Latest Situation on Cancellation of Trademarks Due to Non-Use in Turkey
As of today (06.03.2024), trademark cancellation cannot be made due to nonuse in Turkey. Details are below.
As it is known, registered trademarks must be used in relation to the goods or services for which they are registered. In Turkey, this period is five years from the completion of the registration or, in any case, the last five years from the date when the use was questioned.
The obligation to use was first determined by Decree Law No. 556. According to this
Use of the trademark
ARTICLE 14
(Cancelled: E. 2016/148 K. 2016/189 14/12/2016 t. Canceled by AyM (Constitutional Court) K.)
If the trademark is not used without a justified reason within five years from the date of registration, or if this use is interrupted for a period of five years, the trademark will be cancelled.
The following situations are considered to use the trademark.
a) Using the trademark with different elements without changing the distinctive character of the registered trademark,
b) Use of the trademark on goods or packaging only for export purposes,
c) Use of the trademark with the permission of the trademark owner,
d) Import of goods bearing the trademark.
Article 42 of the same Decree Law also defined who would make the annulment (cancellation) decision.
ARTICLE 42
In the following cases, the competent court decides to declare the trademark invalid:
…..
c) Violation of Article 14. (However, serious use between the expiration of 5 years and the date of filing of the lawsuit is not considered a reason for invalidity. If the use occurred with the thought that a lawsuit would be filed, the court does not take into account the use that took place within three months before the lawsuit was filed.)
(Cancellation clause: E. 2013/147 K. 2014/75 09/04/2014 t. AyM K.)
……
These articles were annulled by the constitutional court on December 14, 2016. On January 10, 2017, the Industrial Property Law No. 6769 came into force. The new Law brought a significant change.
After January 10, 2017
Use of the trademark
Article 9- (1) It is decided to cancel the trademark that is not used seriously in Turkey by the trademark owner in terms of the goods or services for which it is registered without a justified reason within five years from the date of registration, or whose use has been interrupted for five years uninterruptedly.
(2) It is accepted to use the trademark within the meaning of the first paragraph in the following cases:
a) Using the brand with different elements without changing its distinctive character.
b) Use of the trademark on goods or packaging only for export purposes.
(3) Use of the trademark with the permission of the trademark owner is also considered as use by the trademark owner.
Article 26 also determined who will make the decision to cancel due to non-use.
Cancellation cases and cancellation requests
Article 26- (1) In the following cases, upon request, the Office (Turkish Patent and Trademark Office) decides to cancel the trademark:
a) The conditions specified in the first paragraph of Article 9 are present.
………………..
The same law also limited the validity of Article 26 for a temporary period.
effective date
ARTICLE 192- (1) Of this Law;
a) Seven years after the date of publication of Article 26,
……..
comes into force.
Accordingly, the authority for trademark cancellations due to non-use was taken from the courts and given to the Turkish Patent and Trademark Office, but the implementation of this authority by the Office was postponed for seven years and a period of time was given under Article 192 for the Institution to make adequate preparations.
The seven-year preparation period expired on January 10, 2024.
Today, we can no longer apply to the court for the cancellation of a trademark due to nonuse. Because this authority now belongs to the Turkish Patent and Trademark Office.
What did TürkPatent do?
Many times in the past years, we have asked Turkish Patent representatives what kind of preparations are being made regarding Cancellation Due to Non-Use (CDN). Each time, we were told that the service would be provided as required when the day came and that preparations were ongoing. We saw no sign of this.
In December 2023
https://webim.turkpatent.gov.tr/file/b8238234-2903-46e3-94df-448cf382ad01
“REGULATION ON AMENDMENTS TO THE REGULATION ON THE IMPLEMENTATION OF THE INDUSTRIAL PROPERTY LAW”
The Office published a draft regulation with the title and announced that in order to collect opinions. Afterward, there has been no official or unofficial statement from the Office since this date.
January 10, 2024 has arrived.
When we enter the TürkPatent online transaction page (EPATS) in order to make our pending requests on this date, instead of cancellation request due to non-use we saw
“Trademark Cancellation Request Preliminary Application”
There is no such concept as “PRELIMINARY APPLICATION” in any interpretation of the law. We did this anyway, but we don’t know what will happen next. Because:
- There is no any person, unit, department, etc. at TürkPatent to evaluate CDN applications and make a decision. There is no information about its establishment.
- There is no clear regulation on how a CDN request will be accepted and examined and a decision will be reached, whether there is a right to appeal against this decision, whether the issue can be taken to court after any decision, or what kind of enforcement will be applied for this.
So far, we have explained that we can make CDN requests as PRELIMINARY APPLICATIONS, but there is no any decision making authority and a mechanism yet.
So what happens if the owner of an nonused trademark files an infringement lawsuit?
Obviously, since trademark infringement cases can be filed in specialised IP Courts, there is no obstacle to this. In infringement lawsuits filed based on a trademark that is not used, the Defendant may claim as a defense that there was no substantial use as of the date the lawsuit was filed.
Acts deemed to be infringement of trademark rights
Article 29- (1) The following acts are considered infringement of trademark rights:
…………………………….
(2) The provision of the second paragraph of Article 19 may be invoked as a defense in infringement cases. In this case, the date of the lawsuit is taken as basis in determining the five-year period for use.
As a result, as of today, there is no way to cancel trademarks due to non-use, but in cases to be filed, the basis of non-use of the trademark can be put forward as a defense.
When there is any development on this issue, we will share it here.
Contact us for your questions regarding cancellation due to non-use.