News & Insights
In-depth Analysis of Expected Changes in the Trademark Cancellation Process
Mine Peynircioğlu | ASSOCIATE29.11.2023
Law No. 6769 on Industrial Property (“IP Law”) was published in the Official Gazette on January 10, 2017, and the majority of its provisions came into effect on the same date. However, Article 26 of the IP Law, titled "Cancellation Cases and Cancellation Request," was scheduled to come into effect seven years after the publication of the law. This means that decisions regarding the cancellation of registered trademarks will be made by the Turkish Patent and Trademark Office (“TPTO”) starting from January 10, 2024. Turkish Patent and Trademark Office released a draft regulation on October 20, 2023, regarding the implementation of the cancellation system. The public consultation period for this draft has ended. The aim of this regulation is to align with EU Directive No. 2015/2436 of the European Parliament and EU Regulation No. 2015/2424 of the European Parliament. The amendment is expected to make the trademark cancellation process easier, faster, and more cost-effective.
Law No. 6769 provides that the Turkish Patent and Trademark Office may decide to cancel a trademark in the following cases:
• If, within five years from the registration date, the trademark owner fails to use the mark seriously in Turkey for the relevant goods or services without a justifiable reason or discontinues use for five consecutive years.
• If the actions or lack of necessary measures by the trademark owner result in the trademark becoming a common name for the registered goods or services.
• If, because of use by the trademark owner or with their permission, the trademark misleads the public regarding the specific nature, quality, or geographical origin of the goods or services for which it is registered.
• In case of non-compliance with the specifications of a guarantee mark or collective mark technical specifications.
Cancellation requests can be made to the TPTO by relevant parties beginning January 10, 2024. Trademark cancellation requests are asserted against the individuals registered as trademark owners in the registry or their legal successors at the time of the request. In case of a change in the right holder during the cancellation examination happens, proceedings will continue against the person appearing as the right holder in the registry.
Cancellation Request Application
With the draft regulation, it has been decided that each cancellation request will be made for a single registered trademark. During the application, the goods, or services subject to the cancellation request will be specified. The cancellation request for a registered trademark will be submitted to the Turkish Patent and Trademark Office by providing a signed cancellation request form that specifies the reasons for the cancellation, along with references to the relevant articles, paragraphs, and clauses in the applicable legislation. Additionally, the cancellation application fee must be paid.
Response Period for Trademark Owner
Cancellation requests are notified to the owner of the trademark to be cancelled. The trademark owner must submit evidence and responses to the TPTO within one month. The trademark owner must provide evidence that they are actively using the trademark for the goods or services in question in Turkey or that they have justifiable reasons for not using it. If the trademark use was based on the assumption that the trademark will be subjected to the cancellation request, any use that occurred within the three months prior to the submission of the request will not be considered by the TPTO. If the trademark owner fails to submit evidence within the specified period, or if the submitted evidence does not pertain to the use of the trademark, the Turkish Patent and Trademark Office will accept the cancellation request. If requested within this one-month period, the TPTO may grant an additional period of up to one month.
Submission of Additional Information and Documents
If deemed necessary, the TPTO may grant a one-month period for the parties to submit additional information, documents, or explanations related to the cancellation request. If the requested additional information, documents, and explanations are not submitted within this period, the cancellation request will be evaluated based on the existing information and documents, and the information not submitted within the one-month period will not be considered by the TPTO.
Acceptance of the Cancellation Request
If cancellation grounds are found for only some goods or services covered by the trademark’s registration, a partial cancellation decision will be rendered only for those goods or services. A cancellation decision cannot be made in a way that alters the representation of the trademark. When the TPTO issues a cancellation decision, the trademark will be removed from the registry, and this will be published in the Official Trademark Bulletin.
Effect of Cancellation
If a decision is made to cancel the trademark, this decision will be effective from the date the cancellation request was submitted to the TPTO. However, upon request, if the grounds for cancellation existed at an earlier date, the cancellation decision may be effective from that earlier date.
Power of Attorney
The draft regulation specifies that the original power of attorney or a certified copy of the power of attorney, explicitly stating the authority to withdraw the cancellation request or to undertake actions that would partially or entirely lead to this outcome, must be submitted to the TPTO.
Appeal of the Turkish Patent and Trademark Office’s Final Decision
Whether the cancellation request will be examined by the Trademarks Department or by establishing a separate department is not yet clear. Similarly, it is uncertain whether the final decisions of the TPTO regarding cancellation requests will be brought before the Ankara Intellectual and Industrial Property Rights Courts. Considering that the authority to cancel the trademarks has been transferred from the courts to the TPTO, and one of the purposes is to expedite the process, examining the final decision in court again may conflict with these purposes. The draft regulation does not address these issues, but the TPTO has advised that this will be clearer once the final version of the regulation is published.
In conclusion, as of January 10, 2024, the TPTO will be the authority for the cancellation of registered trademarks. However, there is currently no regulation regarding the department within the TPTO that will examine cancellation requests and the finality of the decisions made by the TPTO. When new information and regulations regarding the cancellation procedure are published based on potential changes in the draft regulation and statements from the Turkish Patent Office, more detailed information about the implementation can be shared.