Trademark Invalidation Actions in Türkiye: Court Procedure, Grounds and Legal Effects

Overview

Trademark invalidation actions in Türkiye are judicial proceedings brought before specialized IP courts to challenge the validity of a registered trademark from the outset.

They are governed by:

• Article 25
• Article 27

For the full legislative text, see: Industrial Property Code (English full text)

If successful, the trademark is deemed never to have existed.

Who Can File an Invalidation Action?

An invalidation action may be filed by:

• Any interested party
• Public prosecutors
• Relevant public institutions and organisations

There is no requirement to be a direct competitor. A legitimate interest is sufficient.

Against Whom Is the Action Filed?

The action must be filed against:

• The person recorded as the trademark owner in the registry at the filing date, or
• Their legal successors

The Turkish Patent and Trademark Office (TÜRKPATENT) is not a party to invalidation proceedings.

Legal Grounds for Invalidation

A trademark may be invalidated if it was registered in breach of:

• Absolute grounds under Article 5
• Relative grounds under Article 6

Absolute Grounds

These relate to the inherent characteristics of the mark, such as:

• Lack of distinctiveness
• Descriptiveness
• Deceptiveness
• Conflict with public order or morality

Relative Grounds

These relate to conflicts with earlier rights, including:

• Likelihood of confusion with earlier trademarks
• Bad faith filings
• Conflict with prior rights (trade names, personal names, IP rights)

Acquired Distinctiveness as a Defence

Even if a trademark was originally non-distinctive, it may still be protected if:

• It has acquired distinctive character through use, and
• This occurred before the invalidation action was filed

In such cases, invalidation based on lack of distinctiveness may not succeed.

Partial Invalidation

Invalidation may apply only to certain goods or services.

• The court may issue a partial invalidation decision
• However, the trademark itself cannot be altered

Acquiescence Rule

Under Article 25(6) :

• If the owner of an earlier trademark knowingly tolerates the use of a later trademark for 5 consecutive years,
• They lose the right to seek invalidation

Exception:

• This rule does not apply in cases of bad faith

Non-Use Defence in Invalidation Actions

In actions based on relative grounds, the defendant may raise a non-use defence.

Under Article 19(2) :

• The claimant may be required to prove genuine use of their earlier trademark in Türkiye
• The relevant period is the 5 years prior to:
  • Filing date, or
  • Priority date of the contested trademark

If use is not proven:

• The invalidation claim is rejected

If use is proven only partially:

• The case proceeds only for those goods/services

Legal Effect of Invalidation Decisions

Under Article 27 :

• Invalidation decisions have retroactive effect
• The trademark is deemed never to have existed

This is a key distinction from cancellation actions.

Effect on Past Transactions

Retroactive effect does not impact:

• Final and enforced court decisions issued before invalidation
• Contracts concluded and performed before the decision

However:

• Restitution claims may still arise in certain cases
• Exceptions may not apply in cases of bad faith or gross negligence

Erga Omnes Effect and Publication

Invalidation decisions have erga omnes effect, meaning:

• They are binding on everyone, not just the parties

Once final:

• The court transmits the decision to TÜRKPATENT
• The trademark is removed from the register
• The decision is published in the Official Trademark Bulletin

Invalidation vs Cancellation

Conclusion

Trademark invalidation actions in Türkiye provide a judicial mechanism to eliminate trademarks that should not have been registered. The system combines substantive legal review with procedural safeguards such as acquiescence and non-use defence.

Given the retroactive effect and broad legal consequences, invalidation remains a powerful tool in trademark disputes.