New developments
The Amendment Regulation to the Regulation on the Implementation of the Industrial Property Law (“Amendment Regulation“) entered into force upon publication in the Official Gazette of the Republic of Türkiye No. 32842 dated 15 March 2025. Please find the Amendment Regulation here.
Background to the administrative cancellation process of the trademark
Pursuant to Article 26 of the Industrial Property Law (“IPL“), which entered into force on 10 January 2017, the Turkish Patent and Trademark Office (“TPTO“) will decide on the administrative cancellation of the trademark upon request. Nevertheless, pursuant to Article 192 of the IPL, Article 26 of the IPL granting the TPTO the authority for the administrative cancellation of trademarks will come into force on 10 January 2024. Moreover, pursuant to Provisional Article 4 of the IPL, the courts will continue to exercise the authority to decide on the cancellation of trademarks until the specified date. The effective date of Article 26 of the IPL was not postponed, and this provision entered into force on 10 January 2024. However, the regulation expected to come into force regarding the implementation of this article remained in draft form for a long time. During this period, the TPTO accepted trademark cancellation requests as preliminary applications, but it did not examine the merits. Please find below our explanations of the significant amendments introduced by this eagerly awaited Amendment Regulation.
Significant amendments introduced by the Amendment Regulation
i. Filing separate cancellation requests for each trademark
The Amendment Regulation stipulates that the cancellation of multiple trademarks cannot be requested with a single cancellation request, and that a separate cancellation request must be filed for each registered trademark. Given that there may be similarities and differences in the goods and services under the same trademarks, as well as differences in information that may affect the examination of the cancellation request, such as the registration date. It is obvious that each trademark for which cancellation is requested must be examined separately. However, each file, though it may be related, may be assigned to a different expert at the TPTO. Thus, occasionally, there may be differences in each expert’s interpretation. In this regard, measures must be taken to prevent contradictory decisions in practice. This risk may be reduced by being able to notify the TPTO about related files and by ensuring that at least the same experts examine the related files.
ii. Notification of deficiencies by the TPTO and refund of fees
Cancellation requests will be made against the person registered as the owner of the trademark before the TPTO as of the requested date or their legal successors. If the right holder has changed during the examination of the cancellation request, the proceedings will continue against the person who is the right holder in the registry without the need for further action by the claimant.
The TPTO will conduct a formal examination to verify whether the cancellation request includes the necessary elements. If the TPTO identifies any deficiency, it will give the claimant one month to resolve the deficiency. If the claimant does not eliminate the identified deficiencies within the given period, the cancellation request will be rejected without any examination of the merits. The application fee (institution fee) will not be refunded to the claimant. On the other hand, the fee held in the deposit account will be returned to the claimant upon request.
iii. Response periods for cancellation requests
If no deficiency is identified in the formal examination or if the claimant eliminates the existing deficiencies within the given period, the cancellation request will be notified to the owner of the trademark, and the TPTO will give one month to the owner of the trademark in order to submit the response and evidence against the cancellation request. The TPTO will grant the owner of the trademark an additional period of up to one month if requested within the one-month period for submitting the response and evidence. From the wording of the Amendment Regulation, it is understood that the TPTO does not have discretion in granting the additional period. In other words, an additional period must be granted upon request. However, the TPTO has discretion regarding the length of the additional period, so an additional period of less than one month may also be granted.
Additionally, if the TPTO deems it necessary, it may grant the parties a one-month period to submit additional information and documents or to provide explanations and the grounds for these. After the specified period expires, the TPTO will not take any response and evidence submitted by the parties will not be taken into consideration.
iv. Duration of the effect of the cancellation decision
As a rule, decisions regarding trademark cancellation requests have a prospective effect. However, as in the past, when the cancellation of a trademark is requested, the cancellation request must specifically state the cancellation decision for the latter to take effect before the requested date. The date on which the cancellation decision is requested to take effect also needs to be explicitly indicated in the cancellation request. In this case, if the conditions are met, the trademark may be canceled as of the date on which the cancellation conditions are fulfilled, not as of the date on which the cancellation request is submitted to the TPTO.
v. Making the cancellation request as a preliminary issue in the opposition filed against the ex officio rejection of trademark applications
There is no explicit regulation on this issue in the legislation. In cases where a trademark application is ex officio rejected by the TPTO pursuant to Article 5/1(ç) of the IPL and a cancellation request is filed against the trademark, which has been rejected due to non-use for more than five years, the outcome of opposition decision outcome remains uncertain if the retroactive trademark cancellation conditions are met. If the rejected trademark is canceled for non-use before its application date, there will be no grounds for rejection, and the publication of another trademark will not be prevented due to a trademark that is not used and unnecessarily occupies the registry. In this scenario, if the TPTO decides to suspend the cancellation request in the appeal against the ex officio refusal decision, more equitable results will arise. We believe that the TPTO will make a distinction between national trademark applications and international applications in which Türkiye is a party to the Madrid Protocol. In a recent decision, the Re-examination and Evaluation Board (“Board“) rejected a request to make the cancellation of an international trademark application a preliminary issue. The main reason of the Board’s decision is that under the provisions of the Madrid Protocol, the contracting party offices must conclude international applications within a certain period of time (the notification period for rejection decisions is 18 months for Türkiye). Failure to comply with this deadline will result in implied acceptance (registration in Türkiye) under Article 4/1-(a) of the Madrid Protocol. If the cancellation request is accepted and the application is published, and if third parties file an opposition against the publication, it will not be possible for the TPTO to issue a rejection decision under Article 6 of the IPL due to the expiration of the relevant periods. Consequently, a possible rejection decision based on a new and different provision will not have legal consequences under the relevant Madrid Protocol provision and will not be accepted as valid by the WIPO. Although there is time pressure arising from the Madrid Protocol for international trademark applications, there is no such restriction for national trademark applications.
vi. The cancellation decision cannot be given in terms of similar goods and services
According to the Amendment Regulation, after examining the proof of use evidence, the TPTO will decide on cancellation, if the evidence is not considered to be sufficient to prove that the trademark has been seriously used in the goods or services for which the cancellation is requested, or if the trademark owner does not provide evidence that would justify using the trademark. Additionally, if the use is made considering that a cancellation request will be submitted, the use within the three months preceding the submission of the cancellation request will not be taken into account.
Under the new provision introduced in the Amendment Regulation, “cancellation decisions cannot be given in respect of similar goods and services”. The meaning of this provision is not clear. We understand that if the use of the trademark for goods or services of a class or subclass is proven, a cancellation decision will not be made for other similar goods and services in the same class or subclass, even if the use of these goods and services cannot be proven. The decisions made by the TPTO on this matter will be instructive.
Additionally, the Amendment Regulation indicates that the provisions related to the defense of use, which can be claimed under Article 19/2 of the IPL in opposition to publication, will also apply to cancellation requests to the appropriate extent.
vii. Fees for cancellation requests
In addition to the provisions in Article 26 of the IPL regarding the administrative cancellation of a trademark, the Amendment Regulation states that the cancellation fee will be paid in two parts: the “institution fee” and the “fee held in the deposit account”. Accordingly, while the institution fee is directly recorded as revenue to the TPTO, the fee held in the deposit account may be paid to the parties based on the TPTO’s final decision on the cancellation procedure, or it may be recorded as revenue to the TPTO. In this context, the Amendment Regulation states that the fee held in the deposit account will be paid to the owner of the trademark upon request if the administrative cancellation request is entirely rejected by the TPTO, or to the claimant upon request if the request is entirely accepted. The parties must submit their requests for the payment of the fee held in the deposit account within 10 years from the TPTO’s final decision. If the request is not made within the specified period or if the administrative cancellation request is partially accepted, the fee held in the deposit account will be recorded as revenue by the TPTO.
Additionally, for administrative cancellation requests submitted as preliminary applications until the Amendment Regulation enters into force, the fee held in the deposit account, which had not yet been regulated when the requests were submitted, will not be requested from the claimant.
viii. Withdrawal of cancellation requests and refund of fees
In parallel with the procedure for withdrawing oppositions to publication and decision, the Amendment Regulation states that the claim can withdraw a trademark cancellation request until the TPTO makes a final decision on the trademark cancellation request. If the request is made by an attorney, a power of attorney explicitly authorizing the withdrawal needs to be submitted. If the cancellation request is withdrawn, the fee held in the deposit account will be refunded to the claimant upon request.
Conclusion
On 15 March 2025, following amendments to the IPL, the long-awaited regulatory amendments were realized. The Amendment Regulation provides a roadmap for exercising authority over the TPTO’s administrative cancellation of trademarks. While some issues that have been causing uncertainty to have been clarified with these regulatory amendments, others remain uncertain and will be determined by practice.
