It’s Time for Administrative Revocation of Trademarks!

Before the Industrial Property Law (“IP Code”) no. 6769 entered into force on January 10, 2017, procedures related to trademark rights were governed by the former Decree Law no. 556 on the Protection of Trademarks (“Decree Law”). While revocation of trademarks is dealt with by both pieces of legislation, the introduction of the IPL brings a major change to Turkish Trademark Law, stating that requests for revocation of trademarks must be filed with the Turkish Patent and Trademark Office (“the Office”).

In accordance with Article 26 of the IP Code, interested persons may request the Office to revoke a trademark pursuant to paragraph 2 of Article 26 and the decision for revocation of a trademark can be taken in light of the following conditions:

  • Failure to put the trademark into genuine use in Türkiye without a justified reason as of 5 years from the date of its registration or suspension of its use for an uninterrupted period of 5 years.
  • The trademark has become a generic name for the goods and/or services for which it is registered.
  • The public is misled as a result of the use of the trademark, particularly concerning the nature, quality or geographical origin of the goods or services for which it is registered.
  • Use of the guarantee trademark or collective trademark in a manner which is contrary to their technical specifications.

However, this authority granted to the Office had been postponed for 7 years, until January 10, 2024, from the date of publication of the Law pursuant to Article 192/1(a) of the IP Code. Until this date, the authority for revocation was delegated to the Civil Courts for Intellectual and Industrial Property Rights (“IP Courts”) - as was the case when the Decree Law was in force - by Provisional Article 4 of the IP Code. This regulation is in line with European Union  legislation (“EU Directive 2015/2436”), which can be considered reference legislation for the IP Code.

The Office, by coming to the end of this 7-year period of preparation, has accelerated its efforts to take on this authority. In this scope, on October 20, 2023, the Office published a Draft Regulation for Amendment of the Regulation on the Implementation of the Industrial Property Law[1] (“Draft Regulation”) for comments. Provisions concerning requests for revocation in the Draft Regulation are regulated under Section III, under the revised heading titled “Objection, Proof of Use, Revocation and Reconciliation” (previously titled “Objection, Proof of Use and Reconciliation”) and by Article 30(A) titled “Request for Revocation” which stipulates that the request for revocation may be filed by interested persons against the persons registered before the Office as the trademark proprietors or their legal successors, and the request may be filed by means of the form prescribed by the Office by clearly indicating the trademark or goods and services for which revocation is requested. In addition, as is the case for requests of opposition to publication of trademarks, the provision rules that no power of attorney is sought if the requests of revocation are filed by an agent, and if a submission of application to request a trademark revocation is not in accordance with the required procedure, the Office will not send a letter of notification for remedy of shortcomings, but instead shall not take the application into consideration for processing.

There are a number of points that are considered lacking in the Draft Regulation. For example, although the revocation procedure is not a court proceeding, it is necessary to shed light on whether significant pleas such as pendency, definitive judgement etc. can be asserted, and whether the courts’ established procedures such as expert examination, discovery (on-site examination), merging of related files etc., will be adopted. Although not explicitly stated in the Draft Regulation, we received unofficial information that the Office is preparing to establish a separate department responsible for the examination of revocation requests. In this regard, it is considered a deficiency of the Draft Regulation to not specify which department within the Office shall undertake the examination of revocation requests.

Furthermore, the Draft Regulation states that the final revocation decision of the Office will be recorded in the registry and published in the bulletin. It is understood from the relevant provision that the Office will directly execute its final decision; but this has its pros and cons. Although it would be an advantage to prevent a the proprietor of a trademark (which should actually be revoked) from delaying the execution of the Office decision for several years by filing a court action against the decision of revocation, if the court decides that a trademark revoked upon the Office’s decision should not have been revoked, then the trademark proprietor may unfairly lose the protection of the trademark until this court decision becomes final and enforceable, which may take 3 or more years.

Nevertheless, it should be noted that we expect the administrative revocation to be cost and time effective compared to revocation actions before courts. Indeed, considering that the finalization of a court action may take 3 years or more, where an opposition procedure before the Office is finalized in a period of 4-12 months, it could be said that, by comparison, revocation requests before the Office would be finalized in a similar period. There are several reasons for this, among which are the facilitated notification procedure granted to the Office by Articles 160/6 and 160/7 of the IP Code and the absence of many fees and expenses in the administrative procedures, to name a few.

However, since cancellation actions can be filed against the final decisions of the Office before the Ankara IP Courts, it should be noted that although the execution of the Office’s decision cannot be postponed, it may still be subject to a litigation process. In addition, we predict that Ankara IP Courts, having the mandatory jurisdiction in terms of the cancelation actions against the Office’s decisions, will see a gradual increase in their workload. But this increase will also result in the specialization of Ankara IP Courts in trademark revocation matters.

Similarly, we assume that the Office’s workload will also become quite heavy with respect to the trademark revocation matters. Indeed, applicants can strategically request revocation of the trademark as a counterattack to the oppositions filed against them. Applicants can also strategically request the revocation of the trademarks that constitute obstacles in terms of Article 5/1(ç)[2] of the IP Code. On the other hand, we would like to note that trademark squatters or infringers may target trademarks of the genuine trademark owners by abusing the administrative revocation system.

In light of all such considerations; although we anticipate that the procedures for administrative revocation of trademarks will be much more practical in terms of time and cost in comparison to litigation processes, and foresee an increase in such cases for this reason, we recommend that trademark proprietors ensure that their trademarks are mentioned on invoices, products, catalogues, etc., and archive these together with any other available evidence such as advertisements, magazine or newspaper articles, etc., in order to avoid problems which may arise in the future in cases of proof of use in concern with revocation requests.

[1] This Draft Regulation has not yet been published as of 10.01.2024, the date on which Article 26 of the IP Code entered into force. However, a “Pre-Application Request for Trademark Revocation” tab was added to the Electronic Application System (EPATS) under Third Party Transactions on 10.01.2024. Revocation requests are being filed under this section of the online system as of 10.01.2024.
[2] Signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type.

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