From the WALLAPOP judgment to Turkish practice
The expiry of a trade mark right while judicial or administrative proceedings are pending does not always affect the dispute in the same way. The outcome depends on the type of proceedings, the ground on which the right ended and the date from which that ending takes effect. A registration that expires because it was not renewed does not produce the same legal consequences as a registration declared invalid from the outset or revoked for non-use with effect from a specified date.
The judgment of the General Court of the European Union of 9 September 2026 in Case T-551/24, WALLAPOP, considered this question in opposition proceedings. Its importance is not limited to the expiry of the earlier marks. It shows that the lifespan of the right must be assessed together with the purpose of the pending proceedings. Under Turkish law, the same issue calls for different answers in opposition proceedings, infringement actions, invalidity actions, revocation proceedings and actions for the annulment of decisions of the Turkish Patent and Trademark Office.
What happened in WALLAPOP?
Wallapop SL applied to register the figurative sign WALLAPOP as a European Union trade mark for services in Classes 35, 38 and 42. Unipreus SL opposed the application on the basis of three Spanish WALA W marks registered in Class 35. Following the initial proceedings before the European Union Intellectual Property Office (EUIPO) and the General Court’s 2018 judgment in Case T-186/17, the services at issue were held to be similar at least to a low degree. The Court found that the EUIPO Board of Appeal had erred in finding the services dissimilar, but did not itself give a final ruling on likelihood of confusion.
When the case returned to EUIPO, a new circumstance had arisen: Unipreus had not renewed the marks relied upon in opposition. The registrations expired prospectively in 2019 and 2020, and that position was confirmed by judgments of the Spanish courts in 2023 and 2024. The First Board of Appeal held that the opposition had become devoid of purpose because no valid earlier right remained on the date of its decision. The General Court upheld that approach.
“The earlier marks on which the opposition was based had to be valid not only at the time of publication of the application for registration of the mark applied for, but also at the date of its decision.”
The finding made in 2018 concerning the similarity of the services was not thereby erased. The General Court had annulled EUIPO’s earlier assessment that the services were dissimilar, and that legal correction remained valid. Yet, in the absence of a valid earlier right on the date of the new decision, the similarity of the services could no longer affect the outcome of the opposition. The expiry of the underlying rights rendered the opposition devoid of purpose; it did not retrospectively make EUIPO’s earlier error correct.
Under Turkish law, the first question is how the right ended
Industrial Property Code No. 6769 does not attach a single consequence to every form of termination of trade mark protection. Invalidity, revocation, non-renewal and surrender rest on different grounds and take effect from different dates. Their impact on pending proceedings can be determined only after that distinction is made.
Invalidity affects the mark from the outset
The grounds for invalidity under Article 25 concern signs that should not have been protected at the filing or registration stage. Under Article 27(1), an invalidity decision takes effect from the filing date of the trade mark and the protection conferred by the registration is deemed never to have arisen.
If the claimant’s mark is declared invalid while an infringement action is pending, the legal foundation of the infringement claim may therefore disappear retrospectively. Even if the mark appeared on the register when the alleged acts occurred, invalidity means that it did not confer protection at that time either. The exceptions in Article 27(3), including final and enforced infringement judgments and contracts performed before the invalidity decision, must nevertheless be considered separately.
The effective date of revocation may determine the outcome
Grounds such as non-use, a mark becoming generic, or becoming misleading through its use arise after registration. Under Article 27(2), a revocation decision normally takes effect from the date on which the request for revocation was filed with the Office. Upon request, however, the decision may take effect from an earlier date if the ground for revocation is found to have arisen on that date.
This is not merely a date entered in the register. It may preserve or remove the legal basis of an infringement action previously brought on the same registration. If a revocation request was filed in 2010 but the ground of non-use is held to have arisen in 2005, an infringement action commenced in 2008 may lose its foundation. If revocation takes effect only from 2010, the infringement claim may survive in respect of acts committed between 2008 and 2010.
An example from the case law on the retroactive effect of revocation for non-use
A decision of the Turkish Court of Cassation illustrates this precise problem, even though it was rendered under the former Decree-Law No. 556 rather than the current Industrial Property Code — the reasoning remains instructive under the present SMK framework. The registered proprietor brought an infringement action on 12 January 2011. Five weeks later, on 18 February 2011, the defendant filed a counterclaim seeking revocation of the proprietor’s mark for non-use, arguing that the mark had not been used since 2004.
The first instance court granted the counterclaim, revoked the proprietor’s mark for non-use, and dismissed the infringement action as having lost its legal basis. On appeal, the Court of Cassation (11th Civil Chamber, 2012/1496 E., 2013/3805 K., 1 March 2013) upheld that outcome. It held that, as a general rule, a revocation decision based on a ground arising after registration — such as non-use — takes effect only from the date the revocation claim was filed, not from the date of registration. However, where a party has a legal interest in showing that the ground for revocation matured earlier, and the mark was not put to genuine use between that earlier date and the filing of the revocation claim, the retroactive effect can be fixed at that earlier date.
Because the proprietor’s mark had not been used since 2004, the five-year non-use period was already complete before the infringement action was filed on 12 January 2011. The Court of Cassation held that the revocation’s retroactive effect reached back far enough to cover that date, so the proprietor could not rely on the mark even when the infringement action was filed — and the earlier-filed infringement action was correctly dismissed. The case shows why it is not enough to ask whether a mark was revoked. The decisive question is often whether the retroactive effect of that revocation reaches back far enough to defeat a claim filed even before the revocation action itself.
Non-renewal and surrender do not retrospectively erase the right
Non-renewal and surrender are different. Under Article 28 of the Code, termination takes effect when the relevant cause occurs. The mark validly existed during the preceding period. A mark that is later not renewed or surrendered therefore cannot retrospectively be treated as though it had never existed in relation to infringements committed while it was valid.
Claims seeking cessation of infringement or prevention of future use may become devoid of purpose once the right ends. Claims for damages and other consequences relating to the period during which the mark remained valid may survive. In WALLAPOP, non-renewal did not erase the earlier existence of the marks; it meant that no current right remained capable of supporting the opposition when EUIPO had to decide again.
The result changes with the type of proceedings
Trade mark infringement action
The dates of the alleged acts must be compared with the date on which the right ended. Because non-renewal and surrender operate prospectively, they do not automatically eliminate claims concerning earlier infringement. Invalidity may remove the basis of the action from the outset. In revocation cases, the effective date specified in the decision is decisive.
Invalidity action
A mark may not be renewed, or may be surrendered, while an invalidity action is pending. That does not necessarily render the action devoid of purpose. Because invalidity has retroactive effect, it may affect other actions brought on the mark, licences already granted or damages claims already asserted. If the claimant retains a legal interest in those retroactive consequences, examination of the invalidity claim may still need to continue.
Non-use and other revocation proceedings
Both the date on which the ground for revocation arose and whether the applicant requests effect from an earlier date are important. The absence of an express request and a determination concerning the effective date can directly affect the outcome of other pending litigation.
Opposition proceedings and actions for annulment of Office decisions
The purpose of an opposition is to prevent registration of a new mark that would conflict with an earlier right which is still protected. If the earlier mark has definitively ended by the time the Turkish Patent and Trademark Office decides, the approach adopted in WALLAPOP may also be discussed in Turkey. It remains necessary to examine whether the grace period for renewal is still running, whether restoration of rights has been requested and whether the expiry has become final.
There is a further procedural possibility. After an opposition has been rejected and an action has been brought to annul the decision of the Re-examination and Evaluation Board of the Turkish Patent and Trademark Office, the applicant may withdraw the application or fail to complete registration. Although the practical need to prevent registration may then disappear, it does not follow automatically that the court action must end. The relief sought, other legal effects of the administrative decision, costs and the claimant’s continuing legal interest must be assessed in the circumstances of the individual case.
The broader lesson of WALLAPOP
WALLAPOP should not be reduced to the proposition that an opposition fails if the earlier mark is not renewed while the proceedings are pending. Its broader message is that the current status of the right must be considered together with the purpose of the pending proceedings. An opposition seeks to prevent a future registration. An infringement action may still produce consequences for past acts. Invalidity addresses a defect existing at the outset; revocation addresses circumstances arising after registration.
Whenever a trade mark ends during pending proceedings, three questions should therefore be asked: Why did the mark end? From what date did that ending take effect? What period and what legal consequence are at issue in the pending case? Without answering those questions, the mere fact that a mark no longer appears as active on the register is not enough to conclude that the proceedings have become devoid of purpose.
Sources
- General Court, Case T-551/24, Unipreus v EUIPO – Wallapop
- General Court, Case T-186/17, Unipreus v EUIPO – Wallapop
- Turkish Industrial Property Code No. 6769
- Turkish Court of Cassation (Yargıtay), 11th Civil Chamber, 2012/1496 E., 2013/3805 K., 1 March 2013
