A trademark invalidation lawsuit can be defined as a special type of lawsuit where the invalidity of a trademark is requested from the relevant court. The legal grounds for invalidation of trademarks are regulated under Article 25 of the 6769 numbered Industrial Property Code. According to the mentioned Article, the existence of absolute grounds for refusal specified in Article 5 and relative grounds for refusal regulated in Article 6 of the 6769 numbered Industrial Property Code constitutes legal grounds for invalidity.
The state of invalidity regulated in Article 25 of the Industrial Property Law is one of how trademark rights come to an end.
The non-renewal of a registered trademark at the end of its protection period (Article 23 of the Industrial Property Code), the partial or complete abandonment of goods or services covered by the trademark by the rights holder (Article 28 of the Industrial Property Code), cancellation of a trademark by the Turkish Patent and Trademark Office upon request of the interested party due to non-use of a trademark for a consecutive period of five years or existence of one of the conditions specified in Article 26 (Article 26 of the Industrial Property Code) are the other ways in which the trademark right can be terminated.
It is observed that the invalidation of a trademark right is often confused with cancellation of the trademark right. If certain reasons arise regarding the trademark right in a period of time after registration, the cancellation of the trademark may be requested; while invalidation of the trademark may be requested if there are invalidation reasons that have existed since the beginning of the trademark right.
Another difference is that invalidation of a trademark can be requested from the court, while cancellation of the trademark may be requested directly from Turkish Patent and Trademark Office as of December 22, 2023, by Article 192 of the Industrial Property Code.
Furthermore, if a decision is made regarding the invalidation of the trademark, the decision on invalidation will take effect from the date of the trademark application, and the protection provided by the Intellectual Property Code will be deemed never to have existed for the trademark, whereas if a decision is made for the cancellation of the trademark, this decision will take effect from the date the cancellation request was submitted to the Patent Office. In this Article, we will only address and explain the issue of trademark invalidation lawsuits in Turkey.
Importance of Trademark Invalidation Lawsuits in Turkey
We can define trademarks as signs that distinguishes the goods and services of one business from those of another. Typically, we understand trademarks as signs that serve to differentiate one company’s products or services from others’. The most notable function of branding lies within its distinctiveness; it allows businesses to set themselves apart in terms of what they offer consumers vis-à-vis their competitors.
Through this uniqueness, brands provide information about where their goods or services originate from while safeguarding against becoming anonymous or unknown entities in the market sphere. Without question, brand owners actively bolster the worth of their brands by employing various advertising strategies to increase recognition among consumers. Therefore, infringement attempts of third parties arise springs forth once a brand garners visibility and starts gaining value in the eyes of its target audience.
In cases where third parties register the same or indistinguishably similar trademarks before the Turkish Patent and Trademark Office and thus wholely or partially infringement of the trademark right occurs, the trademark owner can prevent the infringement of his trademark right by requesting the invalidity of the trademark within the legally prescribed period.
Generally, in such cases, the invalidation lawsuit is filed together with a trademark infringement lawsuits bearing demands of the plaintiff including prevention of likely infringement from occur, cease of the infringing actions, removal of the infringement. In order to obtain detailed information on Trademark Infringement Lawsuits in Turkey, you can also visit the Article we have published, Intellectual Property Law Firm in Turkey.
Reasons for Filing Trademark Invalidation Lawsuits in Turkey
Reasons for filing trademark invalidation lawsuits in Turkey are detailly stipulated under Article 25 of the 6769 numbered Industrial Property Code. Under Article 25/(1) of the Industrial Property Code, if one of the situations listed in the fifth article addressing to absolute grounds for refusal or the sixth article addressing to relative grounds for refusal exists, the court shall decide on the invalidation of the subject trademark.
If the grounds for invalidation concern certain goods or services for which the trademark is registered, the court shall only partially invalidate the trademark with respect to those specific goods or services. In other words, it is possible to invalidate the trademark either entirely or partially. When filing a trademark invalidation lawsuit in Turkey, the plaintiff must determine in advance, the specific grounds for invalidation on which the lawsuit will be based on.
According to common Supreme Court decisions, except for absolute grounds for refusal, the court is bound by the grounds of invalidation asserted in the lawsuit, meaning that, the court cannot render an invalidation decision based on grounds other than those presented in the 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-month period following the 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 the 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 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 about 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.
An Exception to Trademark Invalidation Lawsuits in Turkey
As mentioned above, a trademark may be declared invalid upon the request of the interested party in cases where the sign lacks the distinctive character (Article 5/1-b of the Industrial Property Code); the sign indicates the kind, type, quality, quantity, purpose, value, geographical origin of the goods, or the time of production of the goods or provision of services, or primarily consists of such indications or designators (Article 5/1-c of the Industrial Property Code); the sign consists 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 (Article 5/1-d of the Industrial Property Code).
However, the fourth paragraph of Article 25 of the Industrial Property Code constitutes an exception to this provision thus an exception to trademark invalidation lawsuits in Turkey. As per Article 25/4 of the Turkish Industrial Property Code, a trademark that has been registered in violation of the provisions of paragraphs (b), (c), and (d) of the first paragraph of Article 5 and has acquired distinctive character among consumers for the goods or services it bears upon use of the brand in Turkish trade area, it cannot be declared invalid.
Loss of Right Due to Remaining Silent
According to 6769 numbered Industrial Property Code, if the trademark owner remains silent for a consecutive period of five years, knowing or having to know that a subsequent trademark is being used, the owner cannot invoke their trademark as a ground for invalidation unless the registration of the subsequent trademark is in bad faith.
It can be observed that the concept of loss of rights through silence has been specifically regulated only for cases of invalidation and invalidity claims with the adoption of Law 6769 numbered Industrial Property Code. As known, during the period of Decree Law No. 556 on the Protection of Trademarks, the concept of loss of rights through silence was not explicitly regulated in the content of the decree.
However, during the period before the adoption of the Industrial Property Law on December 22, 2016, the concept of loss of rights through silence was applicable in both the invalidation of the trademark and infringement actions concerning trademark rights, according to decrees commonly issued by the Supreme Court. It can be stated that the invalidation claim must be filed within a reasonable period of time by the principles of good faith.
The period specified in the law is five years. If the right to take legal action regarding the trademark remains dormant for a long period and is later exercised, the subsequent trademark owner, who acted in good faith, may have put significant effort and incurred expenses to establish a brand identity, promote the brand to consumers, increase its recognition, build a customer base, and enhance the value of the brand over the years.
However, with an invalidation lawsuit, all the expenses incurred and efforts made by the subsequent trademark owner could be taken away. Such a situation is considered an abuse of the right to invalidate, and the legal system does not protect such an act. There are many Supreme Court decisions we can show related to loss of right due to remaining silent. A few of them are as follows for your information:
In 15.04.2015 T., 2013/11-1831 E., 2015/1198 K. numbered decision of Assembly of Civil Chambers of the Supreme Court it is clearly stated that, “… In the specific dispute, considering that the defendant has been using the mark in question, which is similar to the plaintiff’s mark and has been registered and announced by the Turkish Patent and Trademark Office (TPTO), for over ten years, the plaintiff should have objectively known or been able to know this, as required by Article 20 of the Turkish Commercial Code (TCC), as a diligent merchant.
Therefore, filing this invalidation action after enduring the infringement of the trademark for a very long time without objection would destroy the intellectual property values that the defendant has created by investing labor anc capital into their mark during the elapsed time. Hence, the exercise of the right to bring an action aimed at eliminating this situation is NOT PROTECTED according to Article 2 of the Turkish Civil Code.” 15.10.2009 T., 2008/663 E., 2009/10891 K. numbered decree of 11th Civil Chamber of the Supreme Court and 28.11.2017 T., 2016/6325 E., 2017/6651 K. numbered decree of 11th Civil Chamber of the Supreme Court are also in line with this legal opinion.
In a case where infringement of trademark rights, protection of trademark rights, unfair competition claims, and a request for the removal of the defendant’s trade name from the trade registry were made, the 11th Civil Chamber of the Supreme Court, in its decision dated 02.03.2000, E., 1999/8169 E., 2000/1726 K., clearly stated the following lines: “… According to the allegations, defenses, and evidence gathered, the defense of statute of limitations is unfounded, and although the use of the ‘Telsim’ phrase in the trade names of both parties operating in the same goods and services sector is the same, and the other defenses and objections should not be taken into account in the face of the plaintiff’s registration of this word as a trademark, the resolution of the case depends on whether the lawsuit was filed in violation of Article 2 of the Turkish Civil Code.
It is stated that the plaintiff’s long silence despite being aware of the defendant’s trade name can be implied as consent, and it is known to the public that the defendant has made contracts with the non-party General Directorate of Turkish Post and Telegraph Corporation (Article 238/2 of the Civil Procedure Code), and if there had been objections at the establishment, it is possible that the defendant would have chosen a different course of action.
It is further stated that filing such a lawsuit long after the incident in question constitutes ABUSE OF RIGHT, and therefore, the lawsuit has been dismissed. The plaintiff’s attorney has appealed the decision… Due to the reasons stated above, it has been unanimously decided to REJECT all the grounds of appeal raised by the plaintiff’s attorney and to CONFIRM the decision by the procedural and legal provisions.”.
Authorized and Competent Court in Trademark Invalidation Lawsuits in Turkey
As per Article 156 of 6769 numbered Industrial Property Code, courts that are authorized on trademark invalidation lawsuits in Turkey are the Civil Courts for Intellectual and Industrial Property Rights. Competent courts for trademark invalidation lawsuits in Turkey are on the other hand are the courts based in the domicile of the defendant. Because with 6769 numbered Industrial Property Code, Article 156, it is expressly stipulated that in substitute lawsuits filed by third parties against the holder of industrial property rights, the competent court shall be the court located in the defendant’s place of residence.
IP Law Firm in Turkey
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