Question 1

Is it possible to file revocation action against the decisions of Turkish Patent and Trademark Office?

Accepted Answer

Yes, after the appeal decision, any of the parties can take revocation action against the decision before the Ankara IP Court within 2 months from the notification of the appeal decision. All the arguments and evidence are limited to what have been submitted during the opposition and appeal proceedings before the Turkish Patent and Trademark Office.

Question 2

On what reasons can the trademark rights be canceled (revoked)?

Accepted Answer

The trademark rights can be canceled (revoked) on the basis of one of the followings:

- In the absence of genuine use within 5 years following the registration of trademark rights or the genuine use has been interrupted for over 5 years.
- If the trademark has become the common name for a product or service for which it is registered due to the acts of the trademark holder and the holder has not taken sufficient measures to prevent that.
- If the trademark has become misleading the public concerning the nature, quality or geographic origin of the goods or services for which it is registered, due to the use by the trademark holder or with the trademark proprietor’s consent.

Question 3

Are there any specific conditions regarding the non-use cancellation actions?

Accepted Answer

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.

Question 4

What kind of evidences can be submitted to prove the use of a trademark if non-use cancellation action is taken against?

Accepted Answer

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.

Question 5

Which authority is responsible for handling the cancellation actions?

Accepted Answer

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.

Question 6

On what reasons is the invalidation actions handled?

Accepted Answer

Invalidation actions can be taken before the Turkish IP Courts any time based on any conditions mentioned under the relative and absolute grounds.

Question 7

Is there any specific time limit to file invalidation action?

Accepted Answer

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.

Question 8

Are there any specific instances in respect of the invalidation actions?

Accepted Answer

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.

Question 9

How can I learn if there has been taken any cancellation or invalidation action against my trademark?

Accepted Answer

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.

Question 10

What is the difference between cancellation and invalidation in terms of their ensuing effects?

Accepted Answer

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.

Question 11

Is the losing party required to pay the expenses during a cancellation or invalidation action?

Accepted Answer

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.

Question 12

Can the trademark agents be involved in the cancellation or invalidation proceedings before the Court?

Accepted Answer

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.

Question 13

How long do the cancellation or invalidation proceedings take?

Accepted Answer

It is hard to estimate the time. In general, it takes approx. 18-24 months at the first instance.

FAQs on Trademark Cancellation Actions in Turkey