Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Employing a trademark as a domain name is not genuine use

Sponsored by

Web link background. Search window in browser

The first instance Civil Court for Intellectual and Industrial Rights (IP court) in its decision rendered in October 2020 pointed out that the use of the subject mark as a domain name solely is not deemed sufficient to prove the use of the mark as a trademark.

The decision concerns a revocation action due to non-use filed against a trademark which has been registered for more than five years, but has not been used properly and effectively on the relevant services within the scope of its registration in Turkey by the trademark owner.

In revocation actions based on non-use, the defendant carries the burden of proof, and the IP courts generally obtain expert reports from court-appointed experts for examination of the evidence and commercial books of the defendants.

In the relevant case file, the defendant party submitted evidence regarding the records of the domain name including the subject trademark and the content of the website operated under this domain name, in which the subject trademark has not been used as it is registered, but used in a very different form from its registration.

The file was examined by the court-appointed experts, and they concluded that there is no evidence proving the use of the trademark as it is registered on the relevant services in the commercial records of the defendant and also on their website. However, in view of the existence of the domain name consisting of the subject trademark which has been in use for five years, it is sufficient to prove the use of the trademark. However, the IP court, disregarding the determinations in the expert report, highlighted the importance of the requirement of use of the trademark on the goods and services within the scope of its registration for commercial purposes, found the existence of the domain name alone insufficient and decided to revoke the subject trademark due to non-use.

In the recent decisions of the Court of Appeals, it is also clear that use of a trademark as a domain name solely is not accepted as sufficient to prove the genuine and serious use of a trademark, if there is no other commercial use of the trademark on the goods and services within the scope of its registration under this domain name.

In this respect, this decision along with the recent decisions of the Court of Appeals sets a precedent for future disputes and concludes that use of trademark as a domain name by itself is insufficient to prove genuine use.

more from across site and ros bottom lb

More from across our site

Bertha Ho, who helped the Hush Puppies owner with the sale of its IP rights in China and Hong Kong SAR, explains how to navigate complex transactions in the region
Online storytelling platform Humans of Bombay isn’t wrong for trying to protect its copyright, but it could have handled its dispute better
We have started accepting submissions from in-house counsel and teams for the 19th annual Managing IP Awards programme
Patient groups and generics makers may have to bear the brunt of India’s latest attempt at patent reform
Each week Managing IP speaks to a different IP lawyer about their life and career
Paolo Tavolato, who will share the role, said private equity support would help the IP consultancy achieve its ambitious M&A plans
Cyril Amarchand Mangaldas has hired former Anand & Anand partner Swati Sharma and hopes to compete with specialist IP firms
Rapporteur-Judge András Kupecz ruled that education and training weren’t legitimate reasons for a member of the public to access documents
Searches for comparison prior art will be a little easier, but practitioners will have to put more thought into claim construction and design patent titles
The Helsinki local division rejected AIM Sport’s request for a preliminary injunction in a dispute with rival Supponor