Significant amendments are on the horizon for Turkey’s industrial property landscape. A draft revision to the Regulation on the Implementation of the Industrial Property Law proposes to transfer the authority for trademark cancellation to TURKPATENT, a substantial shift in the current practice. This move aims to streamline the process of cancelling trademarks that are not in use, as stipulated under the Industrial Property Law (SMK), particularly Article 9.
Key Aspects of the Draft Amendment:
Legal Basis for Non-Use Cancellation Lawsuits:
Article 9 of the SMK (Law No. 6769) clearly states that trademarks not seriously used in Turkey for the goods or services for which they are registered, without a valid reason, within five years from the registration date, are subject to cancellation actions.
This regulation intends to purge the Trademark Registry of unused trademarks, a principle also embedded in the earlier repealed Decree Law No. 556.
Mandatory Trademark Use:
The SMK mandates serious use of a trademark within Turkey for the goods or services it is registered for. The concept of 'serious use' is interpreted as the use of the trademark in a manner that affects the market in line with its purpose and functions.
Cancellation Request Procedure:
Before January 10, 2024, the responsibility for handling lawsuits related to the cancellation of trademarks due to non-use rested with the Court of Intellectual and Industrial Property Rights (Fikri ve Sınai Haklar Hukuk Mahkemesi).
Following the implementation of Article 26/7 of the Industrial Property Law, which takes effect seven years after its publication, the authority to make decisions on trademark cancellations will shift to TURKPATENT from January 10, 2024. After this date, TURKPATENT will begin to manage the initial processing of requests for the cancellation of trademarks that have not been used. If there are any disagreements or objections, these cases will then be referred to the courts for further proceedings.
Evidence in Non-Use Cancellation Lawsuits:
In these lawsuits, evidence such as Turkish Patent and Trademark Office records, Supreme Court decisions, Trade Registry Records, accounting records, expert assessments, and other legal evidence will be scrutinized to establish non-use.
Burden of Proof:
The burden of proof traditionally lies with the plaintiff. However, in non-use cancellation lawsuits, this burden shifts to the defendant, i.e., the trademark owner, who must demonstrate serious use of the trademark in Turkey within five years from the registration date.
Cancellation Date of the Trademark:
The cancellation of a trademark due to non-use will take effect from the date the cancellation request is submitted to TURKPATENT, with the possibility of retroactive effect if substantiated.
This amendment, once enacted, will mark a critical transition in how trademark cancellations are handled in Turkiye, emphasizing the need for active and serious use of trademarks. It is advisable for trademark owners to seek legal advice, especially in light of these impending changes, to ensure compliance and protection of their rights.