Revocation of Trademark Rights Due to Non-Use in Turkey: Second Update
In a previous article, we reported that as of January 10, 2024, the authority to decide on trademark revocation based on non-use in Turkey was transferred from the courts to the Turkish Patent and Trademark Office (TPMO). In that article, we also noted that the TPMO had not yet established the institutional framework required to execute this authority nor drafted the necessary regulations for its implementation. As a result, the TPMO had not issued decisions on revocation requests for non-use.
This situation remains unchanged, while some practitioners and courts have argued that the transfer of revocation authority from the judiciary to the TPMO is unconstitutional.
A court sharing this view referred the matter to the Constitutional Court (CC) earlier this year, but the decision reached was not in line with the parties’ expectations.
In a trademark infringement case, the defendant filed a counterclaim before the Fourth Ankara Civil Court for Intellectual and Industrial Property Rights, requesting revocation of trademark rights due to non-use in Turkey the revocation of the plaintiff’s trademark on the grounds of non-use.
On May 15, 2024, the court received the petition for revocation based on non-use. Subsequently, the court filed an application with the Constitutional Court, asserting that specific provisions in Article 26, as highlighted and underlined below, were unconstitutional and requesting their annulment.
Madde 26- (1) Aşağıdaki hâllerde talep üzerine Kurum tarafından markanın iptaline karar verilir:
a) 9 uncu maddenin birinci fıkrasında belirtilen hâllerin mevcut olması.
b) Marka sahibinin fiillerinin veya gerekli önlemleri almamasının sonucu olarak markanın, tescilli olduğu mal veya hizmetler için yaygın bir ad hâline gelmesi.
c) Marka sahibi tarafından veya marka sahibinin izniyle gerçekleştirilen kullanım sonucunda markanın, tescilli olduğu mal veya hizmetlerin özellikle niteliği, kalitesi veya coğrafi kaynağı konusunda halkı yanıltması.
ç) 32 nci maddeye aykırı kullanımın olması.
(2) İlgili kişiler, Kurumdan markanın iptalini isteyebilir.
(3) Marka iptal talepleri, talep tarihinde sicilde marka sahibi olarak kayıtlı kişilere veya hukuki haleflerine karşı ileri sürülür.
(4) Markanın, beş yıllık sürenin dolması ile iptal talebinin Kuruma sunulduğu tarih arasında tescil edildiği mal veya hizmetler bakımından ciddi biçimde kullanılmış olması hâlinde, birinci fıkranın (a) bendine ilişkin iptal talepleri reddedilir. İptal talebinde bulunulacağı düşünülerek kullanım gerçekleşmişse talebin Kuruma sunulmasından önceki üç ay içinde gerçekleşen kullanım dikkate alınmaz.
(5) İptal hâlleri, markanın tescil edildiği bir kısım mal veya hizmete ilişkin bulunuyorsa, sadece o mal veya hizmet yönünden kısmi iptale karar verilir. Marka örneğini değiştirecek biçimde iptal kararı verilemez.
(6) İptal incelemesi sırasında hak sahibinin değişmesi hâlinde, sicilde hak sahibi olarak görünen kişiye karşı işlemlere devam edilir.
(7) İptal talepleri, iptali istenen markanın sahibine tebliğ edilir. Marka sahibi bir ay içinde talebe ilişkin delillerini ve cevaplarını Kuruma sunar. Söz konusu bir aylık süre içinde talep edilmesi hâlinde Kurum bir aya kadar ek süre verir. Kurum gerekli gördüğü takdirde ek bilgi ve belge sunulmasını isteyebilir. Kurum, iddia ve savunmalar ile sunulan deliller çerçevesinde dosya üzerinden kararını verir.”
ARTICLE 26- (1) Upon request, the revocation of the trademark shall be decided by the Office in the following situations:
a) Existance of conditions set out in the first paragraph of the Article 9.
b) Trademark becoming generic for the registered goods or services due to trademark proprietor’s actions or as a consequence of necessary measures not taken by the trademark proprietor.
(c) Trademark misleading the public concerning the nature, quality or geographic origin of the goods or services for which it is registered, as a result of the use by the trademark proprietor himself or with the trademark prorietor’s consent.
(ç) Use of trademark contrary to Article 32.
(2) Interested persons may request revocation of trademark from the Office.
(3) Revocation requests concerning a trademark shall be asserted against persons registered as trademark proprietors at the date of request or their successors in title.
(4) In case trademark is put in a genuine use with regard to the registered goods or services between the expiration period of five years and the date when revocation request is submitted to the Office, the revocation requests related to subparagraph (a) of first paragraph shall be refused. If the use has been carried out by considering that revocation request would be made, the use carried out within three months prior to the submission of the request to the Office shall not be taken into consideration.
(5) If revocation relates to some goods or services for which the trademark is registered, then the decision for partial revocation shall be given for only those goods or services. A revocation decision which has the result of altering the representation of the trademark may not be given.
(6) If right owner changes during examination of the revocation, the proceedings shall continue with respect to the person who appears as the right owner in the registry.
(7) Revocation requests shall be notified to propreitor of the trademark for which the revocation is requested. The trademark proprietor shall submit his evidences and responses to the Office within one month. In case an extension is requested within this one month period, the Office shall grant an additional one month. The Office, if it considers necessary, may demand additional information and documentation. The Office shall give a decision with respect to the file within the framework of claims and defenses as well as the presented evidences.
(The amount of the Word Office is different due to the translation of TPMK)
The Constitutional Court’s Assessment and Rejection: What Does It Mean?
The Constitutional Court reviewed the application submitted to it and ultimately rejected it. However, this rejection was not based on a substantive examination of the merits of the case but rather on procedural grounds. What does this mean? (link)
The Constitutional Court accepts and examines applications according to Article 152 of the Constitution and Article 40 of Law No. 6216, dated 30 March 2011, on the Establishment and Rules of Procedure of the Constitutional Court.
Under the law, for a court to submit an application to the Constitutional Court, the following conditions must be met:
- The court must be hearing a case that has been duly initiated and falls within its jurisdiction.
- The rule for which annulment is sought must be applicable to the case at hand.
The CC conclusion is:
“3. In this context, it is first necessary to determine whether the court submitting the objection application has jurisdiction over the case in which the rule is to be applied.
4. The case under review concerns a counterclaim filed on May 15, 2024, for the revocation of a trademark, in response to a primary lawsuit for the prevention of trademark infringement, cessation of infringement, and claims for pecuniary and non-pecuniary damages. Article 26(1) of Law No. 6769 stipulates that decisions on trademark revocation shall be rendered by the Turkish Patent and Trademark Office (the Office). Pursuant to Article 192(1)(a) of the same law, this provision entered into force on January 10, 2024, seven years after the publication date of the law.
5. Therefore, it is evident that the authority to evaluate the trademark revocation request in the case under review, filed on May 15, 2024, lies with the Office in accordance with the aforementioned provisions. Accordingly, it is understood that the case under review does not fall within the jurisdiction of the court submitting the objection application.
6. For the reasons explained, the application must be rejected on the grounds of lack of jurisdiction of the court.”
At this stage, the Constitutional Court did not deliberate on whether Article 26 was unconstitutional, as it ruled that the court submitting the request lacked the authority to raise this issue.
This decision primarily serves as a warning for the Turkish Patent and Trademark Office (TPMO) to expedite its institutional preparations. Additionally, it eliminates the uncertainties arising from the referral of the relevant legislative provision to the Constitutional Court.
In this context, the decision has led to the assertion that the Constitutional Court, having addressed the issue once, would only revisit it after a period of 10 years, effectively delaying the matter for a decade. On the other hand, an alternative view posits that, since the Constitutional Court did not assess the provision on its merits, the 10-year rule does not apply in this case. It has been argued that, should the matter be brought before the Court through the proper procedural channels, a substantive discussion could still be initiated.
The procedurally appropriate path can be summarized as follows:
- An application for the revocation of a trademark on grounds of non-use is filed with the TPMO.
- The TPMO reviews the request and renders a decision in accordance with procedural requirements.
- The decision is challenged in court by one of the parties.
- The court petitions the Constitutional Court to review the constitutionality of Article 26, which forms the basis of the decision.
In any case, as trademark attorneys, we must express our satisfaction that a significant procedural hurdle has been overcome. We hope that this decision regarding “Revocation of Trademark Rights Due to Non-Use in Turkey” will encourage the TPMO to fulfill its responsibilities promptly, complete its institutional preparations, and begin processing revocation requests without further delay.
