Existing legislation

Under Decree-Law 556 on Trademarks it is possible to institute a court action for the cancellation of a registered trademark on the basis of non-use if:

  • the trademark has not been put to use without a justifiable or legitimate reason; or
  • its use has been suspended for an uninterrupted period of five years.

Cancellation requests based on non-use can be made only before the IP courts; the Patent Institute is not entitled to prosecute such requests.

Proposed changes

Under the draft IP Law, a trademark can be cancelled on the basis of non-use on a request filed with the Patent Institute if:

  • the trademark has not been put to use without a justifiable or legitimate reason; or
  • its use has been suspended for an uninterrupted period of five years.

On notification, the rights holder will be entitled to submit its replies and evidences within one month. The institute can grant an extension of another month for submission of evidence if requested. The institute may also ask for additional evidence where necessary.

The Patent Institute will be entitled to handle non-use cancellation requests after a seven-year transition period.

Comment

The proposed change will enable third parties to contest a trademark on the basis of non-use before the Patent Institute instead of a court. The institute will be entitled to decide on the total or partial cancellation a registered trademark. However, such a decision can still be contested before a specialised IP court.

For further information on this topic please contact Okan Çan or Asli Bayguz at Deris IP Attorneys by telephone (+90 212 252 6122) or email (okan.can@deris.com or asli.bayguz@deris.com). The Deris website can be accessed at www.deris.com.tr.

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