Cancellation of Trademark Due to Non-use. How Will Practice of the Turkish Patent and Trademark Office Look Like?

In 2023, the most buzzworthy topic in the IP community in Türkiye was undoubtedly the transfer of the authority to cancel trademarks due to nonuse from courts to the Turkish Patent and Trademark Office ("TPTO"). This amendment took effect on January 10, 2024. The fact that no guidance has been published and no explanation has been made on this issue has brought about sectoral discussions and preliminary comments. Question marks have increased, but the answers are not clear yet.

Pursuant to Article 26 of the Industrial Property Law ("IPL"), it is possible to cancel a trademark due to nonuse if the trademark has not been seriously used without a justifiable reason within five years from the date of registration, or if such use has been discontinued for five years without interruption. Before the IPL came into force in January 2017, the request for the cancellation of a trademark due to nonuse could only be made by filing a lawsuit before the competent court. The IPL, however, originally granted the power to cancel a trademark due to nonuse to the TPTO upon the request of those with a legal interest, but envisaged a transition period, too. The transition period granted by the IPL expired on January 10, 2024, and as of this date, trademark cancellation claims for nonuse are to be heard before the TPTO.

The novelty of this practice in Türkiye will certainly lead to some issues especially since no regulation or guideline/information letter has been published by the TPTO yet. Some of the vital issues that this amendment could bring about are as follow:

a. The fact that trademark cancellation claims for nonuse were examined by the courts made them a part of the judicial system. However, now that the relevant request can be evaluated by the TPTO, it turns into an administrative process. This creates fundamental differences in terms of the procedure to be followed and the assessment of the merits. Three differences are pointed out here:

• In nonuse cancellation cases before the court, the determination of the use of the trademark was made by experts appointed by the court. The file was evaluated by multiple experts, both in terms of trademark law and the sector to which the trademark at issue was related. This examination could even take place more than once if the parties objected or if the court deemed it necessary. In the post-amendment period, however, it has not yet been clarified which unit will carry out the examination and what procedure will be followed in cases before the TPTO.
• Some of the most crucial documents to demonstrate proof of use of a trademark are invoices, product labels, dated catalogs and trade books. The caveat, however, was that these documents could contain trade secrets, which the trademark holders certainly strive to protect even while submitting them to the court. Now that the amendment has taken effect, it remains to be seen how the process will be handled before the TPTO and what measures will be taken to ensure the confidentiality of the documents. It is also unclear how documents whose evaluation requires additional competence will be examined. This is because the examination of commercial books and assessing whether the relevant records constitute evidence require special legal knowledge. However, this could lead to ambiguity when the case at issue requires knowledge other than IP, thus posing the question of how the TPTO will address such matters.
• While it is possible to appeal a court decision at a higher court (Regional Court of Appeal / Court of Cassation), a practice already in place during the IPL period, it is not clear whether it will be possible to lodge an appeal at the Board of Appeals when the review period of the TPTO begins. Obviously, while it is possible to apply to the Board of Appeals even in trademark opposition files, it is expected that there will be a right to apply to the Board of Appeals in the examination that will lead to the loss of rights in this way. In the absence of this, it may be possible to file a lawsuit before the Ankara Intellectual and Industrial Rights Law Court to request the annulment of the decision.

b. On the other hand, nonuse cases are subject to a written procedure in accordance with the Code of Civil Procedure ("CCP"). The parties are required to file two petitions: a statement of claim, a response, a counter-response, and a rejoinder. While it is obvious that the TPTO, as an administrative authority, will not be obliged to follow a procedure subject to the CCP, it is expected to adopt a similar examination procedure for ease of implementation.

c. In the cases before the court, if the defendant - the trademark owner - was not at their specified address, they could be notified in other ways in accordance with the Notification Law. Considering that the trademarks for which cancellation is requested must have been registered for at least 5 years, the address of the trademark owner registered in the TPTO might not be an up to date one. In this case, it has not been clarified whether the same practice will be applied by the TPTO.

d. It is obvious that the judicial system in Türkiye is overburdened. Therefore, transferring the duty and authority to examine files such as trademark cancellations to the TPTO could alleviate the burden on courts. On the other hand, nobody can deny that the workload of the TPTO is high, too. Although the TPTO itself admits that there are opposition files that are concluded quite quickly, there are other opposition cases that might take between 1-10 months. Considering that the examination of a matter that will terminate the trademark right should be carried out meticulously, it remains to be seen how long these processes will last.

e. Another positive outcome will be the fact that, compared to the litigation processes, the modified system will incur lower costs for legal beneficiaries.

This amendment is a significant reform in the Turkish industrial property law. Since no preliminary guidelines have been published yet, and there will not be any precedent in this regard even after its publication, it is not possible to predict how the implementation will take place. The first days of 2024 will be closely monitored by the IP community, and it will take some time for the system to settle.