NEWSLETTER-2019-metin

261 INTELLECTUAL PROPERTY LAW and the trademark of the applicant shall be registered in the class of unused goods or services. It should be emphasized that the previous proprietor’s trademark must have been registered for five years in order that the applicant may submit the Counterclaim of Genuine Use. Counterclaim of Genuine Use in Trademark Infringements Art. 29 of the IP Law lists the acts of trademark rights infringe- ments. Within this scope the proprietor is entitled to demand the pre- vention of such infringements and compensation for the damages it suffered, etc. However, in such cases, the defendant may submit the Counterclaim of Genuine Use. Within this context, the proprietor can- not obtain the rights arising from the registration unless it proves that it has genuinely used its trademark within the five years prior to the date of the case. Counterclaim of Genuine Use in Invalidation Case Pursuant to Art. 25 of the IP Law, taking into consideration the reasons for absolute or relative rejections, the registered trademarks may be declared invalid in a manner that is retroactively effective. Upon the invalidity decision, the registration of the trademark is can- celled, and the protection provided by the IP Law to the trademark is deemed to have never arisen. In such cases, the defendant may claim the Counterclaim of Genuine Use, as well. In this case, the plaintiff is obliged to prove that it has genuinely used its trademark in the previ- ous five years prior to the date of the case. Grounds for Revocation The fact that the trademark is not genuinely used for a period of five years as described above, may cause the trademark to be revo- cated in a prospective manner. It is also possible to partly revocate the trademark in line with the proven goods and service classes; however, the revocation decision cannot be made in such a manner so as to alter the distinctive character of the mark in the form in which it was registered.