05.12.2023

Legislative Amendment

In accordance with Article 26 of the Industrial Property Law No. 6769 ("Law"), it has been determined that requests for cancellation of trademarks will be made to the Turkish Patent and Trademark Office ("Office") and cancellation decisions will be given by the Office. However, by the article 192/1-(a) of the Law, the enforcement of this article has been postponed for 7 years, which is to 10.01.2024, and the authority to cancel trademarks in the period until the effective date was given to the courts (Intellectual and Industrial Property Rights Courts and, where they do not exist, Civil Courts of First Instance). This means that in the next period of approximately 1 month, the relevant person who wants to request the cancellation of a registered trademark will direct this request to the Office, not to the courts, and the cancellation process will be carried out in accordance with the procedures and conditions determined by the Office. In accordance with Article 26 of the Law, the Office may decide on the cancellation of trademarks that meet the following conditions in terms of cancellability:

• A trademark that has not been seriously used in Turkey by the trademark owner in terms of the goods or services for which it is registered, or whose use has been suspended for five years uninterruptedly without a justified reason, within five years from the date of registration,
• A trademark that has become a common name for the goods or services for which it is registered as a result of the trademark owner's actions or failure to take the necessary measures,
• As a result of the use made by the trademark owner or with the permission of the trademark owner, the trademark misleads the public, especially about the nature, quality or geographical source of the goods or services for which it is registered,
• A trademark that used contrary to the guarantee trademark or collective trademarks’ technical specifications.

What Do the Changes Bring?

Requests for cancellation of trademarks on and after 10.01.2024, when Article 26 of the Law will come into force, will be examined and decided by the Office under the procedures and conditions determined by the regulation designed by the Office. It is expected that these issues such as form requirements regarding the request, transaction fees, conditions for the trademark owner to respond and submit evidence, objection rights, etc. will be regulated separately in the regulation. As of 20.10.2023, the Authority has already published the "Draft Regulation on Amendments to the Regulation on the Implementation of the Industrial Property Law" and opened it to the opinion of intellectual property practitioners. Although there is no change published in the official gazette yet, some evaluations can be made based on the published draft.

For example; In the draft text, it is regulated that the effective date of the cancellation decision must be clearly stated in the cancellation request before the Office and the requester must have a legitimate interest in this. During the litigation process carried out before the courts for the cancellation of trademarks, the date when the conditions for cancellation of the trademark were met was generally determined based on expert committees, and decisions regarding the retroactive cancellation request were made accordingly. The most common example of this was in cases regarding "cancellation of the trademark due to non-use". In this case, in terms of practice, it is a matter of curiosity whether the Office will stick to the date clearly stated by the requester in cancellation requests made before the Office, or whether it will be possible to determine an ex officio date as a result of the examinations of experts.

Again, it is expected that the expert infrastructure of the Office will be prepared in terms of examination processes. As a matter of fact, before the courts, expert committees could have a sectoral examination based on the goods and services for which the trademark was registered, and it was even possible to overturn the decisions if an expert from the relevant sector was not included in the expert committees. In this regard, the evidence to be submitted to the Office by the trademark owner must be able to be examined and understood by experts according to the sector in which the relevant goods and services are located, and the experts must have the relevant knowledge and experience.

The cancellation of a registered trademark can have serious commercial consequences for brand owners and directly affect production and sales activities. For this reason, it is expected that the cancellation decision to be made by the Office for a registered trademark will be based on concrete evidence and justifications. Otherwise, instead of the advantages such as speed and cost savings expected from the Office's cancellation power, lawsuits to cancel the Office’s cancellation decisions will come to the fore.

What Will Be the Status of Current Claims and Cases?

In the process so far, requests for the cancellation of trademarks, with reference to Provisional Article 4/1 of the Law, have been made to the Intellectual and Industrial Property Rights Courts (or, where not available, to the Civil Courts of First Instance), and the cancellation decisions have been examined and decided by the courts. These courts will also be applied for cancellation requests submitted until 10.01.2024, and previously filed and still pending cases regarding the cancellation of the trademark will continue to be processed before the courts. As of 10.01.2024, cancellation requests of trademarks within the scope of Article 26 of the Law will be made to the Office and will be decided by the Office. Since the examinations to be carried out by the Office will be faster and narrower in scope than the courts, trademark owners or claimants will need to prove their arguments with concrete, clearly understandable and non-disputable evidence. Therefore, the parties will definitely need to get support from lawyers or trademark attorneys on this issue.