REVOCATION OF THE TRADEMARK DUE TO NON-USE
Turkish legislation provides that the revocation of a registered trademark is a consequence of the legal issues that occurred concerning the trademark owner. Trademark revocation initiates in case of misleading use or non-use of the trademark owner.
Reasons for revocation of the trademark are stated restrictively in the Article 26/1 of the Turkish Industrial Property Law with numbered 6769 (“IP Law”). The first reason for revocation that is stated in the Article 26, refers to the Article 9 of the IP Law. Article 9 addresses that “if within five years following the date of registration, the trademark doesn’t have genuine use in Turkey by the trademark owner in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be revoked unless there are proper reasons of non-use.” Therefore, the reasons that occurred after the registration of the trademark and were not present at the time of registration will be subject to the revocation request of the trademark.
Use of the trademark constitutes a prerequisite for the registration of the trademark. As stated in the Article 9 of the IP Law, in order for the trademark to be within the scope of the legal protection that occurs from the registration, it is necessary to use the trademark. The purpose of this requirement is to prevent unnecessary narrowing of the scope of phrases that can be registered as a trademark and also to prevent the unused trademark from being registered in the Turkish Patent and Trademark Office’s (“TürkPatent”) trademark registry system.
1. REVOCATION REQUEST
Since the reasons for revocation occurs after the registration, primarily, the trademark needs to be registered trademark in TürkPatent’s trademark system.
In case of non-use of the trademark for 5 years or suspension of the use of the trademark for 5 years, it is possible to request revocation.
There isn’t an explicit definition of “genuine use of the trademark” in Article 9 of the IP Law. However, the Supreme Court explain the genuine use in its decision as such: “the decision regarding is approved… due to the fact that genuine use has not been proofed in such a way that creates a market or to protect the existing market, in accordance with the essential functions of the trademark and in such a way as to guarantee the identity of the basis of for the related services”. (Supreme Court 11. Civil Chamber’s Decision with numbered 2011/15244 and dated 2011/11201)
Also, European Court has ruled that with the AJAX decision dated 2003, “there is genuine use of a trademark where the mark is used in accordance with its essential function, which is to guarantee the identity of the basis of the goods and services for which it is registered, in order to create or preserve a market for those goods or services”.
Within this scope, it is clear that to have protection that is granted by the registration, genuine use is essential and genuine use must be convenient for goods and services that are in accordance with the fundamental usage of the trademark.
Whether the trademark has serious use or not was not seriously followed in the past. However, nowadays, in the case of the revocation of the trademark, examinations are being conducted regarding whether the trademark owner has a serious use of the trademark for related services.
To examine this situation, proof of use request is regulated in the Article 19/2 of the IP Law. Proof of use request also can be requested with objections made within the scope of Article 6/1. For the trademark to be the subject of a proof of use request, five (5) years must have been completed since the date of registration.
The applicant must notify TürkPatent regarding the proof of use request explicit and written within one (1) month which is also a duration to submit the opposition against publication.
2. COMPETENT AUTHORITY
IP Law regulates that the relevant persons may request revocation of the trademark from TürkPatent in circumstances. However, the effective date of the provision regarding the revocation process is set as 10.01.2024. As a consequence of that, revocation cases are handled by the local courts until 10.01.2024, and after that date, TürkPatent will have the authority.
In the transitional Article 4/2 of the IP Law, it has been determined that the ongoing cases related to the revocation of the trademark, which are handled by the local courts will be authorized to initiate proceedings.
Reasons for revocation may occur any time after the registration of the trademark. If the trademark is not used continuously for five (5) years, the revocation request can be demanded in the revocation cases filed due to the non-use of the trademark. The five (5) year period will be examined backward from the date of the case. Therefore, starting with the registration of the trademark, at least 5 years must be passed.
After the cancellation request is submitted, the burden of proof passes to the trademark owner. The trademark owner is required to make a defense regarding the use of the trademark and must present every piece of evidence that proves the trademark is being used. Since the trademark owner is obliged to prove, the trademark owner must separately prove which sub-classes also have a serious use.
Within the scope of defense and presented evidence, until 10/01/2024, which is the date that the TürkPatent will be authorized, the court will consider revocation requests in the written trial procedure according to the Code of Civil Procedure.
The court may rule on such decisions, as the refusal of revocation request, revocation of the trademark, or partially revocation of the trademark in terms of its registered goods and services.
After the finalization of the revocation decision, the trademark is revoked from TürkPatent’s trademark registry system and the revocation publishes in the Trademark Bulletin. The IP Law states that, until 10.01.2024, if the Court rules revocation of the trademark, the revocation decisions are sent to the TürkPatent ex officio.
Authors: Hatice Ekici Tağa, Öykü Su Sabancı