Until the Industrial Property Law No. 6769 (“IPL”) entered into force on January 10, 2017, procedures regarding trademark rights were carried out with the abolished Decree-Law No. 556 on the Protection of Trademarks (“Decree Law”). The concept of "revocation", one of the cases of termination of a trademark right, regulated in both legislations, was defined under Article 14 of the Decree-Law. However, Article 14 was cancelled by the Constitutional Court with the decision 2016/148 (Merit Number), 2016/189 (Decision Number) on 14.12.2016 and upon the cancellation of this article, there was a legal gap of a few days in this matter until the IPL came into force. Article 26 of the IPL regulates the revocation conditions of trademarks and the revocation request. According to the article, the trademark may be revoked if:
- within a period of 5 years as of the date of registration, the trademark has not been put to genuine use in Turkey by the trademark owner in connection with the goods or services covered, or if such use has been suspended during an uninterrupted period of 5 years unless there are proper reasons for non-use,
- the trademark becomes generic for the registered goods or services due to the trademark owner’s actions or as a consequence if necessary measures not taken by the trademark owner,
- the trademark misleads the public concerning the nature, quality or geographic origin of the goods or services for which it is registered, in result of use by the trademark owner himself or with the trademark owner’s consent.
- a guarantee mark or a collective trademark is used contrary to the technical specifications.
In case of existence of one of the revocation reasons, the interested persons can request revocation of the trademark from the Turkish Patent and Trademark Office (“ the Office”). However, this authority given to the Office has been postponed for seven years with Article 192/1(a) of the IPL. Within this period, the authority of revocation has been given to the courts with Provisional Article 4 – likewise in the period when the Decree Law was in effect. This regulation is in parallel with the regulation in the European Union (“EU”) (EU Directive No 2015/2436), which can be described as the referring legislation of the IPL.
Since less than one year remained to the effective date of Article 26 of the IPL, the Office accelerated its efforts to execute this authority. In this process, revocation requests and review processes will be heard before the Turkish Office as an administrative office similar to EU legislation and EU practices.. For example, in Italy in quite a recent date, on December 29, 2022, the Italian Patent and Trademark Office became authorized for the revocation of trademarks after seven years of preparation and suspension period.
According to EU legislation, the authority to revoke trademarks has been given not only to IP offices but also to courts, and joint authorization has been regulated. On the other hand, when the wording of Article 26 of the IPL is reviewed, it is seen that the revocation authority is only given to the Office. This situation brings along the question of whether the revocation of trademarks can be claimed directly before the courts or not.
Following this, the question of whether it will be possible to have similar proceedings before the Office as in the courts, such as conducting on-site examination and discovery, and expert appointments from the relevant sector, etc. arises. As it is known, invoices and sales figures are the most valued evidence in the examination of revocation requests, and commercial books are examined in order to confirm the accuracy of this evidence by the courts. However, due to the amount of this evidence and also since it is not possible to submit the originals of commercial books to the court file, the courts frequently resort to discovery and on-site examination procedures, and in order to implement this procedure, they appoint experts both from the relevant sector and finance related experts for the examination of financial data. It is still unclear whether the Office will navigate these waters.
In connection with this, if the examination of use evidence submitted by the trademark owner will be made by the examiners of the Office, without the appointment of an expert, the competence of the examiners in the evaluation of the evidence related to the relevant sector, especially the financial data, should also be revealed.
Finally, the issue that needs to be clarified is; considering that Article 14 of the Decree-Law has been annulled due to the conclusion that a trademark right, considered as a property right, cannot be revoked with a Decree Law, will the revocation of a trademark with an administrative act of the Office be considered as a violation of a property right?
The questions on this new procedure are not limited to the above-referred ones; however, we believe that they will all be clarified within this one remaining year, particularly since they are all known by the Office. All these questions aside, we believe that the procedure for the revocation of trademarks to be carried out by the Office will be of great importance, especially in terms of time and cost-effectiveness. Considering that the finalization of a lawsuit brought before the courts takes at least 2-4 years, it is clear that the revocation request before the Office will be concluded in a much shorter time and will significantly cost less. Indeed, considering the exchange of petitions and the number of hearings, the fees and expenses incurred, as well as the workload of the courts, concluding the claim before the Office will be cost and time effective.
On the other hand, since the cancellation of the Office’s final decisions can be requested before the Ankara Civil IP Courts, the Office’s final decisions on revocation requests may be brought before the courts anyway. Thus, it is possible to extend the finalization period of one case. In this context, as the review of expediency against the Office's decisions can only be carried out by Ankara Civil IP Courts, their workload will increase. It is out of a discussion that Ankara Civil IP Courts will specialize especially in the field of revocation of trademarks, and it is possible to say that it will set a great number of precedents. Thus, there will be a consistency between the precedents and can lead the Office in the examination of the requests for the revocation of the trademarks.
When all these are evaluated together, it can be suggested strategically that the revocation requests of the trademarks, planned to be filed before the courts this year, can be requested before the Office by waiting until January 10, 2024.