Turkish Patent and Trademark Office holds seminar on plain packaging and its impact on registered trademark rights

On 26 February 2020 the Turkish Patent and Trademark Office held a seminar titled the “Implementation and Global Status of Plain Packaging of Cigarettes and The Relationship Between the Implementation of Plain Packaging and Registered Trademark Rights” in Ankara. The speaker of the seminar was Önder Erol Ünsal, a trademark examiner at the Board of Re-examination and Re-evaluation and the founder and author of well-known IP blog IPR Gezgini.

Mr Ünsal’s speech began by discussing the reasoning behind plain packaging, before providing an explanation of the requirements and implementation of plain packaging regimes.

In a brief history of plain packaging, Mr Ünsal mentioned that the proposals to introduce plain packaging date back to the 1990s and the first country to impose plain packaging legislation was Australia in 2012, followed by France, the United Kingdom, New Zealand, Norway, Ireland, Thailand, Uruguay, Saudi Arabia, Slovania, Turkey, Israel, Canada and Singapore.

Mr Ünsal further specified that:

• the additions made to Articles 4(3) and (5) of the Law on Prevention and Control of Hazards of Tobacco Products 4207 form the legal basis for the implementation of plain packaging in Turkey; and
• the Regulation on Procedures and Principles Regarding the Supervision, Labelling and Type of Production of Tobacco Products published in the Official Gazette on 1 March 2019 forms the framework for the implementation of plain packaging.

He added that the compliance period expired on 5 January 2020. Since then, keeping products in the market that do not conform with the new regulation has been prohibited.

Mr Ünsal’s speech continued with a brief overview of the complaints raised against plain packaging worldwide, which mainly revolve around claims that tobacco producers are prohibited from using their registered trademarks as a result of the implementation of plain packaging, which is a breach of international trade agreements, including the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), compared to the main justification of public health under Article 8 of TRIPS, among others.

The brief overview of the worldwide implementation of plain packaging led to a discussion about the fate of trademark registrations that are no longer permissible for use under the Tobacco Plain Packaging Regulations. What would happen to these registrations after five years of lack of use? Would the lack of use of a trademark registration due to the Tobacco Plain Packaging Regulations be considered justification for non-use in case of a cancellation action filed against the registration on the basis of non-use? Similarly, would the lack of use of a trademark registration due to the Tobacco Plain Packaging Regulations be considered justification for non-use in case of a non-use defence in an opposition, invalidation or infringement action? Since there are no specific provisions defining circumstances that would be considered justification for non-use in the Industrial Property Law 6769 or the Regulation on the Implementation of the Industrial Property Law, the answers to these questions are not definite and would be at the discretion of Turkish Patent and Trademark Office examiners, the courts and court-appointed experts, and may be shaped by case law. Nevertheless, the commonly shared opinion at the seminar was that a change in regulation should be considered to be a justifiable reason for the lack of use of a trademark.

Another question raised during this discussion related to the registration of new applications including elements, use of which are prohibited by the Tobacco Plain Packaging Regulations. The question was whether such applications would be rejected on absolute grounds on account of Article 5(i) of the Industrial Property Law 6769, which prohibits the registration of “signs which are contrary to public policy or to accepted principles of morality”. The fact that the Tobacco Plain Packaging Regulations concern the use of trademarks at issue and no amendments have been made to the Industrial Property Law 6769 or the Regulation on the Implementation of the Industrial Property Law indicates that such fresh applications are expected to pass the examination on this ground. However, the practice of the Turkish Patent and Trademark Office within this framework is not yet definite.

As a whole, it was an efficient seminar that provided participants with an overview of the implementation and global status of plain packaging regimes and created an interactive environment for discussion of the fate of trademark registrations and new applications, which include elements that are not permitted for use under the Tobacco Plain Packaging Regulations.

Ultimately, our opinion is that tobacco companies will still be in a position to protect their trademarks, some of which are very well known and iconic, against illegal use by third parties even when use may not be on a product related to tobacco or cigarettes. When evaluating the justifiable reason for non-use, the balance of interests will have to be weighed. It may also be in favour of public interest to allow rights holders to fight against illegal third-party activities by being flexible in the courts’ evaluation of ‘justifiable reason’ and permitting IP owners to use their rights to prevent infringement or misuse by others. After all, it is a general principle that an IP right should provide its owner with an exclusive right to prevent others from misusing the mark, while not necessarily providing an explicit right to use the mark.