Countdown to Revocation Before TURKPATENT

General Remarks:

As it is known, in accordance with the IP Code No. 6769, which entered into force on January 10, 2017, the right of trademark cancellation temporarily used by the courts will be assigned to the Turkish Patent and Trademark Office (TÜRKPATENT) as of 10.01.2024.

According to Article 26 of the IP Code which aligns with the EU Directive 2015/2436 and Regulation 2017/1001, any registered trademark which has not been used in Türkiye within five years from the date of registration, becomes a generic name for registered goods/services or misleads the public regarding the nature, quality or geographic origin of the goods or services registered shall be revoked upon cancelation request before TÜRKPATENT unless there are reasonable cause for non-use.

Among the conditions listed, the non-use of the trademark is the most common reason for cancellation requests. Considering that there is less than 1 year left for the new procedure, it is important that the trademark right holders determine their strategies for their registered trademarks and the consequences of cancellation procedure in advance. At this point, it is highly considerate to take into account the following points:

Being Sole Authority in Cancellation Proceedings:

The fact that TÜRKPATENT is only the authority for the cancelation of registered trademarks will bring a new era. Having a large number of unused trademarks in the registry and carrying out ex officio similarity search in the office are two fundamental triggers of disputes between parties which will inevitably increase the number of cancellation requests before the Office.

In addition, for a defendant, it is very common to use the right of requesting the cancellation of a trademark in invalidity/infringement cases before the court. However, with the new regulation, it will no longer be used by him as a counterclaim since TÜRKPATENT will be sole authorized body for revocation procedures. Therefore, with no doubt, defendant will knock the doors of TÜRKPATENT and this practice, due to high number of cancelation requests, will lead to a heavy burden to the shoulders of it, which is so hard to come through. Furthermore, there is a question still waiting an answer whether TÜRKPATENT procedures should be considered as a ground to suspend cases before courts. If so, then an effective communication channel needs to be set up.

From a different point of view, since revocation decisions made by TÜRKPATENT can still be sued before courts, proprietors might suddenly be a party of lawsuit. Therefore, it seems quite possible that registered trademark owners need to bare not only the burden of proof of use but also costs due to long court procedures.

Necessity to Clarify the Uncertainties on Procedural Aspects:

The following issues are still waiting clearance and answers since TÜRKPATENT has not yet amended IP Code/Regulation or published any guide regarding cancellation procedures:

* Up to now, no regulation is foreseen regarding the rules and conditions for an admissible cancellation request, the actions to be taken if the request needs to be remedied, and the cases in which cancellation request shall be formally rejected.

* It is stated in Article 26 of IP Code that the evidence proving the use of trademark must be submitted within a one-month period. However, no rule is defined if it is submitted after that period but before cancelation decision is made.

* It is uncertain that Office will accept withdrawal of a cancelation request.

* Although no fee is stated on the related article, it is not expected to be carried out cancelation procedures free of charge. Since the amount of the fee will directly affect the number of requests, Office can set a high official fee for cancelation service.

* By the new regulation, cancellation requests are commonly expected to be filed as a counterclaim at the oppositions and as an action due to refusal of trademark application resulting from ex officio similarity search. For this reason, the decision to be made on cancelation requests will affect the outcome of pending applications before the Office. Since the Office does not explicitly state the suspension rules, the proceedings on cancelation - related cases remains its mystery.

* Finally, it is a wise approach not to examine the cancelation requests based on the same ground and filed by same parties in a specific period of time. However, it is still a matter of curiosity whether the principle (triple identity – res judicata)[1] adopted in EUIPO, will be adopted by TÜRKPATENT as well.

Brief and Comments:

It is considered that the new regulation will benefit two problems in theory:

* To alleviate the heavy workload of Turkish Courts

* To resolve disputes regarding unused trademarks before the Office in a reasonably short time.

Firstly, it is a legitimate concern that due to the fact that the Turkish trademark registry contains a large number of unused trademarks and the ex officio similarity search, the number of cancellation requests can be higher than expected causing another paradox that Office having limited institutional capacity cannot resolve the disputes on due course.

Secondly, cancelation proceedings remain uncertain because of the fact that Office has not shared yet any guide with regards to procedure of cancelation requests, suspension rules, res judicate and so on.

Finally, the registered trademark owner as an opponent is expected to prove the use of his trademarks in opposition proceedings upon the defense of non-use before the Office. If the use of trademark is not proved, the effect is just limited with the registration of applicant’s trademark. However, it is important to bear in mind that the outcome will be so crucial in the cancelation requests that if it is not proved then the registered trademark will be revoked. Hence, the right owners should refrain from asserting their unused registered trademark in opposition proceedings before the Office.

Additional Remark: Is Refiling a Gateway?

It is still a controversial issue that refiling is a way of extending five-year grace period. Since 2017, Some of the trademark owners who faced the burden of proving the use of their registered trademarks, used “refiling” as an alternative method to get rid of it. Here a question comes around whether refiling of an identical registered trademark is a bad faith and what is the systematic approach of TÜRKPATENT in such cases.

There is no provision in IP Code that refiling will be considered within the scope of bad faith. Normally, if an applicant intends to fraudulently extend the five-year grace period in which it does not have to prove use of his mark, then refiling can be considered as bad faith. Since intention in applying for the new trademark is to sidestep the fundamental principle of IP Code regarding the requirement to provide proof of use. Bad faith must be assessed based on the circumstances of each case and cannot be presumed merely because a trademark has been refiled. Up to now, TÜRKPATENT has not considered the refiled trademarks as bad faith and seeked for the proof of use of earlier registered trademarks in opposition proceedings. In this respect, it is highly probable that repeated applications filed before the cancellation request will not be considered within the scope of bad faith.

To sum up, in consideration of above-mentioned practice of TÜRKPATENT, it is highly recommended that the right owners should prepare evidence in advance proving genuine use of registered trademarks in Türkiye. As an alternative strategy, refiling may be a gateway for trademark owners to avoid the uncertainty, burden of proof of use, and the threat of revocation although the protection system encourages the use of trademarks.

Kubilay GÜZEL

Deputy Director General

Former Head of TURKPATENT TM Department