As of 10.01.2024, the authority to cancel trademarks, which was temporarily given to the courts by Article 26 of the Industrial Property Law No. 6769 ("IPL"), which entered into force on 10.01.2017, has been given to the Turkish Patent and Trademark Office ("TPTO"), whose founding purpose is to contribute to the effective protection and commercialization of industrial property rights by increasing industrial property awareness in all segments of society.
Article 26 of the IPL, which was regulated for the purpose of harmonization in line with the EU Directive and the EU Trademark Regulation,
in the event that the trademark has not been put to genuine use in Turkey for 5 years without a justifiable reason from the date of registration or its use has been suspended for 5 years, the trademark has become a generic name in the class of goods or services for which the trademark is registered as a result of the trademark's propriator actions or failure to take the necessary measures, the trademark misleads the public, especially in terms of the nature, quality or geographic origin of the goods or services for which the trademark is registered as a result of the use of the trademark owner or with the trademark owners’s consent, or the trademark is used in violation of the technical specifications of the guarantee or collective trademark, the interested persons will file trademark cancellation applications against the owner of the trademark to TPTO instead of the courts as of 10.01.2024. However, cancellation cases pending before the courts before 10.01.2024 will not be subject to the new provision that entered into force and will be concluded by the courts.
Details regulating the cancellation process, which is the focal point of the amendment, have been outlined in the Draft Regulation Amending the Regulation on the Implementation of the Industrial Property Law (“
Draft Regulation”), published by TPTO to gather the opinions of relevant individuals and non-governmental organizations. However, it has not entered into force.
With the enactment of the Draft Regulation, the process for cancellation applications will be clarified. The owner of the trademark will be notified of the cancellation application for which the cancelation is requested, and the trademark owner will submit his evidences and responses to the TPTO within one month. TPTO will give a decision on the cancellation application with respect to the file within the framework of claims and defenses as well as the presented evidences. However, it is still possible to file an action for cancellation against the final decisions of the TPTO before the Ankara Intellectual and Industrial Property Law Courts.
It is believed that the process will be facilitated and shortened by the transfer of the trademark cancellation decision made through the courts to the TPTO and that this will have strategic benefits. However, since it is foreseen that the trademarks of real owner of trademarks may be targeted more frequently, we will be able to see whether the amendment will bring advantages or disadvantages only after the Draft Regulation enters into force.
Ebrar Turan, Associate
Dicle Yıldırım, Trainee Lawyer