Administrative revocation will be possible before the Office as of 10 January 2024.
According to Article 9 of the Industrial Property Law No. 6769 (“IPL”), if a trademark is not used in five years as of its registration date or its use is suspended for a consecutive period of five years; it will be vulnerable to revocation due to non-use.
Revocation of trademarks based on non-use were traditionally filed as a court action before the specialized IP courts under the previous trademark Decree Law No. 556. For the first time under Turkish laws, the IP law enacted in 2017 introduced an administrative revocation procedure thorough an application before the Turkish Patent and Trademark Office. However, to ensure a smooth transition, the implementation of the administrative revocation provision was delayed until January 10, 2024.
Administrative revocation system shall start a new era in Turkish trademark law practice. While it will take some time to experience the consequences of the new system, it is predicted that,
- The proceedings before the Office shall be much more simple and less costly compared to court actions.
- Filing administrative revocation applications may be used as a counterattack in opposition proceedings (in lieu or in addition to of non-defence strategy), due to its procedural advantages.
- Third parties searching for new brands will probably be more leaning towards filing non-use revocation applications before the Office for trademarks eligible to such applications.
- Administrative revocation application may be preferred to overcome the provisional refusal by the applicants when a trademark application is ex-officio rejected by the Office by relying on a senior trademark which is vulnerable revocation due to non-use.
- Trademark squatters or infringers may target trademarks of the genuine trademark owners by abusing the administrative revocation system.
For further information you may read our articles here The Revocation Procedure of Trademarks to be Handled by the Turkish Patent and Trademark Office and PTO Prepares for Administrative Revocation of Trademarks
If you have any queries please do not hesitate to contact gun@gun.av.tr or liaise directly with your usual contacts.