Trademark Invalidation Action in Turkey; A trademark invalidation action is a distinctive form of legal action in which the court for intellectual and industrial property rights is petitioned to declare a trademark as invalid.
The grounds for challenging the validity of trademarks are outlined under Article 25 of the Industrial Property Code, numbered 6769. As stipulated by this article, the grounds for invalidation encompass both absolute refusal reasons specified in Article 5 and relative refusal reasons outlined in Article 6 of the same 6769 numbered Industrial Property Code. This legal provision establishes the foundation for asserting the invalidation of a trademark.
Within the framework of the Industrial Property Law, Article 25 governs the conditions under which trademark rights may cease to exist, representing one of the avenues through which trademark rights are extinguished.
Alternately, trademark rights can also terminate through different channels, such as the non-renewal of a registered trademark at the conclusion of its protection term, the complete or partial relinquishment of goods or services associated with the trademark by the rights holder, or the Turkish Patent and Trademark Office’s cancellation of a trademark upon request due to non-use over a continuous period of five years or fulfillment of specific criteria outlined in Article 26 of the Industrial Property Code.
It’s worth noting that confusion often arises between the invalidation and cancellation of trademark rights. If circumstances giving rise to concerns about a trademark right emerge subsequent to its registration, the cancellation of the trademark can be pursued.
Conversely, the invalidation of a trademark is sought when there are grounds for invalidation that have persisted since the inception of the trademark right. An additional distinction is that the court can be petitioned for the invalidation of a trademark, while the cancellation of a trademark can be directly requested from the Turkish Patent and Trademark Office, as of December 22 of the year 2023 in accordance with Article 192 of the Industrial Property Code.
Furthermore, if a determination is rendered regarding the invalidation of a trademark, the effects of this decision are retroactive to the date of the trademark application, resulting in the nullification of any protection previously conferred by the Intellectual Property Code.
Conversely, if a decision is rendered for the cancellation of a trademark, the impact of such a decision is measured from the date the cancellation petition was submitted to the Patent Office.
This article focuses solely on providing an elucidation of trademark invalidation actions within the context of Turkey.
General Notes on the Trademark Invalidation Action
Trademarks can be defined as distinctive symbols that set apart the goods and services of one business from those offered by others. Typically, we perceive trademarks as markers that distinguish a company’s products or services from those of its competitors.
The primary essence of branding lies in its uniqueness; it empowers businesses to establish a clear differentiation in terms of what they provide to consumers in comparison to their rivals. Through this distinct identity, brands convey information about the origin of their products or services while preventing themselves from becoming anonymous or obscure entities within the market arena.
Undoubtedly, brand owners actively enhance the value of their brands by deploying diverse advertising strategies to enhance familiarity among consumers. Consequently, attempts by third parties to infringe upon a brand’s identity emerge once the brand gains visibility and starts accruing value in the perception of its intended audience.
In situations where third parties register identical or virtually indistinguishable trademarks with the Turkish Patent and Trademark Office, thereby causing complete or partial infringement of the trademark rights, the owner of the trademark possesses the ability to counteract this infringement by requesting the nullification of the trademark within the prescribed legal timeframe.
In most cases, the invalidation action is initiated in conjunction with a trademark infringement lawsuit, wherein the plaintiff seeks remedies including the prevention of potential infringements, cessation of the infringing activities, and elimination of the infringement itself. For a more comprehensive understanding of Trademark Infringement Lawsuits in Turkey, you can also refer to the article titled “Intellectual Property Law Firm in Turkey” that we have published.
Reasons for Filing Trademark Invalidation Lawsuits in Turkey
The grounds for initiating trademark invalidation lawsuits in Turkey are comprehensively outlined within the provisions of Article 25 of the Industrial Property Code. As outlined in Article 25/(1) of the same Code, when a circumstance enumerated in the fifth article, encompassing absolute grounds for refusal, or the sixth article, addressing relative grounds for refusal, is present, the court is empowered to render a decision declaring the invalidity of the concerned trademark.
Should the grounds for invalidation pertain to specific goods or services for which the trademark holds registration, the court will undertake a partial invalidation limited to those particular goods or services. In essence, the trademark can be invalidated either in its entirety or partially, based on the specific context.
In the process of filing a trademark invalidation lawsuit in Turkey, it is of paramount importance for the plaintiff to meticulously identify and establish the precise grounds for invalidation that will serve as the foundation for the lawsuit.
As per established rulings of the Supreme Court, except in cases of absolute grounds for refusal, the court is constrained by the grounds for invalidation put forth in the lawsuit, signifying that the court’s authority to issue an invalidation verdict is confined to the grounds explicitly presented in the initial lawsuit petition.
As per Article 5 of 6769 numbered Industrial Property Code with reference of Article 25 of the same Code, ‘signs which may not be trademark according to Article 4; signs which are devoid of any distinctive character; signs which consist exclusively or includes as an essential element of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of rendering of the services or other characteristics of goods or services; signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type; signs which consist exclusively or includes as an essential element of signs or indications used by everyone in the trade area or which serves to distinguish members of a particular professional, vocational or commercial group from others; signs which consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or other characteristics which is mandatory to obtain a technical result or gives substantial value to the goods; signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service; signs which shall be refused pursuant to Article 6ter of the Paris Convention; signs other than those covered by Article 6ter of the Paris Convention but which are of public interest, and which contain historical, cultural values, and emblems, badges or escutcheons for which the consent of the competent authority has not been given, signs that contain religious values or symbols; signs which are contrary to public policy or to accepted principles of morality; signs which consist of a registered geographical sign or which contain a registered geographical sign’ can be invalidated. If we may be bold, it is possible to call these reasons stipulated under Article 5 as ‘actual grounds for invalidation’ since as the main rule, these types of signs shall not be registered by the Turkish Patent and Trademark Office upon request.
According to Article 6 of 6769 numbered Industrial Property Code, it is accepted that one can apply to the Civil Courts for Intellectual and Industrial Property Rights for invalidation of a trademark if there is one or more reasons stipulated under Article 6. The reasons listed in the sixth article are called the relative grounds for refusal that may prevent a trademark registration upon application of a third party.
In other words, after the trademark application is published in the trademark bulletin, within a two-months period following publishing of the trademark, relevant persons can file objections before Turkish Patent and Trademark Office, invoking the respective relative grounds for refusal, thereby contesting the registration of the trademark.
The existence of absolute grounds for refusal listed in the fifth article is examined ex officio by the Patent Office on the other hand. If the two-month objection period against publication is missed by the concerned parties, and as a result to this, the aggressor trademark is registered, the next step these parties shall take is to file an invalidation lawsuit by asserting the relative grounds for refusal. The grounds for invalidation listed within Article 6 of the Industrial Property Code is as follows:
- A trademark can be invalidated upon request if it contains identity or similarity with another registered or previously applied trademark and if it contains identity or similarity of the goods or services that previous trademark covers and if there is a possibility of likelihood of confusion or association with the registered or previously applied trademark by the public.
- If the commercial representative or agent has registered without permission of the trademark owner and without a valid reason the same or indistinguishably similar trademark in his own name, that trademark can be invalidated upon request.
- If a right over a trademark or another sign used in trade was obtained by another person prior to the application date or, if applicable, the priority date, upon request posterior trademark can be invalidated.
- If a trademark is registered with the with the same or similar nature as a well-known mark within the scope of Article 6 bis of the Paris Convention, it can be invalidated upon request in relation to the same or similar goods or services it contains.
- In cases where a registered or previously applied trademark, due to the level of reputation it achieved in Turkey can lead to unfair advantage, harm the reputation of the trademark, or undermine its distinctive character, the registration of the same or similar mark can be invalidated upon request.
- The trademark application including someone else’s personal name, trade name, photograph, copyright, or any other intellectual property right, such a trademark can be invalidated upon request.
- The registration of a trademark that is the same or similar to a collective mark or certification mark, which has expired due to non-renewal, and includes the same or similar goods or services, within three years after the expiration of the protection period, can be invalidated upon request.
- The filing of a trademark application that is the same or similar to a registered mark, within two years after the expiration of the protection period of it due to non-renewal, and includes the same or similar goods or services it bears, can be invalidated upon request.
- Trademark registrations made with bad faith can be invalidated upon request.
Time Limit for Trademark Invalidation Actions
In accordance with the Industrial Property Code, numbered 6769, a noteworthy provision emerges regarding situations where a trademark owner remains inactive for a continuous span of 5 (five) years, despite being aware or having reasonable knowledge of the usage of a subsequent trademark. In such cases, the trademark owner is precluded from invoking their trademark as grounds for invalidation, unless the registration of the subsequent trademark is shown to have been pursued in bad faith.
This notion of relinquishing rights through silence is a distinct facet introduced exclusively within the framework of the Industrial Property Code, numbered 6769, for matters concerning invalidation and claims of invalidity.
It is notable that prior to the adoption of the Industrial Property Law on December 22, 2016, the concept of waiving rights through inaction was applicable in both the context of trademark invalidation and infringement actions related to trademark rights, as elucidated in decrees frequently issued by the Supreme Court. The pivotal point to emphasize is that the claim of invalidation must be presented within a reasonable timeframe in line with principles of good faith, with the legal timeframe being stipulated as five years.
It is important to note that if the entitlement to legal recourse pertaining to a trademark remains dormant for an extended period and is subsequently invoked, the subsequent trademark owner, who has acted in good faith, could have expended considerable effort and resources to establish a brand identity, promote the brand to consumers, bolster brand recognition, cultivate a customer base, and enhance the brand’s value over time.
However, pursuing an invalidation action could potentially jeopardize all the investments and endeavors undertaken by the subsequent trademark owner. Such a scenario is deemed an abuse of the right to seek invalidation, and the legal framework stated under 6769 numbered Industrial Property Code does not provide protection for such conduct.
Competent Authority for Trademark Invalidation Actions
Competent authority for trademark invalidation actions are clearly specified within the Industrial Property Code. In accordance with Article 156 of the Industrial Property Code, numbered 6769, the jurisdiction over trademark invalidation actions in Turkey lies with the Civil Courts for Intellectual and Industrial Property Rights.
Conversely, for trademark invalidation cases in Turkey, the competent courts are those situated in the defendant’s jurisdiction. This determination is explicitly outlined in Article 156 of the Industrial Property Code, numbered 6769, which specifies that in cases where third parties initiate invalidation actions against the holder of industrial property rights, the appropriate court shall be the one situated in the defendant’s place of domicile.
Which Courts/Government Bodies Enforce Registered Trademark Rights
Trademark registration, renewal, and other legal procedures such as assignment of trademark rights after registration are carried out before the Turkish Patent and Trademark Office. On the other hand, cases related to the invalidation of a trademark, in other words trademark invalidation actions and also lawsuits filed related to infringement of the trademark rights fall under the jurisdiction of the Civil Courts For Intellectual and Industrial Property Rights.
Lawsuits to be filed against the decisions issued by Turkish Patent and Trademark Office on the other hand related to cancellation of Turkish Patent and Trademark Office decisions shall be filed before the Civil Courts For Intellectual and Industrial Property Rights based in Ankara.
Consequences of Invalidation Decisions
In accordance with Article 27 of the 6769 numbered Industrial Property Code, in the event of a decision on the invalidation of a trademark under Article 25, the effect of this invalidation decision starts from the date of the trademark application, and the protection granted to the subject trademark under the Industrial Property Code is deemed never to have existed.
Essentially, by ensuring that the invalidation decision has a retroactive effect, a legally non-existent action is effectively nullified. While claims for compensation by those who have suffered due to the trademark owner’s gross negligence or bad faith remain intact, the retroactive effect of the invalidation decision does not impact finalized and executed judgments rendered in cases of trademark infringement brought before the decision, or contracts established and executed prior to the decision.
Following the finalization of the invalidation decision, the court automatically sends this decision to the Turkish Patent and Trademark Office (TPTO). Subsequent to the finalization of the decision on invalidation, the trademark is removed from the registry, and the status is published in the Official Gazette.
Contact Us For Trademark Invalidation Actions
In the intricate landscape of trademark invalidation actions in Turkey, Mesci Law Firm stands out as a paragon of legal prowess and commitment. Our expertise, strategic counsel, and unwavering dedication to protecting brands and innovation make us the go-to legal champions for clients seeking to challenge the validity of trademarks.
As businesses continue to navigate the evolving intellectual property landscape, our IP law firm in Turkey specialized on IP law matters, remain a steadfast ally, ensuring that the rights of brands are upheld and the market remains a bastion of fair competition and creativity. Should you require further information or a case evaluation related to trademark invalidation actions or other IP law matters, please don’t hesitate to contact our IP law firm in Turkey.