The main local legislation regulating the protection of trademarks in the Republic of Turkey, the Industrial Property Law With No. 6769 (“IPL”), was published on the Turkish Official Gazette on 10 January 2017. While most of the provisions of the IPL came into force on the date of the publication, the Article 26 of the IPL, titled Revocation Conditions and Revocation Request, was regulated to come into force after 7 years, meaning that on 10 January 2024, the procedure for revocation of registered trademarks will change.
Currently, pursuant to the Provisional Article 4 of the IPL, the Intellectual Property Courts have the authority to revoke the registered trademarks and after a revocation decision of a trademark, the courts send the decision to Turkish Patent and Trademark Office (“Office”) for the trademarks to be revoked.
While the current conditions and details of this procedure will not change drastically, the authority will shift from the Intellectual Property Courts to the Office, which may have an impact for revocation to be easier, faster, and cheaper than the current procedure. Pursuant to the related preamble, this was regulated to be in line with the EU Directive 2015/2436 and EU Trade Mark Regulation 2015/2424.
– What will be the conditions for the revocation of a registered trademark?
Upon request, the Office will have the authority to revoke a trademark that meets the following conditions:
- If the trademark has not been used by the trademark owner genuinely within 5 years from its registration date in the country for the goods or services for which it has been registered, without any justifiable reason or its use has been interrupted for 5 years.
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- In the event that the trademark has been used genuinely between the expiry of the 5-year period and the date the revocation request is submitted to the Office, the Office will reject the request. However, if such use was only made to prevent a revocation request, the use within 3 months before the request is submitted to the Office will not be considered.
- If the trademark becomes the 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.
- If, as a result of the use of the trademark by the trademark owner or with the permission of the trademark owner, the trademark becomes misleading for the public especially as to the nature, quality or geographical origin of the goods or services for which it is registered.
- Use of the trademark contrary to the technical specification for the guarantee mark or collective mark (pursuant to the Article 32 of IPL).
– What will happen only part of the goods or services meet these conditions?
If these conditions would be valid for only part of the goods or services for which the trademark is registered, the Office will decide to revoke the trademark partially, only for relevant goods or services. Further, the Office will not be able to revoke a trademark in a way that will change the trademark sample (the image of the registered trademark).
– Who will be able to request the revocation?
Article 26 regulates that “related persons” will be able to request the revocation of the trademark from the Office; however, neither the IPL explicitly define, nor the preamble explains the term “related persons”. This can be interpreted as that a related person can be anyone that has a legal interest in the revocation of a registered trademark, depending on each condition mentioned above.
Related persons will claim their trademark revocation requests against the persons registered as the trademark owner in the Office’s registry at the date of the request (or their legal successors).
In the event that the right holder changes during the Office’s evaluation of the revocation request, the proceedings will continue against the person registered as the right holder in the registry.
– What will be the procedure after a revocation request?
The revocation requests will be notified to the trademark owner and the trademark owner will have the right to submit evidence and responses against the request within 1 month.
If requested, the Office will provide extension to the trademark owner up to 1 month. The Office will also have the authority to request additional information and documentation, where it deems necessary.
The Office will make its decision based on the submitted information and documentation.
In the event that the Office decides to revoke a trademark, the decision will be effective as of the date the revocation request is submitted to the Office. However, upon request and if the conditions of revocation arose in a prior date, the Office will have the authority to decide the decision to be effective as of such date. In such case, the followings will not be affected:
- Decisions of the lawsuits for infringement of the rights provided by the trademark finalized and implemented prior to the revocation decision; and
- Agreements established and executed prior to the revocation decision.
After the finalization of the revocation decision, the trademark will be deleted from the Office’s registry, and this will be published on the Official Trademark Bulletin.
– How much does a request for revocation cost?
The cost for submitting a revocation request is not determined yet.
– Is representation obligatory in order to file a request for revocation?
There is no explicit regulation regarding representation for revocation requests. Principally, while representation is not obligatory for Turkish residents; those who are domiciled outside the borders of Republic of Turkey can only be represented by trademark attorneys who are authorized to act before the Office.
Authors: Hatice Ekici Taga, Sumeyye Ucar
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