According to Industrial Property Law No. 6769, which came into effect on January 10, 2017, the authority to request the cancellation of a trademark currently under the jurisdiction of the courts has been transferred to the Turkish Patent and Trademark Office (TÜRKPATENT) as of January 10, 2024.
In accordance with Article 26 of the SMK, which is compatible with EU Directives 2015/2436 and 2017/1001, a trademark that has not been used in Turkey within a period of five years following the registration without a justifiable reason, that has become a generic name for the registered goods/services, or that has misled the public regarding the nature, quality, or geographical origin of the registered goods/services, can be canceled by TÜRKPATENT upon request for cancellation.
Prior to this date, a request for cancellation of a trademark registration could only be made in a court action against the trademark owner. However, in the new period, the trademark can be more easily canceled by filing a cancellation request directly with TÜRKPATENT.
Parties can take the following actions on behalf of Turkey after this date:
- Preventive Applications to Avoid Cancellation due to Non-use
- Filing non-use cancellations against marks for which no opposition has been filed or for which there is a low chance of success in oppositions.
Regarding the Issue of Bad Faith in Repeated Applications:
There is no explicit provision in the law that addresses the evaluation of repeated applications in terms of bad faith. Typically, if an applicant wishes to extend the five-year period during which they are not obligated to prove the use of their mark, it might be possible to consider the repeated application as an act of bad faith. This is because the intent behind a new application may indirectly imply an effort to circumvent the trademark use obligation as defined by the law. However, the determination of bad faith should be based on the unique circumstances of each case, and merely filing a repeated application for a registered mark does not automatically qualify as an act of bad faith on its own. Until now, TÜRKPATENT has not commonly regarded repeated applications as acts of bad faith, and they have not required proof of use for the same mark that was previously registered when assessing renewal applications during the objection process.
Appointment of Representative:
In trademark applications made through WIPO, there is no requirement to appoint a local trademark attorney. Although WIPO’s Rule 23bis, paragraphs two and three, regulate the form and communication of notifications to be made within the scope of the first paragraph, in order to avoid potential issues, it is advisable to also appoint an attorney in Turkey, especially given the potential time constraints and the expected increase in applications during this period.
Recommendations and Conclusion:
- To safeguard trademarks from non-use cancellation requests, it is recommended to file new trademark applications in Turkey for those trademarks that are not in use but for which you intend to maintain protection.
- If you plan to file or submit a non-use cancellation request after January 10, 2024, it is advisable to conduct searches for these trademarks through a representative and take the necessary actions.
