Trademark Revocations Redefined: A New Chapter in Turkish IP Law

26 May 2025

Requests regarding revocation of trademarks were under the discretion of Turkish IP Courts before January 10, 2024 which was the end of the 7 year transition period set by the Turkish IP Law. However, revocation proceedings recently became the jurisdiction of Turkish Patent and Trademark Office (“TPTO”), despite the fact that EU Directive 2015/2436 (“Directive”) provides for both the Courts and Offices having this authority.

With this article, revocation and cancellation proceedings in Türkiye will be explored in light of both recent Turkish changes and European practice.

Revocation v. Invalidity

Before exploring recent revocation changes in Turkish practice, it is important to revisit the difference between revocation versus invalidity actions. Indeed, while the recent changes mostly mentioned as relating to “revocation” actions in general for ease of reference, there exists a difference and not all actions against trademarks become TPTO’s jurisdiction.

In fact, invalidity actions based on absolute and relative grounds in Art. 5 and 6 of Turkish Industrial Property Code (“IPC”), namely actions commonly based on the grounds such as “likelihood of confusion”, “bad faith” or “earlier rights” will continue to be filed before specialized IP Courts.

One of the important differences between these two institutions is without a doubt the effect of the decision on each proceeding. For invalidity actions before specialized IP Courts, once the decision is finalized, it will be effective retroactively. Whereas in principle, the revocation will be effective starting from the date of the application for revocation, though exceptions apply where it is argued that the revocation reasons occurred at an earlier date and requested the revocation decision to be effective as of that date, in line with the Directive.

What does this mean? In simple terms, say there is an infringement action filed against you, and you have filed a counterclaim for invalidity. Though another article’s subject, Courts will usually suspend the infringement proceedings until the invalidity action is finalized in Türkiye, since even though a counterclaim can be made during infringement proceedings with the request of proof of use, failure to prove the use will not cause automatic cancellation and it is required to file a separate invalidity action against the earlier trademark. If you are successful in invalidity proceedings and the trademark which the infringement claim is based on is cancelled, the decision will be effective retroactively: there will be no trademark infringement, since there will be no trademark the infringement claim is based upon (again, though another article’s subject, general provisions such as unfair competition are excluded!). Whereas a revocation decision will be effective prospectively: You may not be able to eliminate infringement claims pre-dating the application date for revocation.

Now that the difference between these two institutions is explained, let’s explore the revocation grounds and the recent shift in practice.

When can a trademark be revoked?

TPTO now has the authority to revoke trademarks based on below claims:

– Non-use of a trademark within a period of five years following the date of registration, or suspension of the use during an uninterrupted period of five years,
– Trademark becomes generic for the registered goods or services due to trademark proprietor’s actions or as a consequence of necessary measures not taken by the trademark proprietor,
– Trademark misleading the public concerning the nature, quality or geographic origin of the goods or services for which it is registered, as a result of the use by the trademark proprietor himself or with the trademark proprietor’s consent,
– Use of trademark contrary to the technical specifications for the guarantee mark or collective mark.

Revocation grounds are in fact parallel with the Directive.

Lore of revocation proceedings in Türkiye

Türkiye’s now not-so-new IPC entered into force on 10 January 2017, and the main inspiration was EU framework. In Art. 26 of the IPC, it was stated that the revocation of the trademarks shall be within TPTO’s jurisdiction, with one catch: This Article will be in force after 7 years, in order to provide a transition period. Within this transition period, Turkish Courts continued to oversee revocation actions.

Nearing the 7-year mark, TPTO published a Draft Regulation regarding new revocation proceedings for community comments. It was assumed that necessary preparations were completed, and TPTO was ready to take the revocation proceedings on.

In contrast, although a simple “pre-request for revocation actions” option was added to TPTO’s online system, after the effective date of 10 January 2024; no further changes were introduced for quite a long time, and the trademark owners were not notified for quite some time on already-collected revocation proceedings as well.

Come March 15, 2025; Amended Regulation on the Implementation of the Industrial Property Code (“The Regulation”) entered into force. Along with other changes, a framework was finally established for revocation proceedings to be seen before TPTO.

Regulation

With the new Regulation, a procedural framework was introduced including the below key points:

– Revocation requests shall be filed against trademark owners recorded in the register and if the owner changes, proceedings continue against the new owner,
– Each revocation proceeding shall be filed against each trademark,
– Trademark owner shall have one month to present evidence and replies against the revocation request, and can request an extension,
– In addition to the fee while filing the application, an additional “legal deposit” fee shall be paid. In case the cancellation request is totally accepted, the deposit amount shall be returned to the party which filed the request. Whereas, if the cancellation request is totally refused, the deposit amount shall be awarded to the trademark holder. Finally, if the cancellation request is partly accepted, the deposit amount shall be recorded as revenue of TPTO,
– A revocation decision cannot be issued for similar goods and services.

One of the main points of contention about the Regulation is the newly introduced legal deposit. In contrast to all other proceedings before TPTO where each party bears their own costs regardless of the outcome, it is seen here that an appointment of the costs has been implemented.

In a general sense, such mechanisms were needed for proceedings before TPTO: as the fees are relatively low especially in terms of adversarial proceedings, there were not many incentives to encourage parties to settle, whereas EU Regulations include many rules in that regard.

On the other hand, in terms of the Regulation, it is seen that the legal deposit was implemented as a way to prevent the surge in revocation requests, instead of a mechanism urging the parties to settle the case. It is stated in the Regulation that if the revocation request is accepted in part, deposit will be recorded as revenue to TPTO. In contrast, EU Regulation 2017/1001 provides that if the request is accepted in part, Office shall decide on a different appointment of costs. Indeed, providing a tailor-made decision on costs for each case that is accepted in part appears to be a fairer solution. Although, it cannot be denied that both the initial application fee and the new legal deposit are relatively high in sum, and especially the mechanism for legal deposit will deter both unfounded requests, and the requests that were filed against all goods and services without grounds.

Another point of contention in this new Regulation is where the same states “A revocation decision cannot be issued for similar goods and services”. In the Directive, the same concept was worded as “Where grounds for revocation of a trade mark exist in respect of only some of the goods or services for which that trade mark has been registered, revocation shall cover those goods or services only.” (see Art. 21).

Indeed, it can only be assumed that the Regulation also aimed to state that where the revocation grounds occurred for only some of the goods and services, revocation decision will not be extended to remaining goods and services.

What’s next

Now that the Regulation has come into force, and TPTO has started to notify the non-use requests, it’s important to explore what to expect with the recent change in practice.

In terms of obtaining an effective decision, Court proceedings regarding revocation actions lasted minimum of 2-3 years with the three-tiered judicial system in Türkiye. With the new changes, even though the final decision of TPTO still can be appealed before Courts, it is expected that obtaining a decision will be quicker; since, the new Regulation provides that the decision on revocation will be effective immediately, even if a lawsuit against the same is filed.

On the other hand, the decision being effective immediately has its pitfalls such as unfairly revoked trademarks being convicted to appeal the final decision of TPTO and having to wait for the appeal process to be completed, not being able to benefit from the rights of a registered trademark. However, especially in terms of revocation requests based on non-use which we expect to see more than others, TPTO is familiar to successfully examining proof of use documents, just like the trademark attorneys understanding the concept of proof of use implemented with IPC in 2017. Overall, it is expected the newly introduced proceedings to be quicker and cost effective.

On another procedural aspect, before the recent changes, a notarized and apostilled PoA was needed for filing law actions before Turkish Courts. With the recent change, there will be no such requirement. Further, notification processes are expected to be smoother in comparison to Court proceedings, since it is expected the representatives will be notified directly: In IPC, it is stated that if a representative is appointed, notification made to the representative will be considered as made to the trademark owner. Overall, procedural requirements are now more friendly.

On the flipside, there are some downsides to the new changes. For instance, as long as the trademarks which the revocation action was filed against belonged to the same owner, it was possible to request revocation against all trademarks of interest with a single lawsuit. However, with the recent changes, it is required to file each revocation request separately, therefore fees will reincur for each request.

Arguably, one of the focal points of the recent change is the fact that revocation requests based on non-use are also now within TPTO’s jurisdiction. Among other revocation grounds, requests based on the grounds of non-use are the most common. Non-use revocation requests are effective defense mechanisms against non-used trademarks that create obstacles in terms of provisional refusals, and the trademarks that were registered for more than 5 years where a cancellation action cannot be filed against anymore.

Before this new era, Courts examined the non-use revocation actions with experts, and it was common for the experts to visit the premises of the Defendant, examine the commercial books and conduct thorough examination. Whereas, at this point where we’re at, it is not clear if TPTO resorts to such methods. Arguably, assuming the TPTO will only examine the evidence provided to the file, this circumstance increases the burden of proof upon the trademark owner.

With all said, we will see how TPTO will handle the expected surge in trademark revocation requests as they unfold.