Information on Cancellation of Trademark Due to Non-Use

On January 10, 2017, prior to the Industrial Property Law (IPL) numbered 6769, an annulment lawsuit could be filed based on Article 14 of the Decree Law No. 556 on the Protection of Trademarks, which states, “If a trademark is not used without a justified reason within five years from the date of registration or if this use is interrupted for a period of five years, the trademark shall be annulled.”

However, 4 days before the Industrial Property Law entered into force, on January 6, 2017, the Constitutional Court ruled to annul the regulation in question on the grounds that trademark rights are property rights and that the subject of property rights cannot be regulated by Statutory Decrees.

Due to the annulment decision of the Constitutional Court, annulment lawsuits filed due to the non-use of a previously registered trademark for five years were rejected, causing many grievances and violating the principle of legal certainty. However, even though there is no provision in the Statutory Decree, in our law, it is legally possible to make decisions according to international agreements, except for the Statutory Decree on the Protection of Trademarks, which regulates the obligation to use a registered trademark. According to Article 90/5 of the Constitution, “international agreements duly put into effect have the force of law.” Turkey is a party to the Paris Convention and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) regarding the essence of trademark law. The international agreements in question have the force of law since they have been duly approved and published in the Official Gazette. The requirement to use the trademark is regulated in Article 5/C of the Paris Convention and Article 19 of TRIPS. While it is possible to apply these articles to lawsuits, all lawsuits filed before the Constitutional Court’s decision to annul were rejected. So, what is foreseen in the SMK regarding the use of the trademark? Can annulment lawsuits be filed based on the SMK due to non-use? First of all, the fact that the objection of the owner of the trademark that is registered but has not been used for five years, other than the cancellation lawsuit of the SMK, has not been heard, has brought the possibility of claiming that the trademark is not used as a defense in infringement lawsuits and invalidity lawsuits. In addition, we see that the Trademark Directive has given the authority to decide on the cancellation of the registered trademark due to non-use to the Turkish Trademark and Patent Office (TPMK) because it is a fast and effective method. However, it has been decided that this regulation, which is foreseen in Article 26 of the SMK, will enter into force after 7 years.

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