Removing a trademark from the register does not always call for the same action. An unlawfulness that existed at the time of registration leads to invalidation; grounds that arise afterwards, such as non-use, becoming a generic name or misleading use, lead to revocation. Invalidation is sought from the court. From January 10, 2024, requests for revocation of a trademark are examined by the Turkish Patent and Trademark Office (TÜRKPATENT), subject to the transitional provisions. Turning to the wrong authority may delay the outcome of a strong substantive ground. [S1]
This article addresses the difference between the two routes for trademarks registered in Türkiye, the evidence in a claim of non-use and the consequences of removal from the register. It should not be assumed that a registration abroad automatically gives the same protection in Türkiye; international registrations that have effect in Türkiye are assessed separately.
The basic difference between invalidation and revocation
Invalidation: unlawfulness at the outset of the registration
Article 25 of the Industrial Property Law No. 6769 (Sınai Mülkiyet Kanunu, SMK) provides for requesting invalidation on the grounds set out in Articles 5 and 6. Examples include a sign that lacks distinctiveness, that describes the goods or services, a likelihood of confusion with an earlier trademark, interference with earlier rights or a bad-faith application. Each ground is examined under its own conditions. That a trademark appears similar does not, on its own, lead to invalidation for all goods and services.
An invalidation action is directed against the person who appears in the register as the trademark owner on the date of the action, or that person's legal successor. TÜRKPATENT is not named as a defendant in this action merely because it carried out the registration. By contrast, the parties to an action for annulment of an Office decision are structured differently. The petition must make clear which decision or right it targets.
Revocation: circumstances affecting the continuation of protection
Article 26 SMK lists among the grounds for revocation the lack of genuine use of the trademark, its becoming a common name as a result of the owner's conduct or failure to take the necessary measures, misleading use, and breach of the special conditions relating to guarantee or collective marks. Non-use is only the most frequently encountered ground; not every revocation application rests on a claim of five years of non-use.
| Subject of examination | Invalidation | Revocation |
|---|---|---|
| Core issue | The conditions of registration at the outset | The conditions for continued protection |
| Examining authority | The competent civil court | As a rule, TÜRKPATENT |
| Example | Likelihood of confusion with an earlier trademark | Five years of non-use without genuine use |
| Effect in time | As a rule, goes back to the application date | As a rule, the date of the revocation request; an earlier date if the conditions are met |
| Partial outcome | May be limited to the relevant goods or services | May be limited to the relevant goods or services |
When can an unused trademark be revoked?
How is the five-year period assessed?
Under Article 9 SMK, a trademark that has not been genuinely used in Türkiye without a justified reason within five years from the registration date, or whose use has been suspended for an uninterrupted five years, is at risk of revocation. The application date and the registration date may differ. The first task is to verify from the register the registration date and the goods and services for which protection is sought.
A trademark reaching the age of five does not mean automatic revocation. A request is needed, and the trademark owner may assert its use or a justified reason for non-use. Merely having an address in the register, the company continuing its activity or the trademark appearing on a website is not, for every good and service, treated as proof of genuine use.
Which uses may be taken into account?
Use in a form that differs in elements without altering the distinctive character of the trademark, use with the owner's consent and, within the conditions of the law, use for export purposes may be taken into account. By contrast, use of an entirely different sign does not always save the existing registration. A company name appearing on an invoice must be distinguished from use of the trademark as a sign indicating commercial origin.
The assessment of genuine use considers together the nature of the sector, the size of the market, the price of the goods, the frequency of sales and the continuity of use. Mass consumer products and large machines sold rarely cannot be measured against the same numerical threshold. The law does not set a single minimum turnover or number of invoices for all sectors.
The effect of last-minute use before the application
If a trademark owner who learns that a revocation request is coming begins use merely to prevent the outcome, this is examined separately. The three-month period in Article 26 SMK and the preparation rule linked to learning that a request will be made are important. Not every recent sale is automatically invalid; the timeline and the real commercial nature of the use must be shown.
How is evidence of use prepared?
The strongest file is built not by attaching many documents at random, but by showing which goods or services and which date each document proves. Establishing a traceable link between a product's invoice, the product photograph, the delivery document and the catalog page makes the assessment easier.
| Document | What it may show | Where it may fall short on its own |
|---|---|---|
| Invoice and delivery document | Date, quantity, customer, commercial transaction | Use of the trademark on the product |
| Packaging, label, product photograph | The actual manner in which the sign is used | The date of the photograph and whether the sale took place |
| Advertising and campaign records | Marketing activity and reach | Whether the advertisement was published in the relevant period |
| License agreement | The source of the authority to use | Whether the licensee actually used the mark |
| Service agreement and delivery record | That the service was provided | Whether it was provided under the registered trademark |
When preparing documents that contain personal data or trade secrets, unnecessary disclosure should be avoided. Redaction to the point of destroying a document's evidentiary value is, however, also undesirable. Where necessary, procedurally proper requests on confidentiality and access to the file are considered.
The revocation application before TÜRKPATENT
Content of the application and the other side's response
The revocation application identifies the target trademark, the requesting party, the ground for revocation and the goods or services covered; the required fee and documents are completed. The mandatory elements in Article 30/A of the Regulation are important. Certain deficiencies may cause the request to be treated as not made, without a separate notice to complete. For this reason, the application should not be seen as merely the uploading of a petition. [S2]
The revocation request is notified to the trademark owner. The one-month response period under the law and the regulation, and the additional period of up to one month that may be requested within the time limit, must be taken into account. It should not be assumed that the evidence that can be submitted later is unlimited. The applicant, for its part, should assess each of the trademark owner's documents by specifying the period and the goods or services to which it relates.
Objection to the decision and court review
Against the relevant decisions of the Office, an objection route and then, against the decision of the Re-examination and Evaluation Board (Yeniden İnceleme ve Değerlendirme Kurulu, YİDK), a judicial route may arise. The objection to an Office decision and the action against a YİDK decision are separate stages. In general, two-month periods are important; the start is determined by the due notification of the decision to the person concerned. The competent court with jurisdiction over actions against YİDK decisions is the Ankara Civil Court of Intellectual and Industrial Property Rights. [S1, S3]
For revocation actions filed in the courts before January 10, 2024, the transitional rule is examined separately. That revocation was heard in a court in an old Court of Cassation decision does not show that a new request can today be directed to the same place.
A real decision: why was the submission of limited invoices found insufficient?
In the decision of the 11th Civil Chamber of the Court of Cassation dated September 5, 2024, E.2023/4111, K.2024/6054, the evidence of use was examined in a dispute concerning COMPUTEST trademarks. In the file, the limited invoice content for the relevant five-year period was held not to demonstrate genuine use for the contested services, and the result reached by the regional court of appeal was upheld. [K1]
The practical value of the decision does not lie in saying that a certain number of invoices is insufficient in all files. The document must be linked to the right period, the right trademark and the right service. That the action was filed in court in the past is also assessed separately from the current administrative power of revocation. The decision should not be read to mean that every non-use application will be accepted or that two invoices carry no value in any sector.
Points to note in an invalidation action
Acquiescence and bad faith
If the earlier trademark owner has remained silent for five consecutive years while knowing or being expected to know that the later trademark was in use, that owner may face an obstacle to an invalidation request under Article 25/6 SMK. A bad-faith later registration is the exception. This rule should not be presented as a general five-year limitation period applicable to every ground for invalidation.
When the information was obtained may be debated through correspondence between the parties, formal notices, distribution relationships or earlier disputes. Actual knowledge is not accepted in the same way in all specific files merely because the register is publicly accessible.
The use defense and the right party
In some invalidation actions based on an earlier trademark, the defendant may, under Article 25/7 SMK, request proof of use. In addition to the period before the date of the action, a separate period of use may also arise with respect to the application or priority date of the later trademark. Submitting only current sales records may therefore not be enough.
A transfer of the trademark during the action, a change in the register or the existence of more than one trademark calls for an examination of the parties and the claim. That one of the companies in a group is the trademark owner does not automatically give another group company the same right of action. The licensee's authority is addressed separately within the framework of the contract and the law.
The effect of removal from the register on past transactions
Invalidation, as a rule, takes effect from the trademark application date. Revocation, as a rule, takes effect from the date of the request; if it is asserted and proven that the ground for revocation arose earlier, an effect from an earlier date may be sought. This distinction is important in assessing past license fees or infringement claims.
Article 27 SMK contains exceptions for final and enforced decisions and for contracts previously concluded and performed. It therefore cannot be said that every amount paid for a trademark removed from the register will automatically be recovered. Bad faith, equity and the relevant exceptions are examined in the specific case. Likewise, a revocation decision does not automatically eliminate the business's domain name, trade name or design.
Conclusion
A person who wants to remove a trademark from the register should first determine whether the unlawfulness existed at the outset or arose afterwards. The right authority, the scope of goods and services, the date range and the evidence plan should then be set. For the trademark owner, keeping the registration certificate is not enough; an orderly archive showing how the trademark is actually used should be built. Examining the register and the notification records together before filing is decisive in avoiding procedural errors.
Related articles: Opposition to a Trademark Application: Time Limit, Likelihood of Confusion and Proof of Use; Trademark Infringement: Stopping Unauthorized Use and Compensation; Domain Name Disputes: .tr Applications, UDRP and Recovering a Domain Name.
Frequently Asked Questions
Is a trademark that has not been used for five years deleted automatically?
No. A revocation request on the ground of non-use and the related examination are required. The trademark owner may assert genuine use or justified reasons for non-use.
Can a trademark revocation action no longer be filed in court?
For new revocation requests, TÜRKPATENT has had authority since January 10, 2024. Actions filed earlier, invalidation actions and judicial review of Office decisions are separate matters.
Is the trademark appearing on the internet enough as proof of use?
Not always on its own. The date, the link to the Turkish market, commercial activity, the relevant goods or services and the genuineness of the use are examined together.
If a trademark is used only for some products, is all of it protected?
Depending on the scope of use, partial revocation or partial protection may arise. Use for one good should not be expected to extend automatically to all classes.
Sources and legal bases
- Industrial Property Law No. 6769 (Sınai Mülkiyet Kanunu), in particular Articles 9, 25–27, 156, 192 and transitional Article 4. TÜRKPATENT legislation index; accessible article texts.
- Regulation on the Implementation of the Industrial Property Law (Sınai Mülkiyet Kanununun Uygulanmasına Dair Yönetmelik), Article 30/A. TÜRKPATENT amendment text.
- Law No. 5000, Article 15/C. Accessible text.
- Court of Cassation 11th Civil Chamber (Yargıtay 11. Hukuk Dairesi), September 5, 2024, E.2023/4111, K.2024/6054. Full-text record — De Jure, an access account may be required; alternative decision record. The reasoning and conclusion sections of the full text have been reviewed.