Yes, after the appeal decision, any of the parties can take revocation action against the decision before Ankara IP Court within 2 months from the notification of the appeal decision. All the arguments and evidences are limited to what have been submitted during the opposition and appeal proceedings before Turkish Patent and Trademark Office.
The trademark rights can be cancelled (revoked) on the basis of one of the followings:
5-years use requirement is not absolute. If the trademark is used after the expiration of 5 years but no later than the date of cancellation request, non-use action is not accepted.
In other words, if a trademark has been put into use after the date of expiration of 5 year use period but before the date of non-use cancellation action, the trademark is deemed to have been used and cancellation action is refused. However, if a trademark is put into use within 3 months before the date of cancellation action with the considerations that a cancellation request would be filed, such use is not taken into account.
The evidences should indicate the place, time, extent and nature of use of the opposing trademark for the goods and services in respect of which it is registered and on which the opposition is based. For instance, evidence may be any supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements.
Turkish Patent and Trademark Office is authorized to handle and process the cancellation actions. However, pursuant to Turkish Industrial Property Code (issued on 10 January 2017), the cancellation actions will be handled by the Turkish IP Courts during the 7 years from the issuance of the Code, i.e. till 10 January 2024. Therefore, the cancellation actions will and should be filed with the Turkish IP Courts till 10 January 2024.
Invalidation actions can be taken before the Turkish IP Courts any time based on any conditions mentioned under the relative and absolute grounds.
There is no specific time limit. However, in the cases of invalidation actions based on the identicalness or confusingly similarity, if the holder of an earlier right acquiesces in the use of a later Turkish trade mark for a period of five successive years, he or she will no longer have the right to file an application for invalidity, unless the later trademark is registered in bad faith.
When an invalidation action is filed against a registered trademark based on identicalness or confusingly similarity of an earlier trademark registration (s), the defendant can ask the claimant to prove the use of the trademark registration (s) within 5 years before the filing date of the invalidation action. Furthermore, the claimant should prove that he or she has genuinely used his/her trademark(s) indicated as ground for invalidation (provided that 5 years passed over from it/their registration(s)) within 5 years before the filing date or priority date – if priority is claimed – of the trademark registration subject to the invalidation action.
If any cancellation action or invalidation action is filed against a trademark registration, the Court notifies the trademark holder of the cancellation or invalidation action directly without notifying the trademark agent in the trademark registry.
In case that the trademark holder is non-resident in Turkey, the notice of court action (with all the translations of the court petition) is served through Turkish Ministry of Justice on the trademark holder by the diplomatic means, and the 2-weeks time limit to submit instrument for representation and file response to the claims starts as from the receipt of the notice of court action.
The time limit to submit counter arguments can be extended at the discretion of the Judge provided that the request for extension is submitted with the 2-weeks due date from the receipt of notice of court action.
The difference is that cancellation applies as from the date of the request, whereas a declaration of invalidation removes the registration from Turkish trademark registry with retroactive effect, namely from the very beginning.
Yes, the losing party bears the court expenses, expert fees (if any) as well as the attorney fees. The attorney fees are limited to the standard representation fees announced by the Bar.
The Lawyers can only get involved in the cancellation or invalidation proceedings before the Courts. The trademark agents who do not hold law degree are not allowed to represent the clients before the Courts.
The trademark agents, who do not hold law degree, will be allowed to represent the clients in the cancellation proceedings to be held before Turkish Patent and Trademark Office after 10 January 2024.
It is hard to estimate the time. In general, it takes approx. 18-24 months at the first instance.
Do you have further questions about cancellation and invalidation actions for trademarks in Turkey? Please contact us. We will answer your questions as soon as possible.