Current situation and issues in Turkiye regarding administrative cancellation of trademarks
03 Feb 2023 | Newsletter
The IP Code (No. 6769) that took effect on 10 January 2017, distinguishes between trademark cancellation and invalidation and lists the reasons for termination in three categories: invalidation (Article 25), cancellation (Article 26), and other reasons such as expiry of term and non-renewal.
Administrative cancellation, previously not regulated in Turkish Trademark Law, is covered in Article 26 of the IP Code, and aligns with the EU Directive 2015/2436 and Regulation 2017/1001. The grounds for cancellation are listed as (1) non-use of a registered trademark for five years without a justifiable reason; (2) use of a guarantee trademark and/or a collective trademark contrary to technical regulation; (3) a trademark misleading the public concerning the nature, quality or geographic origin of the goods or services for which it is registered; and (4) a trademark becoming generic for the registered goods or services.
Turkish Patent and Trademark Office (“TÜRKPATENT”) will be responsible for deciding on cancellations starting 10 Jan 2024, as per Article 26 of the IP Code, but courts can still cancel trademarks until that date.
Even though the new procedure, eagerly awaited and closely followed by all IP practitioners, is now less than a year away, there are still many questions that require answers and issues seeking clarification.
1) Possible Negative Consequences of Granting the Power of Cancellation of Trademarks Solely to TÜRKPATENT
The provision in the IP Code granting TÜRKPATENT the exclusive power to cancel trademarks goes against the EU Directive (EU) No. 2015/2436, which states that Member States shall provide an efficient administrative procedure for the revocation or declaration of invalidity of trademarks and that the administrative cancellation power granted to offices does not abolish the cancellation power of the courts.
This mismatch in regulations may lead to negative consequences, such as deprivation of rights granted by decisions with retroactive effect and elimination of the right to request the cancellation of a trademark before the court, which is considered to be contrary to the right to a fair trial as outlined in the Constitution.
Currently, in trademark infringement cases, a plaintiff may file a lawsuit to prevent and stop the infringement and invalidate the trademark. The defendant has the right to file a counterclaim of non-use and request the cancellation of the plaintiff’s trademark. However, when the IP Code takes effect in 2024, the right to file a counter-action will be eliminated, potentially depriving the defendant of the ability to exercise the rights of the “counter-claimant” in the proceedings.
The regulation in Article 26/1 of the IP Code may also be seen as violating the constitutional right to a fair trial. Article 36 of the Constitution states that everyone has the right to a fair trial and to claim and defend their rights as a plaintiff or defendant. The regulation in Article 26/1 may be viewed as limiting this right by eliminating the option to request a trademark cancellation before the court. This could potentially result in a challenge to the Supreme Court to annul TÜRKPATENT’s exclusive authority to decide on trademark cancellations.
2) Issues related to the Procedure
a. Issue of whether the Procedural Process for the Administrative Cancellation of the Trademark carried out by TÜRKPATENT is Sufficient
Article 26/7 of the IP Code outlines the procedure for cancellation requests and the trademark owner’s right to respond within a month (with a possible extension). Regulation (EU) No. 2017/1001 provides more flexibility, but the IP Code restricts the exchange of pleas and may limit the right to reply.
There are uncertainties in how TÜRKPATENT will handle responses after deadlines, evaluate evidence, or implement the “prohibition of expanding the case.”. It is thought that it will be possible to resolve the uncertainties on these issues through secondary legislation.
b. Uncertainty regarding the Possibility of Withdrawing a Cancellation Request
TÜRKPATENT’s acceptance of a withdrawal of a cancellation request is unclear. Since the purpose of the provisions that order the use of a trademark is to prevent trademarks from occupying space in the register and thus reduce the number of disputes that may arise due to registered trademarks, the issuance of these decisions also serves the public interest. In this sense, a secondary regulation may stipulate that the withdrawal of cancellation requests will not be allowed.
c. Uncertainty regarding Finalization Date of a Cancellation Decision
The finalization date of a cancellation decision by TÜRKPATENT is uncertain. A cancellation decision may be deemed final after two months if no lawsuit is filed, or after a lawsuit challenging TÜRKPATENT’s decision is finalized. Due to the length of a lawsuit process, the purpose of accelerating cancellation process through administrative proceedings may be jeopardized.
d. Uncertainty as to whether the Decision of Cancellation will be considered a Preliminary Issue
TÜRKPATENT’s consideration of cancellation as a preliminary issue and suspension of simultaneous processes is unclear. Therefore, there is also a need to clarify in which decisions and processes TÜRKPATENT will implement the suspension mechanism.
e. Uncertainty regarding objections on grounds of another action pending
It is not possible in the current practice for TÜRKPATENT to be aware of cancellation actions currently pending before courts. Therefore, it is considered that it would be beneficial to establish a structure enabling this issue to be asserted as a defence through secondary legislation.
f. Necessity of a Regulation on Res Judicata Defence
It is possible to make an unlimited number of cancellation requests for a trademark. However, in terms of the settled matter principle, at least for trademarks the parties of which are the same as well as the ground for cancellation, there are opinions that it would be beneficial to have a regulation that prevents multiple cancellation requests from being taken again at least for a certain period of time. In this context, it is evaluated that it would be appropriate to adopt the res judicata principle adopted by EUIPO in Türkiye, as well.
3) Uncertainties in Corporate Organization
It’s not yet clear which department of TÜRKPATENT will handle administrative cancellation requests as of January 10, 2024. Three possibilities are being discussed: (1) requests are first handled by the Trademarks Department, with the Board of Re-Examination making final decisions on appeals; (2) a new department is established, with the Board of Re-Examination handling appeals; or (3) a single review is made by the Board of Re-Examination. In our opinion, considering that the Trademarks Department has gained significant experience in the proof of use processes in recent years, the first scenario would be the most efficient way to implement.
4) Issues on Merits of Cases
a. Ambiguity as to whether Refiling is to be considered Bad Faith
Despite the recent practice of TÜRKPATENT and the courts to consider re-filings as bad faith in non-use cancellation actions, there is no regulation on when re-filings will be considered bad faith. This will become important with the administrative cancellation process. Clarification is needed on whether refiling of a trademark in the face of an administrative cancellation request would be deemed bad faith.
b. Ambiguities in the Scope of Examination:
If a trademark is registered for a subclass of goods within a Nice class but used only on a specific good in that subclass, the question arises on what will happen if use is proven for only that specific good. Will the trademark be cancelled for goods other than that specific good by issuing a partial cancellation decision, or will the use of that specific good be deemed to have been accepted for the entire subclass of goods covered by that specific good, resulting in the cancellation request being rejected? The framework for examination in this respect needs to be defined.
In conclusion, the upcoming changes in administrative and procedural matters will have a significant impact in the industry. With the TÜRKPATENT set to take over in less than a year, it is crucial that necessary additional regulations are put in place promptly to prevent any potential issues in practice.