Turkish PTO Will Handle Non-Use Cancellation Actions as of January 10, 2024

The new Turkish IP Code no. 6769 (“IP Code”) entered into force on January 10, 2017, which also regulates cancellations of trademark registrations due to non-use.

Article 9/1 of the IP Code states that “If, within a period of five years following the date of registration, the trademark has not been put to genuine use in Turkey by the trademark proprietor 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 for non-use.”

During the preparation of the new IP Code, it was aimed to authorize Turkish PTO for handling the cancellation actions including the non-use actions in parallel with the EU regulations under Directive (EU) No. 2015/2436 and Regulation - 2015/2424, which was priorly handled by the specialized IP Courts.

However, considering that such transition would need a significant preparation within the Office, and as also similarly regulated under the Directive (EU) No. 2015/2436 and Regulation - 2015/2424, the lawmakers granted a period of 7 years before the cancellation cases  are transferred to the TPTO, and it was decided that the cancellation actions will continue to be handled before the courts for the 7 year period.

Now, entering into the 7th year of the of the new IP Code, namely after January 10, 2024, the cancellation actions will be handled by the TPTO. As for the ongoing actions filed before January 10, 2024, the IP courts will continue to handle the cases as the authorized body.

However, the expected Regulation regarding the framework of the administrative cancellation actions have still not been issued yet. At this stage, the TPTO accepts “pre-application" for non-use cancellation claims and the applications state that the Office will require some additional information or payment in the following days from the parties.

While the Regulation will further define the procedures of the administrative cancellation actions, the draft regulation prepared by the TPTO (which has not been officially accepted and published yet) highlights the below points:

• » As of January 10, 2024, the TPTO is the authorized body to handle administrative non-use cancellations,
• » Non-use cancellation requests should be filed for each trademark separately, unlike the court actions the applicant cannot file a collective non-use request for multiple trademarks,
• » Like in the court proceedings, the burden of proof for non-use action trademark owner will be obliged to prove genuine use of the subject trademark. However, the two-weeks deadline for submitting evidence in the court proceedings has been extended to 1-month period. If requested within the said one-month period, the TPTO grants an additional period of up to one month.
• » The cancellation request may be withdrawn before a decision was issued by the TPTO, with the form containing the request for withdrawal of the cancellation request and a simply signed PoA.

The administrative cancellation actions are expected to be finalized in a more quick and efficient way rather than the court actions due to less procedural steps. Therefore, while the right owners will be able to have more efficient results based on their non-use requests, since it is in the public interest to keep the trademark registry clean, the right owners’ commercial activities will also be positively affected.

Still, the Regulation is expected to answer the awaited questions as well:

• » What the official fees will be in the non-use proceeding,
• » Which department of the TPTO will handle the administrative non-use cancellations,
• » Whether the appeals against the TPTO’s decision will be handled by the Office as well or directly by the IP Courts.

To summarize, the TPTO is currently accepting “pre-applications" for non-use cancellation claims in which the Office will require further information or payment in the following days depending on the Regulation to be published. With the new practice, the administrative non-use actions are expected to be a quick and effective solution to clear the registry from the trademarks that have not been put into genuine use after the 5 years grace period.