When the trademark renewal deadline is missed, trademark protection does not expire automatically; the proprietor may renew the registration within an additional six-month grace period by paying a fine-inclusive surcharge fee, but if this additional period is also exhausted, the trademark right lapses entirely. Following these preclusive time periods granted pursuant to Article 23 of the Industrial Property Code No. 6769 (IPC), the trademark is deregistered from the registry. The exclusive right over the unregistered sign is thereby lost.
What is the protection term of a trademark registration?
The term of protection for a trademark registration is precisely 10 years, calculated from the application filing date. A sign whose registration term expires may be renewed indefinitely for ten-year periods each time, provided that the proprietor submits a renewal request before the Turkish Patent and Trademark Office (TÜRKPATENT) within the prescribed time limit.
Industrial property protection in Turkey is based on the principle of registration. The commencement of the ten-year period is not the issuance date of the registration certificate, but the precise day on which the official application is filed into the office system. Consequently, the fact that the application process takes months due to examinations or oppositions does not advance the starting point of the ten-year term of protection.
Extending the protection term in ten-year intervals grants businesses that actively use their trademarks in commercial operations an indefinite exclusive right. For the renewal request to be deemed valid, relevant fees must be paid within the deadline and the request must be duly submitted in accordance with procedural rules. Monitoring the deadlines is entirely the responsibility of the right holder; the office is under no obligation to separately notify that the term is ending.
When does the normal trademark renewal period begin?
The normal trademark renewal period starts within 6 months prior to the expiration date of the ten-year term of protection and ends at the close of business hours on the day the protection term expires. When proprietors submit their renewal applications to the TÜRKPATENT system within this ordinary period, they pay the renewal fee according to standard official tariffs and incur no loss of rights.
The provision of Article 23/1 of the IPC grants businesses a six-month application window to afford sufficient preparation time before the term of protection expires. For proceedings executed within this timeframe, only the standard renewal fee determined under the annual official tariff is collected. Upon timely filing of the application, the new ten-year period runs continuously from the moment the preceding period expires.
The following steps are observed when conducting the renewal process during the normal period:
- The registration status of the trademark and the expiration date of the ten-year period are verified through the TÜRKPATENT online registry system.
- It is determined whether any partial limitation will be made to the specification of goods and services covered by the registration.
- The official standard renewal fee for the relevant calendar year is paid, and the request is filed into the system by the registered proprietor or their trademark attorney.
What are the terms and conditions for late trademark renewal with a fine?
The late renewal period subject to a fine is an uninterrupted 6-month additional grace period that starts running from the day following the date on which the normal ten-year term of protection expires. A proprietor who misses the normal deadline is afforded the opportunity to preserve their trademark pursuant to Article 23/2 of the IPC, subject to payment of the additional surcharge fee prescribed by law.
This additional grace period serves as a secondary safeguard established by the legislator for trademark owners who missed the initial six-month period due to inadvertence, communication failures, or changes of legal representatives. However, conducting the procedure during this period incurs higher costs. The proprietor must remit both the standard renewal fee and the additional penalty renewal surcharge specified in the legislation to the office treasury. As official fee amounts are adjusted at the beginning of each calendar year according to the revaluation rate, the official tariff schedule in force at the time of the transaction must be taken as a basis.
The commencement and expiration of the six-month penalty renewal period constitute a strict preclusive time limit. Extending, staying, or reinstating this period via restitutio in integrum requests is, as a rule, legally impermissible. If the final day of the six-month penalty period coincides with an official holiday, the deadline is extended until the close of business hours on the first subsequent working day.
What happens to a trademark whose renewal deadline is completely missed?
The trademark whose renewal period has been completely missed during both the normal and the six-month penalty grace periods undergoes definitive lapse of protection rights. Pursuant to Article 26/1-(b) of the IPC, a trademark whose term of protection has expired and which has not been renewed becomes invalid, is struck off the register by TÜRKPATENT, and is published in the official bulletin for public disclosure.
Upon deregistration (cancellation from the register), the proprietor’s exclusive rights arising from the registration over that sign cease. The rights to enjoin third parties from using that sign, seize counterfeit goods, or seek preliminary injunctions before customs authorities are extinguished. Corporate reputation built on years of investment, the distinctive power of the trade name in the eyes of consumers, and market share are exposed to severe legal vulnerability.
The primary legal and commercial consequences arising from the lapse of registration are as follows:
- The monopoly right arising from registration terminates, and the sign carries the risk of becoming open to free public use.
- The trademark owner is initially deprived of registration-based protection against third parties seeking to register identical or confusingly similar signs.
- Trademark rights subject to license, pledge, or distributorship agreements lose their legal validity, potentially giving rise to contractual damages and liabilities.
Can third parties immediately register a lapsed trademark?
Third parties are not unconditionally free to register a lapsed trademark immediately; a protective transitional grace period is granted by law to the prior proprietor. Pursuant to Article 15/3 of the IPC, an application for registration of a trademark that has lapsed due to non-renewal shall be refused upon opposition of the prior owner for a period of 2 years following the expiration of the protection term.
By enacting this provision, the legislator aims to prevent the immediate bad-faith appropriation of inadvertently lapsed trademarks by third parties. To benefit from this two-year shield of protection, the former trademark owner must have genuinely used the trademark. If the prior right holder has not continuously used the trademark in commercial operations within the preceding five years, they cannot rely on this protective provision against third-party registration applications.
Should a third party apply to TÜRKPATENT for an identical or similar sign within this two-year period, the office will not reject the application ex officio. The prior right holder must timely lodge an official opposition against the published application during the official bulletin publication stage. If no opposition is filed, the application may proceed to registration, compelling the former proprietor to initiate a protracted invalidation action.
What are the common mistakes made during the trademark renewal process?
The most common mistake made during the trademark renewal process is assuming that the commencement date of the ten-year protection period is the date of issuance of the registration certificate, thereby overlooking the filing date. Another critical error is failing to notify TÜRKPATENT of changes in corporate title or registered address, causing official notifications to be dispatched to the prior address and resulting in missed deadlines.
Enterprises frequently fail to record renewal schedules in their corporate compliance calendars and improperly consider the issuance day of the registration certificate as the baseline. Since registration certificates are sometimes issued a year or more after the application date, this calculation error directly triggers the forfeiture of preclusive deadlines. Furthermore, failure to record corporate reorganizations or changes in company type (such as conversions from limited liability companies to joint-stock companies) on the trademark register generates title and ownership disputes.
Other major pitfalls encountered by enterprises throughout this process include:
- Relying on deceptive invoices or misleading letters mimicking official institutions and paying fees to unauthorized parties.
- Falling prey to the unfounded belief that the six-month penalty grace period may be extended by courts under any circumstances.
- Missing attorney or office notifications because contact e-mail addresses have not been maintained or updated.
Which court has jurisdiction over actions concerning a lapsed trademark?
The competent and specialized court of subject-matter jurisdiction for invalidation actions brought against trademarks that lapsed and were wrongfully registered by third parties is the Civil Court for Intellectual and Industrial Property Rights. In judicial jurisdictions lacking such a designated specialized court, the action must be filed before the local Civil Court of First Instance sitting in its capacity as an intellectual property court.
For instance, within the jurisdiction of Antalya, where no independent specialized court exists, industrial property disputes are adjudicated by the competent Antalya Civil Court of First Instance sitting as a Civil Court for Intellectual and Industrial Property Rights. The plaintiff petitions for the invalidation and deregistration of the newly registered trademark by pleading prior genuine ownership, bad faith, or the provisions of Article 15/3 of the IPC.
Throughout litigation proceedings, the plaintiff must substantiate continuous historical use of the trademark via invoices, catalogs, customs declarations, advertising expenditures, and commercial contracts. Should the court find bad faith on the part of the applicant acquiring the registered right, it shall rule on the invalidity of the registration. However, as such judicial proceedings can prove both costly and time-consuming, timely renewal remains the safest legal course.
Hypothetical example
The following case is fictional. A furniture manufacturer inadvertently misses the ten-year protection term of its registered trademark and the subsequent six-month penalty grace period. TÜRKPATENT deregistrates the trademark from the register. A competing manufacturer notices the lapse and files a registration application for the identical trademark. Because the two-year protective period under Article 15/3 of the IPC has not expired, the initial manufacturer lodges an opposition during the official bulletin publication and submits evidence of continuous genuine use. The office sustains the opposition and refuses the competitor’s application; the original manufacturer may then file a fresh application to re-establish statutory protection over its rights.
Frequently asked questions
Can a new application be filed for a trademark whose renewal deadline was missed?
Yes, the owner of a lapsed trademark may at any time file a fresh, de novo trademark application for the same sign and identical classes of goods and services. However, the protection date of this new application begins on the new filing date rather than the historical date, and prior rights may be forfeited if third parties have filed in the intervening period.
Does an unregistered sign remain completely defenseless once its term expires?
No; even if the trademark registration lapses, the right holder may partially protect the sign by invoking unfair competition provisions set forth under the Turkish Commercial Code No. 6102 (TCC). Nonetheless, rights in an unregistered mark are substantially more difficult to establish and enforce in court compared to the absolute monopoly rights and interlocutory measures afforded by formal registration.
How much is the penalty renewal fee?
It depends on the official fee schedule; the fine-inclusive renewal surcharge is approximately double the standard renewal fee and is redetermined annually by TÜRKPATENT at the start of each calendar year. Exact and current cost items must be ascertained directly through the office system by reviewing the official fee schedule valid on the date of execution.
After how many years may an unrenewed trademark be freely registered by anyone?
Two years; once the two-year statutory opposition term granted to the former proprietor under Article 15/3 of the IPC expires, the sign may be registered freely by third parties unencumbered by the prior owner’s use claims. Following this period, the former owner may rely solely on general provisions and rigorous assertions of bad faith.
References
- Industrial Property Code No. 6769
- Turkish Commercial Code No. 6102
This text is for general informational purposes; legal outcomes may vary depending on the specific circumstances of each case.
