Never Ending Delay for Administrative Revocation of Trademarks

In accordance with Article 26 of the Industrial Property Law (“IP Code”) no. 6769, interested persons may request the Office to revoke a trademark pursuant to paragraph 2 of Article 26 and the decision for revocation of a trademark can be taken accordingly.

For a long time, the authority to revoke the trademarks belonged to the IP Courts as regulated by the former Decree Law no. 556 on the Protection of Trademarks. However, with the entry into force of the IP Code on January 10, 2017, the authority to revoke trademarks has been given to the Turkish Patent and Trademark Office (“the Office”) and to provide a transition period, the entry into force of Article 26 has been postponed for 7 years. In the meantime, as per Provisional Article 4 of the IP Code the authority to revoke trademarks has been left with the IP Courts. This regulation is in line with European Union legislation (“EU Directive 2015/2436”), considered as the reference legislation for the IP Code.

On October 20, 2023, the Office published a Draft Regulation for Amendment of the Regulation on the Implementation of the Industrial Property Code[1] (“Draft Regulation”) on its website for comments. Considering that the Draft Regulation has been presented for comments in the Office’s website well-before January 10, 2024, it was assumed that the legal basis of administrative revocation will be ready and a smooth transition will be made from judicial revocation to administrative revocation of trademarks in January 2024. No further steps were taken after receiving the comments on the Draft Regulation and on January 10, 2024, just a simple “Pre-Application Request for Trademark Revocation” tab was added to the Electronic Application System (“EPATS”) under Third Party Transactions to simply collect the requests. However, although it has been more than 1 year since the effective date of the administrative revocation, no development has been achieved on the examination of the administrative revocation requests in terms of their merits.

Further to this, on April 24, 2024 the Communiqué on “the Turkish Patent and Trademark Office 2024 Fee Tariff” was published. Along with it, revocation requests continued to be collected by paying its fee determined for 2024, i.e. TRY 16.300 + VAT of 20% (totally around EUR 530). Finally, on December 06, 2024, the Office sent accruals for revocation requests filed before the entry into force of the Communiqué (so between January 10, 2024 until April 24, 2024) which were received without the relevant fee and asked for their payment. As of January 01, 2025, the fee of the revocation request has been determined and published as TRY 23.458,33 + VAT of 20% (totally around EUR 760). So, the Office accepts and obtains the revocation requests filed.

Considering that the Draft Regulation states that the Office’s final revocation decision will be recorded in the registry and published in the bulletin will have an immediate effect, the proper examination of the revocation request is important. In a court action filed by the trademark proprietor against the Office’s decision revoking his/her trademark which should not have been revoked in the first place, if the court decides that the trademark revoked upon the Office’s decision should not have been revoked after all, then the trademark proprietor may unfairly lose the protection of the trademark until this court decision becomes final and enforceable, which may take 3 or more years. Nevertheless, we still expect the administrative revocation to be cost and time effective compared to revocation actions before courts. Indeed, considering that the finalization of a court action may take 3 years or more, whereas an opposition procedure before the Office can be finalized within 4-12 months, it could be said that, by comparison, revocation requests before the Office would be finalized in a similar period. There are several reasons for this, among which are the facilitated notification procedure granted to the Office by Articles 160/6 and 160/7 of the IP Code and the simplicity of the administrative procedures and the absence of some of the procedures in the court proceedings such as the expert examination to name as the primary reasons.

We assume that the Office’s workload will also become quite heavy with respect to trademark revocation matters. Indeed, applicants can strategically request revocation of basis trademarks as a counterattack to oppositions filed and of obstacle trademarks in terms of Article 5/1(ç)[2] of the IP Code and ask the Office to hold of examining the opposition and/or appeal until a final decision is rendered on the revocation request. Similarly, trademark squatters or infringers may target trademarks of the genuine trademark owners by abusing the administrative revocation system.

In light of all such considerations, we anticipate that the procedures for the administrative revocation can be more practical in terms of time and costs and foresee an increase in such cases. For this reason, we think that it will be suitable for the trademark proprietors ensure that their trademarks are mentioned on invoices, products, catalogues, etc., and archive these together with any other available evidence such as advertisements, magazine or newspaper articles, etc., in order to avoid problems which may arise in the future in cases of proof of use concerning revocation requests.

While the Office is accepting revocation requests as pre-applications and before the Office was able to get to the merits of the revocation requests, an application was made to the Constitutional Court by the Ankara 4^th IP Court for the annulment of the authority granted to the Office for revocation of trademarks. As a result, the Constitutional Court decided for the refusal of the application due to lack of authority to file such application by the Ankara 4^th IP Court. The Constitutional Court reasoned its decision that an application to the Constitutional Court can only be made, if a court that is hearing a case finds the provisions of a law to be applied due to this case to be contrary to the Constitution and in the present case. In other words, in order for a court to apply to the Constitutional Court, it must have a case that has been filed in accordance with the procedure and falls within the jurisdiction of the court, and the rule requested to be annulled must be applied in that case. The Constitutional Court stated that as the Ankara 4^th IP Court did not have the jurisdiction to hear the revocation action, it is not authorized / it does not have the jurisdiction to file an application before the Constitutional Court against the relevant provision as well.

Therefore, the Office still holds the sole authority to revoke the trademarks and while having more than one year has passed as of the entry into force of Article 26, all of the interested parties look forward to the entry into force of the Draft Regulation and to put the administrative revocation into force and quickly examine the pending request from 2024 and the ones which will be filed in 2025!

[1] This Draft Regulation has not yet been published as of 03.03.2025.

[2] Signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type.

First published by Gün + Partners in Apr 03, 2025.