General
One of the situations frequently encountered in practice is the existence of trademarks which, although registered for five years or more, have not been put to genuine use. As long as such registrations remain recorded in the trademark register, they give rise to the ex officio refusal of subsequent trademark applications that are identical or indistinguishably similar by the Turkish Patent and Trademark Office (“TURKPATENT”) pursuant to Article 5/1-ç of the Industrial Property Code No. 6769 (“SMK”).
In refusal decisions rendered under Article 5/1-ç SMK, the question of whether the earlier trademark has been genuinely used is not taken into consideration. The use requirement of trademarks registered for more than five years may only be examined within the framework of a “request for proof of use” in opposition proceedings filed under Article 6/1 SMK against published trademark applications, in respect of the marks relied upon as the basis of the opposition.
This situation leads to the ex officio refusal of numerous trademark applications due to trademarks that are not genuinely used but continue to occupy the register unnecessarily. Indeed, even if earlier trademarks are not put to genuine use, they continue to constitute an obstacle for new applications under Article 5/1-ç SMK for as long as they remain registered. In practice, overcoming such an obstacle is generally possible only where a letter of consent is obtained from the proprietor of the unused earlier mark.
Where no agreement can be reached with the proprietor of the earlier trademark regarding the issuance of a letter of consent, applicants frequently initiate revocation proceedings on the grounds of non-use against the cited mark and, in parallel, request TURKPATENT to treat the outcome of such revocation proceedings as a preliminary issue (stay of proceedings) in the examination of the refusal decision concerning the new application. At this juncture, however, the historical development of the authority to decide on revocation for non-use becomes particularly relevant for the proper assessment of practice.
Article 26 SMK, regulating the revocation of trademarks, entered into force on 10 January 2024. As of this date, the authority to decide on revocation for non-use was transferred from the courts to TURKPATENT, thereby transforming revocation into an administrative procedure. Prior to this date, revocation actions could only be filed before the competent courts and were subject to a three-tier judicial review system consisting of the Courts of First Instance, the Regional Courts of Appeal and the Court of Cassation.
In the period prior to 10 January 2024, applicants would file a court action seeking revocation of the cited trademark on the grounds of non-use; simultaneously, they would appeal the refusal decision concerning their application and request that the outcome of the pending court action be treated as a preliminary issue before the Re-examination and Evaluation Department of TURKPATENT (“YIDD”). The YIDD would take the position that granting a stay of proceedings was not a legal obligation but fell within its discretionary powers. It would further reason that, due to the three-tier judicial structure in intellectual and industrial property matters, obtaining a final and binding judgment could take a considerable amount of time. On that basis, the YIDD would conclude that the current legal status must prevail and would therefore reject requests to treat the revocation action as a preliminary issue.
Following the entry into force of Article 26 SMK on 10 January 2024 and the transfer of revocation competence to TURKPATENT, these considerations require reassessment. Since revocation requests are now examined within an administrative framework, it has become possible to reach a final decision in a significantly shorter timeframe compared to court proceedings. Pursuant to Article 20 SMK, administrative revocation decisions rendered by the Trademarks Department may be appealed within two months before the Re-examination and Evaluation Board (“YIDK”); the YIDK’s decision constitutes the final decision of the Office and is recorded in the Official Trademark Register and published in the Official Trademark Bulletin. Furthermore, the filing of a court action against a YIDK decision does not suspend the recording of the revocation decision in the register.
Under this new system, given that the authority examining and deciding upon revocation requests is directly TURKPATENT itself, and considering that a final administrative decision can be obtained considerably faster than under the former judicial model, the principle of procedural economy — a universally recognised procedural principle — acquires particular significance. It raises the question whether TURKPATENT should exercise its discretionary power in a manner that also safeguards the legal benefit derived from procedural economy.
This issue has recently been addressed in a judicial decision. In its judgment dated 21 November 2025, the 5th Civil Court for Intellectual and Industrial Property Rights of Ankara made significant findings. In essence, the court held that:
“…the authority responsible for examining, assessing and deciding upon the administrative revocation request is likewise the defendant TURKPATENT; in other words, the act awaited by the defendant institution is an administrative act to be established by itself. Since the defendant, vested with public authority, has the power to act unilaterally, it possesses the ability to take initiative in establishing an act under its effective control and thereby to carry out proceedings in compliance with the provisions of the Madrid Protocol. Therefore, should the defendant TURKPATENT REED exercise the discretion granted to it by legislation by treating as a preliminary issue the administrative revocation request pending within its own institution concerning the partial revocation of the trademark cited as the ground for refusal on the basis of non-use, it could be considered to have acted in accordance with the criteria of ‘public interest’ and ‘the requirements of the service.’ However, in the present case, the rejection of the claimant’s request to treat the outcome of the administrative revocation application as a preliminary issue was found not to be in conformity with ‘public interest’ and ‘the requirements of the service,’ and therefore the contested REEB decision was held to be unlawful.”
In light of this judgment, Article 6/3 of the Regulation on the Boards of the Re-examination and Evaluation Department of TURKPATENT, published in the Official Gazette dated 12 May 2017 (No. 30064), which grants the Board the authority to “decide to treat a matter that may affect the decision as a preliminary issue,” appears to create a field of application that warrants reconsideration, particularly with respect to administrative revocation proceedings conducted within the Office. The aforementioned court decision clearly demonstrates that the institution of a preliminary issue should not be regarded merely as a procedural mechanism, but rather as a matter requiring assessment in conjunction with the principles of public interest, service requirements and procedural economy. In this respect, it is highly probable that this approach will resurface in TURKPATENT practice in similar disputes.
