If a registered trademark is not used without proper reasons for an uninterrupted period of five years, an administrative revocation application must be submitted to the Turkish Patent and Trademark Office (TÜRKPATENT) for the deregistration of the trademark from the register. Pursuant to the statutory regulation entering into force on January 10, 2024, TÜRKPATENT has been granted direct jurisdiction over requests for trademark revocation due to non-use. This process aims to terminate the unjust monopoly right of proprietors who do not genuinely use their registered trademarks in trade. The application may be initiated before the official authority by any interested party and is adjudicated through an administrative examination procedure.
What is trademark revocation due to non-use?
Trademark revocation due to non-use is the revocation of the registration and expungement from the register, by administrative decision, of trademarks that have not been put to genuine use in Turkey without justifiable grounds within a five-year period from the registration date, or whose use has been suspended for an uninterrupted period of five years. Under the Industrial Property Code No. 6769 (IPC) framework, while trademark registration confers upon its proprietor an absolute exclusive right (monopoly right), it simultaneously imposes an obligation to genuinely use the trademark on the market. The trademark proprietor is required to conduct commercial activities under this sign across the classes of goods or services for which it is registered. The persistence of unused signs on the register unjustly restricts the freedom of trademark selection for new market entrants.
Pursuant to Article 9 of the IPC, trademarks that are not put to genuine use without proper reasons within five years of registration face the risk of revocation. Use here must be genuine and commercial use of such nature as to preserve the distinctive character of the mark and reach the relevant public. Token or symbolic transactions carried out solely to preserve the registration do not constitute legally valid use. The mere appearance of the registered sign on the register does not provide the proprietor with an unlimited protective shield.
What are the conditions for trademark revocation due to non-use?
The conditions for trademark revocation due to non-use are that the trademark must be registered, five years must have elapsed since registration, and genuine use must not have occurred during this period in the absence of justifiable grounds. The first fundamental requirement is the existence of a finalized registration of the trademark on the register of the Turkish Patent and Trademark Office; this process cannot be initiated for marks still at the application stage. Second, an uninterrupted five-year period must have elapsed from the date of registration, or use must have been discontinued for a continuous five-year period. The final requirement is the absence of any legal or factual force majeure justifying this inaction on the part of the proprietor.
The legislator provides the trademark proprietor with a five-year grace period following registration to make commercial investments and launch the trademark on the market. Filing a revocation application before this five-year waiting period expires is legally impossible. The calculation of the period is based on the registration date when the trademark was published in the bulletin. If the proprietor ceases activities during the five-year period without justifiable grounds, the five-year period counting backward from the date the revocation request was filed with the Office is examined.
Which authority has jurisdiction over revocation requests?
As of January 10, 2024, the sole competent authority for trademark revocation requests grounded on non-use is the Turkish Patent and Trademark Office. Until this date, such disputes were resolved through revocation lawsuits brought before the courts. Pursuant to Article 192 of the IPC, the entry into force of Article 26 governing grounds for revocation had been deferred for seven years. As of January 10, 2024, this deferral period expired, transferring trademark revocation jurisdiction from the civil judiciary directly to the administrative body.
Through this jurisdictional transfer, the revocation process has acquired a much swifter and more practical workflow compared to judicial litigation. However, revocation lawsuits initiated before competent courts prior to January 10, 2024, will continue to be concluded before those courts. In the new era, filing an action directly before the court results in procedural dismissal for lack of jurisdiction or absence of cause of action prerequisites. Therefore, parties seeking revocation must electronically submit their applications directly to the TÜRKPATENT headquarters in Ankara.
How is an application for trademark revocation filed with TÜRKPATENT?
An application for trademark revocation is filed with TÜRKPATENT via the Office’s Electronic Application System (EPATS) by paying the relevant official fee and uploading a reasoned revocation petition to the system. The application may be submitted by any person holding a legitimate interest in the revocation of the trademark, or by third parties generally. When seeking revocation, the registration number of the targeted trademark and the classes of goods or services sought to be revoked must be specified unequivocally. Asserting the request as a partial revocation limited to specific goods or services is also legally permissible.
The revocation process proceeds through sequential procedural stages. In this context, the administrative application procedure comprises the following essential steps:
- Preliminary examination: TÜRKPATENT examines the revocation application with respect to formal requirements and official fees; if deficiencies are identified, it grants a peremptory time limit for their rectification.
- Service upon the trademark proprietor: Once formal examination is complete, the application is served on the trademark proprietor to allow submission of defenses and evidence.
- Defense period: The trademark proprietor must submit evidence showing use of the trademark or proper reasons to the Office within one month of receiving service; the proprietor may request an extension of one additional month during this period.
- Examination on the merits: Office examiners evaluate the submitted evidence of use against the case file and determine whether genuine use of the trademark occurred within the registered classes.
- Decision and registration entry: Failure to substantiate use results in a decision ordering the revocation and expungement of the trademark from the register.
How is genuine use of the trademark proven in revocation proceedings?
In revocation proceedings, genuine use is established through concrete, dated, and verifiable evidence demonstrating that the goods or services for which the mark is registered were genuinely commercialized in the market. The burden of proof rests entirely on the trademark proprietor defending against the revocation; the applicant bears no burden of proving non-use. To prove use during the relevant five-year period, the proprietor must submit commercial invoices, delivery receipts, price lists, customs declarations, packaging specimens, and promotional materials. Product names or service descriptions appearing on invoices must explicitly contain the registered trademark sign.
Use of the trademark sign exclusively on goods destined for export, rather than solely domestic use, is also recognized as valid use under the IPC. Furthermore, use of the trademark with elements that do not alter its distinctive character, or market launch through authorized licensees, constitutes use by the proprietor. However, sales of negligible volume that lack commercial continuity and are evidently intended merely to preserve registration do not qualify as genuine use.
What circumstances constitute proper reasons for non-use?
Proper reasons for non-use are extraordinary and force majeure circumstances arising outside the will of the trademark proprietor that legally or factually prevent business operations. Commercial risks, insufficient enterprise capital, protracted market research, or lack of product demand are internal operational risks not recognized as justifiable grounds. Conversely, import bans, statutory restrictions imposed on public health grounds, cancellations of sectoral regulatory permits, or natural disasters may be evaluated as proper reasons. A proprietor claiming a justifiable ground must substantiate with official documentation the existence of the impediment and how it rendered commercial operations directly impossible.
Is an appeal available against decisions in trademark revocation proceedings?
Decisions rendered by TÜRKPATENT regarding a trademark revocation application may be appealed before the Re-examination and Evaluation Board (YİDK) within two months of the notification of the decision. Both the party requesting revocation and the trademark proprietor against whom the decision was rendered may exercise this right of appeal. The YİDK examines the appeal on the record as the final administrative body, conclusively terminating the administrative phase. Against revocation or rejection decisions finalized by a YİDK decision, an action may be filed before the Ankara Civil Court of Intellectual and Industrial Property Rights within two months of service.
What are common mistakes in revocation requests?
Common mistakes in revocation requests include filing the application before the five-year statutory use period expires, paying deficient fees, and making errors regarding the competent authority. Parties frequently overlook the current statutory framework, prematurely initiate direct court litigation, and lose time due to procedural dismissals. When applying, the current official fee schedule of the Office must be checked, and the applicable application fee must be paid in full; deficient fee payments lead to procedural rejection of the request. On the side of trademark proprietors, the most common error is submitting general corporate brochures or undated visuals under the assumption that they constitute sufficient evidence.
Another critical mistake is missing the deadlines for defense and submission of evidence. If a trademark proprietor receiving service of the revocation fails to act within the statutory one-month time limit or fails to request an extension within this window, the right to subsequently introduce evidence may be forfeited. Similarly, asserting blanket revocation requests against all registered classes when partial revocation is available can needlessly prolong proceedings even for classes where the claims are well-founded.
Concrete dispute scenario
In a concrete scenario, a hotel supplier enterprise operating in the Antalya region sought to file a trademark application for its newly developed industrial cleaning product line. A preliminary search revealed that the selected sign belonged to a dormant company that registered it eight years prior but engaged in no commercial activities since registration. To avoid a registration impediment, the entrepreneur secured legal assistance for Antalya-based commercial operations through Atty. & Med. Billur Güler Aslım and initiated an administrative revocation application before TÜRKPATENT on grounds of non-use. Following notification by the Office, the trademark proprietor failed to produce any commercial invoices or valid evidence of use, resulting in the expungement of the registration and clearing the path for the new venture’s registration.
Purging unused trademarks from the register serves a vital function in preventing unjust monopolies and paving the way for new market investments. As of 2024, trademark revocation applications handled administratively are subject to strict procedural rules and stringent time bars. Meticulous preparation of evidence in compliance with the law, strict adherence to statutory deadlines, and continuous monitoring of the trademark register are essential to prevent the forfeiture of rights at every stage of the proceedings.
