertising, marketing, public relations services, and similar services as defined in class 35 under Nice Agreement Concerning the International Classification of Goods and Services for the Registration of Marks.
III. Basic Concepts Regarding the Use of Trademark
A. Definition of Trademark
Turkish IP Law does not provide a clear definition of the concept of "trademark". Article 4 of Turkish IP Law, which is currently in force, stipulates that: “Trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor.”
In this sense, it can be asserted that any kind of sign, provided that it is capable of being distinctive and being represented in the Register, could be regarded as a trademark.
B. The Use of Trademark
Asserting that the concept of trademark use was introduced with the current Turkish IP Law for the first time would be a false assumption.
Until annulled by the Turkish Constitutional Court [12], the issues related to trademark usage were regulated in Article 14 of the abolished Turkish Decree-Law no 556 Pertaining to the Protection of Trademarks.
In the current Turkish IP Law, the regulations regarding trademark use are set out in Article 9 and other related articles.
In casting a glance through the preamble of article 9 of Turkish IP Law, it can be observed that Article 15 of Regulation (EU) 2015/2424 of the European Parliament and of the Council and article 16 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks are taken as the basis for these regulations. [13]
According to the preamble and provisions of article 9 of Turkish IP Law, the trademark shall be put to genuine use in Turkey by the trademark proprietor in connection with the goods or services in respect of which it is registered. These provisions further express that trademark usage shall be in the course of trade.
Turkish IP Law sets out the situations deemed as the use of trademark under paragraphs 2 and 3 of article 9.
Accordingly:
- use of the trademark with different elements, which do not alter the distinctive character of the mark,
- use of the trademark on goods or on the packaging solely for export purposes (as per sub-paragraphs ‘a’ and ‘b’ of paragraph 2 of article 9) and
- use of the trademark with the consent of the trademark proprietor (as per paragraph 3 of article 9) will be deemed to constitute use by the trademark proprietor.
C. The Obligation to Use the Trademark
The proprietor of a trademark is obliged to use the trademark in Turkey within the prescribed period.
Paragraph 1 of article 9 of Turkish IP Law states that if the proprietor of the trademark has not put the trademark to genuine use in Turkey within a period of five years following the date of registration, in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be revoked unless there are proper reasons for non-use.
Likewise, according to subparagraph ‘a’ of paragraph 1 of article 26 of Turkish IP Law, which regulates the revocation of a trademark, the same article (Paragraph 1 of article 9) is shown as one of the grounds for the revocation of the trademark by TURKPATENT. [14]
D. Some Conditions that Require the Evidence of Trademark Use
In accordance with Turkish IP Law and the regulations presented as exemplary below, in the presence of certain conditions, the proprietor of the trademark is obliged to evidence the use of the trademark.
D.1. The obligation to evidence the use of a trademark may arise in the event of opposition filed against the publication of a trademark application, as is arranged in the second paragraph of Article 19 of Turkish IP Law.
As a general rule, a sign containing the aforementioned components can benefit from distinctive protection provided by Turkish IP Law through registration, as is indicated in the first paragraph of article 7 of the same Law.
Trademark registration is a process that can be initiated by submitting a trademark application and related annexes thereof to TURKPATENT - Trademarks Department. TURKPATENT – Trademarks Department will examine, ex officio, a trademark application in terms of absolute grounds for refusal. Trademark applications that are not refused upon examination in terms of absolute grounds for refusal remain published for a period of two months, so that relevant persons may file their oppositions in the issued Official Trademark Bulletin asserting that the trademark for which an application is filed should not be registered as per the provisions of articles 6 and other related articles of Turkish IP Law.
As per the second paragraph of Article 19 of the Turkish IP Law, in the course of oppositions filed in the scope of the first paragraph of Article 6 (which is actually about oppositions that are based on the reasons for the likelihood of confusion that is one of the relative grounds for refusal), the obligation to evidence trademark use may arise under the following conditions:
- The trademark, which is the ground for opposition, shall be registered for at least five years at the date of a trademark application or the date of priority of the application for which the opposition is filed.
- The trademark applicant shall, in writing, clearly request from the opponent to submit evidence to the TURKPATENT proving that he/she had genuinely used his/her trademark on the goods and services relating to the opposition during the five-year period before the date of application or the date of priority of the latter application or whether he/she has a proper reason for not using his trademark during that period.
In case the opponent fails to prove aforesaid, the opposition will be refused.
Evidencing the use of the trademark can also be requested and/or claimed as a counter-defense in lawsuits filed with the Turkish Intellectual Property Courts for the cancellation of the decisions of the TURKPATENT – Re-Examination and Evaluation Board.
D.2. The necessity to evidence the use of the trademark may also be applicable in trademark invalidation lawsuits.
Article 25 of the Turkish Industrial Property Law regulates the invalidity of trademarks. According to the first paragraph of said article, if the conditions mentioned under Article 5 (absolute grounds for refusal) or 6 (relative grounds for refusal) exist, the IP Court shall invalidate a trademark.
Likewise, paragraph 7 of article 25 of Turkish IP Law stipulates that in invalidation proceedings filed pursuant to the first paragraph of Article 6 (where the opposition is based on the reasons of the likelihood of confusion which is one of the relative grounds for refusal), the provisions set out in the second paragraph of Article 19 may be asserted as a defense.
In that case, the date of the proceeding is taken as the basis for determining the five years period regarding the use of a trademark. If the plaintiff’s trademark has been registered for at least five years at the application date or at the date of priority right of the trademark for which invalidation is requested, the plaintiff will also be obliged to prove that the conditions of trademark usage stated in the second paragraph of Article 19 are met as of the date of application or the date of priority right.
D.3. Similarly, the necessity to evidence the use of the trademark may also be applicable in lawsuits filed due to infringement of trademark rights.
The acts defined in article 29 of Turkish IP Law are considered as an infringement of trademark rights. The second paragraph of the said article states that the provisions of the second paragraph of Article 19 may be used as a defense in infringement proceedings.
D.4. Provisions on proving the use of trademark are, however, considered to not be limited solely to those discussed above.
As explained in the above paragraphs, there are also relative grounds for refusal in trademark registration as is regulated in Article 6 of the Turkish Industrial Property Law.
According to paragraph 3 of article 6 of Turkish IP Law, if a right to a non-registered trademark or another sign used in the course of trade was acquired prior to the date of application or the date of the priority claimed for the application for registration of a trademark in Turkey, the trademark application shall be refused upon the opposition of the proprietor of that prior sign. This provision essentially regulates the prior/genuine/acquired rights on a trademark.
As established by the decisions of the Turkish Supreme Court of Appeals [15], the prior rights on a trademark, which is one of the three important principles regarding the acquisition and protection of the right on a trademark, belongs to the person who created and uses that sign. This is called a genuine right holder. According to the Turkish Supreme Court of Appeals’ decisions, in such cases, the registration of the trademark only has an explanatory effect. In other words, the right on the trademark has occurred before registration. However, this registration and/or application by a person who has just chosen and registered a trademark without creating or using it has a constitutive effect. Such registration and/or application may only grant the beneficiary a contingent right initially. Until the genuine right holder objects and/or sues and registers the trademark in question, ownership of the founding effect shall continue since the genuine right proprietorship on a trademark does not entitle a second independent and individual ownership. [16] Thus, anyone hinging on this ground shall be obliged to prove the previous trademark usage.
When the general preamble of Turkish IP Law and the exemplary conditions given above are examined, it can be observed that the Legislator aims to ensure the more effective use of registered trademarks in the market and to prevent trademark applications/registrations that are not intended for use in the relevant classes. These regulations also ensure that the existing system functions more efficiently by making it compulsory to evidence the use of trademarks in certain legal claims.
E. Documents Taken into Consideration During the Proof of Trademark Use
Regulation no 30047 on the Implementation of Turkish Industrial Property Law no 6769, published in the Turkish Official Gazette dated April 24, 2017.
The first paragraph of Article 30 of Regulation no. 30047 provides that the evidence presented to prove trademark use should be clear, understandable, and reliable in a way that allows the parties to evaluate and form opinions without the need for any further information. The same article further states that the evidence submitted by the complainant must contain sufficient information on the nature, place, time, and scope of use of the trademark in respect of the goods or services for which the trademark is registered. The second paragraph of Article 30 states that the evidence might comprise any of the supporting documents such as packaging, label, price list, catalog, invoice, photograph, and newspaper advertisement.
In addition to said Regulation, the Proof of Use Guidelines [17] published by TURKPATENT on trademark use includes detailed explanations on how trademark usage can be proved. [18]
These Guidelines provide a description of documents that can be useful in proving the use of trademarks. When we examine these Guidelines, it can be seen that the documents such as ‘invoices, catalogs, price lists, product codes, products, packaging and trademark samples on these packages, advertising and promotion documents, market research, advertising visuals, videos, and invoices related thereto, promotional product visuals or videos and invoices related thereto, proof of participation in fairs, public opinion surveys, information regarding commercial activity, and declarations’ will be taken into consideration in the course of evidencing the trademark use.
It can be seen that, following the description of the information and documents that may serve as proof of trademark use as cited above, the mentioned Guidelines give certain explanations for each document. The explanations provided in the Guidelines are important as they indicate TURKPATENT's perspective on information and documents that help to prove trademark use.
When the Guidelines are examined in this sense, it can be seen that:
-Invoices are regarded as the most powerful evidence for proof of trademark use.[19]
-However, price lists, product codes, and catalogs are not sufficient proof on their own as to whether a trademark is the subject of commercial life. [20]
-While stating that advertising visuals and videos related to goods or services have an important role in the evidence submitted for the proof of use, it is required to submit invoices for these documents separately. [21]
These explanations indicate that documents like price lists, catalogs, advertising visuals, and videos are regarded as ancillary evidence by TURKPATENT.
According to the Guidelines cited above, in the case of sales made via the Internet, the visuals of the related website, where the connection of a trademark with the relevant goods/services is established will be accepted as evidence. The Guidelines further state that if a trademark is registered as the domain name, the visuals related to the website and the statistical data showing the usage of that website are to be considered as supporting evidence. [22]
When an assessment is to be made within the framework of these explanations, it could be asserted that TURKPATENT limits the trademark uses made over the Internet only to a certain sale of goods and services. It may further be asserted that according to TURKPATENT’s perspective, in order to prove that the trademark is used within the meaning required by the Turkish IP Law, it is necessary to submit invoices in addition to the documents proving its use on the internet.
Furthermore, as per some of the decisions of the TURKPATENT [23], it becomes obvious that TURKPATENT does not accept opposition hinging on the ground that a prior right on the sign had been obtained as a result of previous trademark use made only over the internet (especially via social media). These decisions also corroborate the above-mentioned explanations regarding TURKPATENT’s perspective on the use of trademarks via the Internet.
So, within the scope of the classes mentioned above, is it necessary to have made an actual sale in order to prove that a trademark was used over the internet, especially via social media? Again, in this context, is it obligatory to submit invoices for certain classes (e.g. advertising, marketing, public relations, and similar services) when the trademark was used only over the Internet (in particular via social media) at the stage of proving the trademark’s use in commerce?
The following sections of the commentary are aimed at discussing the above questions.
IV. First Condition for Detection of Trademark Use: Use in Commerce
Paragraph three of article 11 of Turkish IP Law states that goods or services for which application is filed shall be classified in accordance with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, which was ratified by the decision of the Council of Ministers dated July 12, 1995, numbered 95/7094. [24] According to these regulations, there are a total of 45 classes of goods and services related to trademark use. [25]
As mentioned above, it is beyond dispute that an assessment is required for each specific class at the stage of proving trademark use. However, before performing a class-based evaluation, it is necessary to determine whether the trademark is used in commerce or not. As accepted in the doctrine [26], a trademark should be used in the course of trade, in such a way to ensure that the relevant good or service is recognized and differentiated from other goods or services. In other words, ‘such use must be consistent with the essential function of a trademark, which is to guarantee the identity of the origin of goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin’. [27] Similarly, according to one of the two understandings of genuine use that have been employed in the case law in the United Kingdom, any use which is not artificial, fictitious or merely to retain the mark will suffice. [28]
When considered within the scope of traditional business relations and business practices, the most important document in the proof of trademark use in commerce will be the invoices as stated in TURKPATENT’s Proof of Use Guidelines. However, solely adopting a traditional approach and strictly seeking invoices in each class might result in a lack of equitable determination and consideration for trademark usage carried out over the internet (especially via social media).
The use of websites for shopping is a current fact. When an assessment is made based on the trade relations carried out over the internet, it is clear that e-commerce has an important place in our lives. Such transactions are carried out either on the official websites of the respective trademarks or through the shopping platforms where the products and/or services of more than one trademark are brought together. Generally, by signing up on such websites, usernames and passwords are allocated and through secure payment options, the purchased products and/or services are delivered to their recipient within relatively short periods. Platforms like AMAZON, ALIBABA, and eBay are just a few examples. The importance and use of these platforms have increased even further as a result of quarantine measures taken in most countries around the world due to the Coronavirus - COVID-19 pandemic, which has affected almost the entire world since the beginning of 2020.
According to existing practices and regulations, the use of trademarks on the internet, which TURKPATENT considers itself as trademark use in commerce, is mainly related to transactions like those described in the preceding paragraph. When considered within the scope of the examples given, the submission of invoices and other similar documents may be requested at the stage of proving the commercial use of a trademark. However, even in this case, it is believed that the failure to submit an invoice alone will not be sufficient to determine whether the sign was used as a trademark in commercial life.
Just to give an example; various internet sites are designed as a platform, where handcrafted, limited-edition and custom-made products produced by real persons are sold. The e-commerce website ETSY is one of the best examples of this. Let us assume that auntie A, who is a housewife and produces hand-made soap at her home in Turkey, becomes a member of this platform, designated the sign “A” as her trademark, and started producing hand-made soaps under this trademark. Now imagine that Auntie A’s soaps put up for sale under the trademark “A” became one of the best-selling products and that the number of both national and international buyers reached serious dimensions. Also assume that, as Auntie A is a housewife [29], she does not have any tax records, bills, proforma invoices, and/or any other financial documents that could serve as proof for her sales. In this case, to what extent is it possible to claim that, as no invoice can be submitted, trademark A was not used by Auntie A on the platform www.ETSY.com in a commercial way?
As felicitously stated in the LA MER case [30], regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular, whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark.[31]
In ‘SKYTV’ case [32], the plaintiff, who was a Turkish national, alleged that the defendant, who was a resident of the United Kingdom, had quit making cablecasting in Turkey from August 2001 and that, ever since, the trademark SKY had not been used in class 38 for five consecutive years period in Turkey. On these grounds, the plaintiff claimed the invalidation of the trademark in dispute by virtue of non-use. Specific to the case in question, the 11th Civil Chamber of the Turkish Supreme Court of Appeals pointed out in its decision that television broadcasting can vary due to advances in technology, and in this respect, television broadcasting performed through the internet and satellite could also be regarded as trademark use provided that these broadcasts are accessible and/or available in Turkey. Hinging on this specific and other related grounds, the Supreme Court of Appeals decided that the trademark SKY was still being used as a trademark in class 38 in Turkey and thus approved the court of first instance’s judgment of dismissal.
In ‘FOSFOR’ case [33], the plaintiff asserted that he had been using the trademark in question as a domain name ever since 2010, and further that the mentioned trademark was being used in all of his commercial transactions, invoices, website, brochures, catalogs, promotional articles, social media accounts, and also within advertising and public relations services under class 35 as well as in graphical design services under class 43 for the past five years, that he, therefore, had obtained prior / acquired rights on the sign, and thus claimed the invalidation of the trademark for all classes in which the trademark was registered. The court of the first instance partially admitted the case and rendered the invalidation of trademark registration for advertising and public relations services in class 35 and graphical design services in class 43. This decision of partial admission was subsequently approved by the decision of the Turkish Supreme Court of Appeals.
In its decision of reversal delivered in the case of ‘OKYANUS PLAZA’ [34], the 11th Civil Chamber of the Turkish Supreme Court of Appeals indicated that, among other pieces of evidence regarding trademark use (such as placing ads, printing invitation letters, brochures, etc.), setting up a website for a construction project titled Okyanus Plaza should also be accounted as trademark use in construction services under class 37.
In ‘ARMADA ARASTA ÇARŞISI’ case [35], the 11th Civil Chamber of the Turkish Supreme Court of Appeals stated that, prior to the commencement date of an invalidation action, ads put on newspapers for the trademark in question and also announcements were made on the defendant’s website for the defendant’s commercial activities and its trademark for a period of only one month should also constitute genuine use and therefore must be regarded as trademark usage, and thus, rendered a reversal decision.
The decisions cited above exhibit that, in cases where other circumstances of trademark usage exist, using the trademark via the internet (and in some cases using the trademark on social media) can be regarded as use in commerce and hence as trademark use, by the Turkish Courts of First Instance and the Turkish Supreme Court of Appeals.
But what if a trademark is solely used via social media without any evidence of actual sales?
The various decisions in the United States indicated that it is not necessary to even make an actual sale to accept that the trademark is used over the Internet and in commercial life if certain conditions exist. The issue discussed in most of these decisions concerns who owns the prior right on the mark and whether the prior use of the mark over the Internet provides the ‘use in commerce’ condition or not. However, some of these decisions are considered to be of importance, especially as they point to the conditions under which internet-based uses are considered a commercial use.
Even in times when the Internet is not yet in our lives, the US Court of Appeals has set some criteria for trademark ownership and prior use of the trademark. In the MENDES decision [36], it is stated that although evidence of sales is highly persuasive, the question of use adequate to establish appropriation remains one to be decided on the facts of each case, and that evidence showing, first, adoption, and, second, use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidence of actual sales.
In the COOLMAIL decision [37], where the prior use in commerce of the mark “COOLMAIL” on the Software, which is a UNIX-based program that provides e-mail users with notice of new e-mail and serves as a gateway to the users' e-mail application, were discussed, the US Court of Appeals, concluded that the existence of sales or lack thereof does not by itself determine whether a user of a mark has established ownership rights therein. In the stated decision, the Court concluded that the use of the mark in connection with the Software constitutes significant and substantial public exposure of a mark sufficient to have created an association in the mind of the public and thus, activities under the “COOLMAIL” mark constitute a “use in commerce” sufficiently public to create ownership rights in the mark.
Again, as an example of the subject in question, the US Court of Appeals concluded in another decision [38] that the party who first appropriates the mark through use, and for whom the mark serves as a designation of source, acquires superior rights to it. In the stated decision, it is further concluded that the evidence of actual sales is not necessary to establish ownership.
As to the United Kingdom, it is argued that if the proprietor has made genuine efforts to start trading, then to supply goods under the mark on a single occasion, or possibly to make some other definite marketing effort, may amount to use. [39] In some of the decisions, it is also observed that genuine preparations to market sufficed, without evidence of actual sales. [40]
The decisions mentioned above are grounded on the belief that, when assessing a trademark’s use in commerce over the Internet, which is the first condition of trademark use, it is highly important to recognize that the extent to which such assessment is mainly based on invoices can produce unfair results.
Although the use of the trademark in commerce is one of the conditions precedent for determining whether there is the actual use of the trademark, the fulfillment of this condition alone is not sufficient to accept that a trademark is being used in commerce. For instance, simply putting up a website, without more, is not trademark use either, if there is no evidence of page visits or the physical locations of visitors. [41] Similarly, setting up a social media account and sharing some posts through the stated account will not be sufficient to prove trademark usage.
To this end, under the following headings, some of the conditions that might be taken into consideration in assessing whether a trademark is used via the internet (especially via social media) will be set forth, hinging on previous decisions.
V. Determining the Existence of the Trademark Usage on Social Media
Social media can be defined as interactive computer-mediated technologies that facilitate the creation and sharing of information, ideas, career interests, and other forms of expression via virtual communities and networks. [42]
According to the statistical survey of 2020 mentioned in the introduction of this commentary [43], Turkey is ranking 10th in Facebook usage worldwide, with 51 million active users, 6th in Instagram usage worldwide, with 38 million active users, and 6th in Twitter usage worldwide, with 11 million eight hundred thousand users. Furthermore, it is emphasized in the same report [44] that 74 percent of Turkey’s total population is using the Internet and that active social media users constitute 64 percent of the total population in Turkey. This also indicates that Social media usage has reached substantial dimensions in Turkey.
Whenever we sign in on our social media accounts, we are likely to encounter sponsored advertisements for a wide range of products and services, from restaurants to beauty and personal care products, and from interior design to medical services. Likewise, every brand engages in advertising, promotion, public relations, and other similar activities related to their trademarks through their social media accounts. In Turkey, even persons and companies have emerged, whose sole operating area is the monitoring and management of social media accounts and the promotion of trademarks via social media.
Apart from the services mentioned above, which can be considered as an extension of traditional advertising, marketing, and public relations services, it is yet another fact that thanks to social media, some people, whom we cannot meet and or know of in our daily lives, have gained considerable prominence. Some of these people have a high number of followers and the posts they share on social media are getting positive or negative responses from large masses reaching really high numbers. The reasons why people chose to follow these individuals, though more than one, are often that they are funny, beautiful, handsome, or a celebrity, or are fighting a particular disease, travel to different parts of the world, and provide information about themselves, and the like. Apart from the social, cultural, psychological, economic, and other similar aspects of this phenomenon, it is a fact that these individuals address a significant number of potential consumer masses. And although the philosophical and lexical meaning is different, some of these individuals are sometimes referred to as phenomena by virtue of the high number of followers they have and the number of reactions they receive to their own social media posts.
Here, individuals with the qualifications mentioned above, identify either their names or other different signs as the username for their social media accounts and share their posts through these accounts. The target / potential consumer group of these people has attracted the attention of all trademarks, from the most recognized to the mediocre level. In this respect, the trademark owners have started to demand that these prominent individuals on social media share their products and services through their accounts. In exchange for these shares, they either pay a certain fee or allow the use of the products or services shared on social media for a certain period. Even though they are mostly young, they can also be housewives, as in the case of Auntie A mentioned in the preceding paragraphs, students, or even a child. [45]
Regardless of their status, occupation, and the position they hold in society, the activities carried out within the framework stated above should be considered to have a commercial nature, and thus, be included directly and/or indirectly in advertising, marketing, and public relations services. One can observe that this assumption has started to gain acceptance in some countries, such as China. For instance, in a non-use cancellation action decided in March 2017, the China Trademark Review & Adjudication Board (TRAB) found the registrant's promotion of the trademark through its official account on the China microblogging website Sina Weibo sufficient enough to establish the use of the trademark in China. [46]
Within the scope of the classes discussed in this commentary, the current commercial impact of social media is accurately mentioned in the DJ LOGIC [47] decision of the US Court of Appeals. The said decision stated that promotion on platforms such as Twitter and Facebook not only constitutes marketing but is among the most popular and effective advertising strategies today. Even this determination is a clear indication of the current position of social media and how powerful and important it has become in terms of promotion, advertising, marketing, and similar services. Although the mentioned case is about trademark infringement, breach of consumer protection act, unfair competition, and trademark dilution issues, the criteria sought in analyzing the strength of the mark, as one of the factors taken into consideration in assessing the likelihood of confusion [48] are believed to provide a suitable means that can be taken as the basis for examining the evidencing of trademark use via social media.
As to trademark use via social media in terms of commentary-specific classes, this matter could be determined by the following factors:
* The commercial strength of the mark in social media,
* The broad public recognition of the mark in social media,
* The continuity of the mark's existence and consumer awareness of the mark in social media.
It is believed that the above-mentioned factors can be proven by documents indicating the number of followers of the mark’s social media account, the quality of the followers (e.g., whether there are followers like celebrities, well-known people, social media phenomena, etc.), the followers’ reactions and interactions to the posts of the mark in question (number of likes, comments, retweets, reposts, etc.) in social media, the number, continuity, content, and quality of the posts in social media accounts and by documents that show commercial success suggesting broad recognition of the mark using web-based indicators of popularity (e.g., YouTube views).
Thus, it is believed that, in the presence of the above-mentioned criteria and provided that they can be proven, the use of trademark via social media in advertising, marketing, public relations, and similar services should be considered commercial use and that these transactions should be taken into consideration in the determination of trademark use, even if there is no invoice to evidence that use.
VI. Conclusion
Internet technology is undergoing rapid development and change. Through this technology, applications, trademarks, and platforms that we never had heard of or came across about 10 years ago have become part of our daily lives and influenced our business conduct, tendencies, and basic behaviors. In this context, social media, thanks to Internet technology, has become an indispensable component of our daily lives. As tried to be expressed in the relevant sections of this commentary, internet use has reached substantial dimensions both in the world and in Turkey.
The new legislation regulating the matters of trademark, design, patent, utility model, and other industrial property issues entered into force in Turkey as of January 10, 2017, by the enactment of Industrial Property Law No. 6769. Said Law has introduced regulations on the use of trademarks, and in some cases, the obligation to prove the use of the trademark. Along with that, the Proof of Use Guidelines has been published by the Turkish Patent and Trademark Office in accordance with the provisions of Turkish IP Law and the Regulation on the Implementation of Turkish IP Law.
When assessing the issue on grounds of the explanations made in the Guidelines, it can be asserted that TURKPATENT limits the trademark use made over the Internet only to a certain sale of goods and services. It may further be stated that, according to TURKPATENT’s perspective, in order to prove that a trademark is being used in particular through the internet (notably via social media) within the meaning and functions of Turkish IP Law, it is necessary to submit invoices in addition to documents that prove the trademark’s use on the internet. Upon completion of the transition periods specified in Turkish IP Law, TURKPATENT will be vested the authority to decide on the revocation of trademarks based especially on non-use and other similar grounds. In this sense, the point of view adopted by TURKPATENT becomes even more crucial.
Each individual case needs to be evaluated within its own circumstances on a case-by-case basis. Thus, specific to the commentary, it would not be wrong to argue that an assessment should be made for each class at the stage of proving trademark use. At this point, arranging an overall set of conditions and documents that will apply to all classes can often lead to unlawful consequences.
Within the scope of advertising, marketing, and promotion services, and in terms of commercial business conduct, it is an obvious fact that social media is nowadays used as a tool of commerce. Therefore, in terms of these classes, even in the absence of invoices, trademark usage through social media should further be examined thoroughly. Otherwise, narrowing the proof of trademark only down to invoices in classes specific to this commentary will produce unfair results so far as the Internet and social media are concerned. Similarly, evaluations based on this traditional approach related to the evidence of the use of the trademark in the mentioned classes would also result in the current commercial business conduct and future trade relations be overlooked.
Written by:
N.Berkay KIRCI
Attorney at Law
Trademark & Patent Attorney
FOOTNOTE CITATIONS:
1. The basic version of this commentary was first published in Turkish in Ankara Bar Association Journal of Intellectual Property and Competition Law 78–102 (2019), http://www.ankarabarosu.org.tr/siteler/ankarabarosu/frmmakale/2019-1/4.pdf (last visited 20 August 2022).
2. Joel Mokyr, The Lever of Riches: Technological Creativity and Economic Progress (First ed. 1990).
3. Hanne Andersen, On Kuhn (First ed. 2001).
4. David I. Bainbridge, Intellectual Property (Tenth ed. 2018).
5. N.Berkay Kırcı, Markanın İnternet Yoluyla Haksız Kullanımı (First ed. 2009).
6. Wolfgang Kleinwächter, Internet Co-Governance, Towards a Multilayer Multiplayer Mechanism of Consultation, Coordination, and Cooperation (2004), https://www.wgig.org/docs/Kleinwachter.pdf (last visited Apr 25, 2020).
7. See We are social and Hootsuit, The “Digital in 2020” Report, p. 3, The stated report is available at: https://wearesocial.com/digital-2020 (last visited Apr 25, 2020).
8. The World Bank Data, World Population, Total, https://data.worldbank.org/indicator/SP.POP.TOTL (last visited Apr 25, 2020).
9. Turkish Industrial Property Law no 6769, which is currently in force, will be referred to as Turkish IP Law in the following parts of the study.
10. Turkish Patent and Trademark Office will be referred to as TURKPATENT in the following parts of the study.
11.Ahmet Gürbüz, Hukuksal Muhakemenin Temel Paradigmasi Olarak Evrensel Hukuk Değerleri ve İlkeleri Nasıl İşlevselleştirilebilir, Journal of Judgments by the Court of Jurisdictional Disputes / Uyusmazlik Mahkemesi Dergisi (2016), http://static.dergipark.org.tr:8080/article-download/afe1/5cfa/577c/imp-263399-0.pdf? (last visited Apr 25, 2020).
12. Turkish Constitutional Court's Decision Date: December 14, 2016, Case no: 2016/14; Decision no: 2016/189. Stated decision published on January 06, 2017, dated 29940 numbered Turkish Official Gazette.
13. Article 18 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark also has similar arrangements.
14. According to article 192/1-a of Turkish IP Law, the effective date of Article 26, in which TPTO is vested with the authority to render decisions about the revocation of a trademark, is seven years after the publication of Turkish IP Law. This means that the said article is entering into force after January 10, 2024. Again, according to paragraph 1 of the provisional article 4 of the Turkish IP Law, until the provision of Article 26 enters into force, the Turkish IP Courts under the procedures and principles of the said article shall exercise the power of revocation.
15. See the Turkish Supreme Court of Appeals for the 11th Civil Chamber Decision, Date of Decision: April 19, 2002, Case no 2001/9903 and Decision no 2002/3699 and Turkish Supreme Court of Appeals for the 11th Civil Chamber Decision, Date of Decision: December 23, 2015, Case no 2015/6134 and Decision no 2015/13829; see also Hamdi Yasaman, Marka Hukuku 405 (2004).
16. See Ünal Tekinalp, Fikri Mülkiyet Hukuku 324 (Fourth ed. 2005).
17. The Guidelines published in 2017, referred to as Proof of Use Guidelines by the TURKPATENT and will be referred to as ‘Guidelines’ in the following parts of the commentary.
18. The Proof of Use Guidelines published by TPTO which is in Turkish, can be accessed from the link: https://www.turkpatent.gov.tr/TURKPATENT/resources/temp/B4609CED-66A9-4096-A33A-DA99A1A0DE04.pdf;jsessionid=AC3C184BCDB58A4EDECF62AC6EFEFA68 (last visited Apr 25, 2020).
19. Id. at 9.
20. Id. at 10.
21. Id. at 11.
22. Id. at 12.
23. See Turkish Patent and Trademark Office (TURKPATENT) – Re-examination and Evaluation Board’s Decision, Decision Date: September 03, 2018, Decision Number: 2018-M-7244. The final decision was rendered after the opposition filed against the publication of a trademark application. (Turkish trademark application no.2017/54560). The trademark application in question was formed of word and device combination (AfraTafra and Device) and requested to be registered especially under sub-classes ‘advertising services, marketing services, public relations, and similar services in class 35 according to Nice Classification. The opponent’s main allegation was that he had been using the same word component (AfraTafra) in the same classes, over the Internet especially via social media for two years before the date of trademark application. Although accompanying evidence proving trademark usage over the Internet (especially via social media) was submitted, TURKPATENT – Re-examination and Evaluation Board concluded that the use of the stated sign in the course of trade was not proved, and rejected stated allegations.
24. These issues are also mentioned in Article 9 of the Regulation on the Implementation of Turkish IP Law.
25. The first 34 classes are related to commodities and the other 11 classes are related to services.
26. See Uğur Çolak, Türk Marka Hukuku 957 (Fourth ed. 2018). Sabih Arkan, Marka Hukuku 216 (1998). Tekinalp, supra note 14 at 428. Yasaman, supra note 13 at 494. see also Eric D. Offner, International Trademark Protection 39 (First ed. 1965). Anthony D’Amato & Doris Estelle Long, International Intellectual Property Law 21 (First ed. 1997). William Cornish & David Llewelyn, Intellectual Property: Patents, Copyright, Trademarks, and Allied Rights 731 (Sixth ed. 2007).
27. David Kitchin et al., Kerly’s Law of Trademarks and Tradenames 289 (Fourteenth ed. 2005).
28. L. Bently & B. Sherman, Intellectual Property Law 889 (Second ed. 2004).
29. In Turkey, generally, housewives and students do not have any tax records. Again, with the General Communiqué on Income Tax Serial No. 30715 dated March 15, 2019, and numbered 30715, tax exemption had officially been granted, if women sell the products they produce in their homes on the internet, up to a certain amount of trades.
30. La Mer Technology Inc v Laboratories Goemar SA [2004] EWHC 2960 (Ch). See paras 28-34, see also Kitchin et al., supra note 24 at 291 supra note 25.
31. Similar grounds are also being put forward in most of the decisions of the Turkish Supreme Court of Appeals some of which are also stated in the current commentary.
32. Turkish Supreme Court of Appeals for the 11th Civil Chamber Decision, Decision Date: March 03, 2011; Case no 2009/3437 and Decision no 2011/2191.
33. Turkish Supreme Court of Appeals for the 11th Civil Chamber Decision, Decision Date: November 29, 2017; Case no 2016/4921 and Decision no 2017/6698.
34. Turkish Supreme Court of Appeals for the 11th Civil Chamber Decision, Decision Date: June 06, 2011; Case no 2009/14249 and Decision no 2011/6841, for explanations regarding the stated case, see also, Çolak Uğur, Türk Marka Hukuku, 4th Ed., 2018, p. 990.
35. Turkish Supreme Court of Appeals for the 11th Civil Chamber Decision, Decision Date: April 27, 2012; Case no 2010/16505 and Decision no 2012/6950, for explanations regarding the stated case, see also, Çolak, Ibid, p. 988.
36. See. New England Duplicating Co. v. Mendes, 190 F.2d 415, 417-18 (1st Cir.1951) This ownership test is not for the purpose of establishing the “use in commerce”. The court in the Mendes case set forth a two-part test to determine whether a party has established “prior use” of a mark sufficient to establish ownership.
37. See Planetary Motion, Inc. v. Techplosion, Inc., 261 F.3d 1188, 1195-96 (11th Cir.2001) ("A party may establish 'use in commerce even in the absence of sales. . . [The existence of sales or lack thereof does not by itself determine whether a user of a mark has established ownership rights therein."])
38. See Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 434 (7th Cir. 1999).
39. Cornish and Llewelyn, supra note 23 at 731.
40. See “Bon Matin” TM [1989] R.P.C. 537, see also Kitchin et al., supra note 24 at 291 supra note 25.
41. Anne Gilson LaLonde & Jerome Gilson, Proving Ownership Online ... And Keeping It: The Internet’s Impact on Trademark Use and Coexistence, 104 The Trademark Reporter, 13.
42. See the definition of Social Media on Wikipedia: https://en.wikipedia.org/wiki/Social_media
43. Digital 2020, Global Digital Overview, supra note 7 at 102, 125, 151
44. Id. at 37, 81.
45. Even the animals may be added to the ones mentioned above as illustrative. For example, on Instagram, the Chinnybuddy account of a chinchilla animal named Mr.Bagel has 104k followers, which is believed to be a very serious number.
46. Geoffrey Zha, China: TRAB Accepts Promotion of Trademark on Social Media as Evidence of Use in Non-Use Cancellation Proceeding, Mondaq (2017).
47. See Lee Jason Kibler, dba DJ Logic v. Robert Bryson Hall, II, et al., Case No. 15-2516 (6th Cir., Dec. 13, 2016)
48. It can be observed in Lee Jason Kibler, dba DJ Logic v. Robert Bryson Hall, II, et al. case that in assessing the likelihood of confusion, the following eight “Frisch” factors are taken into account: 1) strength of the plaintiff’s mark, 2) relatedness of the products, 3) similarity of the marks, 4) evidence of actual confusion, 5) parties’ marketing channels, 6) likely degree of purchaser care, 7) defendant’s intent in selecting the mark, and 8) probability that the product lines will expand.