In Turkish industrial property law, while the protection of right holders is principal, the principles of legal certainty and stability require rights to be asserted within a reasonable period. The institution of loss of rights through acquiescence, regulated in Article 25, paragraph 6 of the Industrial Property Code No. 6769, restricts the claims of a prior right holder who has acquiesced in the use of a later registered trademark for a prolonged period.
In the event of an infringement of trademark rights, the trademark owner may request the determination, prevention, and cessation of the infringement, as well as pecuniary and non pecuniary damages. However, these rights are not absolute or unlimited. Pursuant to Article 25, paragraph 6 of the Industrial Property Code, if the prior trademark owner, knowing or having reason to know of the use of a later registered trademark, has acquiesced in such use for five consecutive years without a force majeure, they may no longer claim the invalidity of the later trademark or assert that it constitutes an infringement. This rule is grounded in the principle of good faith, the protection of legitimate expectations, and the prohibition of abuse of rights, as codified in Article 2 of the Turkish Civil Code. In terms of its legal nature, according to the Turkish Court of Cassation Assembly of Civil Chambers and the prevailing doctrine, this defense constitutes an objection (ex officio plea) and must be taken into consideration by the court ex officio. This defense may be asserted in invalidity actions based on relative grounds for refusal; conversely, it cannot be applied in invalidity actions based on absolute grounds for refusal where public interest prevails or in actions for the cessation of infringement. The sole exception to this rule is where the later trademark was registered in bad faith.
In the lawsuit filed before the İzmir Court of Intellectual and Industrial Property Rights, the plaintiff initiated legal proceedings claiming to be the registered owner of trademarks operating in the service and food sectors. The plaintiff argued that the defendant used identical or confusingly similar signs to their registered trademarks on physical business premises across materials such as signboards, menus, brochures, flyers, catalogues, packaging, wet wipes, and napkins, and also utilized this sign in a domain name, thereby creating unfair competition in the same sector. Accordingly, the plaintiff requested an on site inspection and an injunction at the defendant’s address, blocking access to the website, determination of infringement and unfair competition, removal or destruction of the infringing products, as well as the collection of pecuniary and non pecuniary damages. The defendant, in their response, argued that the claims were unfounded and requested the dismissal of the action.
In the initial proceedings, the İzmir Court of Intellectual and Industrial Property Rights, aligned with the expert report obtained, accepted the existence of infringement based on the similarity of the parties’ goods and services classes, the targeted consumer base, and the likelihood of confusion, thereby partially accepting the lawsuit and awarding non pecuniary damages. Upon the appeal on points of fact and law lodged by the parties’ counsel, the 11th Civil Chamber of the İzmir Regional Court of Justice (E. 2021/938, K. 2024/181) deemed the technical examination insufficient as it was conducted solely by a single trademark attorney expert. The Regional Court set aside the first instance judgment, ruling that an expert panel comprising trademark, software, accounting, and industry experts should prepare a comprehensive report, and that the loss of profit must be accurately calculated under Article 151 of the Industrial Property Code.
Following the remittal, the Court of First Instance (E. 2024/27, K. 2024/268) reexamined the merits of the dispute within the framework of Article 25/6 of the Industrial Property Code. As is well established, for loss of rights through acquiescence to materialize, the following conditions must coexist: the existence of the prior right holder’s right of action based on relative grounds for refusal, actual commercial use of the later trademark, actual or constructive knowledge of such use under the duty of care of a prudent merchant (Turkish Commercial Code Art. 18/2), continuous acquiescence for five years from the date of knowledge, and the absence of bad faith on the part of the later trademark owner. The Court identified that the defendant’s registered trademark No. 2013/75435 in Class 43 was applied for on September 9, 2013, that the defendant commenced commercial activities in 2011, and that the registration was under statutory protection. Concluding that the statutory five year period had lapsed as of the lawsuit filing date on September 4, 2019, that the plaintiff had acquiesced in this use, and that there was no concrete evidence of bad faith registration by the defendant, the Court dismissed the action.
The plaintiff’s counsel appealed against the dismissal judgment before the Regional Court of Justice. In the appeal petition, counsel asserted that there was no concrete evidence proving actual use of the registered trademark No. 2013/75435 by the defendant during the five year period retroactively from the lawsuit date, that website archive records indicated use only between 2017 and 2024, and therefore the five year acquiescence period had not expired. Furthermore, it was argued that the defendant applied for trademark registration despite knowing the plaintiff’s prior and superior rights, and used the trademark not as a whole as registered, but by highlighting its dominant element to bring it closer to the plaintiff’s marks, which constituted bad faith and a breach of the principle of good faith.
The 11th Civil Chamber of the İzmir Regional Court of Justice (E. 2025/164, K. 2025/1020), conducting its review under Article 355 of the Code of Civil Procedure, held that the new expert panel report obtained by the court was suitable for judicial scrutiny and for rendering a judgment. Concluding that the first instance court’s application of legal rules and characterization of the facts were accurate, that no action was taken against the defendant’s registered trademark No. 2013/75435 for five years resulting in acquiescence, and that bad faith was not proven, the Regional Court unanimously dismissed the plaintiff’s appeal on the merits pursuant to Article 353/1-b.1 of the Code of Civil Procedure.
Upon the plaintiff’s counsel filing an appeal on points of law, the file was brought before the 11th Civil Chamber of the Court of Cassation. Following its appellate review, the 11th Civil Chamber of the Court of Cassation (E. 2025/4429, K. 2026/1052) determined that the Regional Court of Justice’s decision complied with procedural rules and the law, and that there was no error in the evaluation of evidence by the Court of First Instance, thereby unanimously affirming the Regional Court’s decision on February 24, 2026, pursuant to Article 370/1 of the Code of Civil Procedure.
As is recognized, the principle of loss of rights through acquiescence, regulated in Article 25, paragraph 6 of the Industrial Property Code, provides legal protection to a later registered trademark owner by preventing the prior rights holder from objecting after long term tolerance of the later mark’s market presence and investment. The legislature has afforded the prior right holder a reasonable period of five years to assert their rights; a right holder who remains silent during this period is precluded from asserting infringement or invalidity against a subsequent registration presumed to be in good faith. Indeed, in judicial practice, merely serving a cease and desist letter is not deemed a sufficient act of opposition to interrupt the period; initiating formal legal proceedings within a reasonable timeframe is required.
One of the most critical issues debated in the case is the computation of the acquiescence period and the proof of trademark use. Although the plaintiff argued that the actual date of knowledge should be calculated from 2017 based on internet archive records, the judicial authorities accepted that the statutory period had lapsed by taking the official registration application date of 2013 under application No. 2013/75435 and the defendant’s commercial history as the baseline. This indicates that the application and registration of registered trademarks carry public notice against third parties, and that the five year period forms a statutory limitation period against subsequent registrations in good faith.
The claim of bad faith registration, which is the sole exception to the acquiescence rule, is subject to strict standards regarding the burden of proof. In legal doctrine, regarding the determination of bad faith, there exists an approach that considers mere knowledge of the prior right at the time of application sufficient ( Turkish Commercial Code Art. 3), as well as a second approach that requires additional elements such as a breach of good faith, intent to block competitors, unfair free riding on reputation, or stockpiling/extortion motives ( Turkish Commercial Code Art. 2). Under the second view adopted in our legal system, bad faith must generally exist at the precise moment of trademark application, and initial bad faith cannot subsequently convert into good faith over time. Nevertheless, under the flexible case by case approach of the Court of Cassation, even if bad faith existed at the time of registration, if the prior right holder remains silent for an exceptionally long period (such as 10 to 15 years), creating a legitimate expectation, and the later user invests substantial labor and capital, filing a lawsuit may be deemed an abuse of rights under Article 2 of the Turkish Commercial Code.
However, concerning the burden of proof in this specific case, it is mandatory for the party alleging bad faith to prove that the defendant acted in bad faith at the time of registration through concrete data and evidence. Abstract assertions that the prior mark ought to have been known do not suffice to establish a presumption of bad faith. Furthermore, on the procedural aspect of the case, as explicitly emphasized in the Regional Court’s initial order of reversal, conducting technical evaluations through interdisciplinary expert panels, including industry, accounting, and software experts rather than relying on a single expert opinion, is indispensable for the integrity of judgments regarding trademark infringement and lost profit calculations under Article 151 of the Industrial Property Code. The Court of Cassation 11th Civil Chamber’s judgment of affirmation re emphasizes the principle of legal certainty, where the freedom to seek legal remedies in industrial property disputes is restricted by reasonable time limits.
