May 2019. To secure your right to a trademark, you’ve got to use it. If you don’t do so within five years, your right to it may be declared void. Trademark law does however allow owners who haven’t used their trademark for a ‘proper reason’ to hang on to their rights. As in the recent case of Breezer in Turkey.
Bacardi, owner of the fruit-based alcoholic drink Breezer, has owned a trademark registration to Breezer in Turkey since 2001, but has never used it there. Reason: Turkey’s strict laws banning the sale of cocktails containing distilled spirits.
Trademark revocation demanded
When Bacardi recently filed a trademark infringement action against a Turkish company which used its Freezer mark on Breezer lookalikes, the defendant company filed a counter action, demanding revocation of the Breezer trademark on the grounds that Bacardi had never used it in Turkey.
However, the Turkish Court rejected Freezer’s counterclaim, ruling that statutory restrictions such as those governing alcohol-based cocktails in Turkey were a proper reason for non-use. Since Bacardi had been legally prohibited from using its Breezer trademark, its rights to it should not be revoked under these circumstances. Bacardi’s infringement claims against Freezer were thus accepted and Freezer was ordered to stop selling its product.
Source: Mutlu Yıldırım Köse, Gun Partners
McDonald’s website in South Africa
McDonald’s in South Africa
That said, most arguments for non-use are rarely accepted by the courts. Claims such as ‘we hadn’t quite finished developing the product’ or ‘the market wasn’t ready for it yet’ aren’t seen as ‘proper reasons’.
A good example of a genuinely valid reason for non-use was one that emerged in South Africa years ago. During the apartheid era, US fast food company McDonald’s had been prevented from using its trademark in South Africa for many years due to a boycott. This was regarded by the courts as a proper reason for non-use and McDonald’s was able to retain the rights to its trademark in South Africa, despite not having used it for more than five years.