Provided that they are capable of distinguishing the goods and services offered by one undertaking from those of others, all signs that can be represented graphically — personal names, words, figures, letters, numerals, the shape of the goods or their packaging — are regarded as trade marks. Alongside these, types not considered traditional, such as sound, colour, motion and three-dimensional shape marks, have also found their place in the legislation. A trade mark is a right capable of registration, and its entry in the register confers significant powers and protective remedies on its proprietor.
Registration does not, however, mean that the right will be protected indefinitely and unconditionally. Certain unlawful situations arising after registration may give rise to revocation of the trade mark. The statute prescribes no preclusive period for a revocation request; the right to make the request is granted to interested persons, to public prosecutors and to public institutions and organisations. Until 10 January 2024 this request was raised before the courts by way of an action, and from that date onwards it has been tied to a revocation application made before the Turkish Patent and Trademark Office (TPMK). Where the existence of a ground for revocation is established, the trade mark comes to an end and the decision as a rule takes effect for the future.
A registered trade mark does not merely confer rights on its proprietor; it also imposes a series of obligations. Foremost among these is the actual use of the trade mark; non-use gives rise directly to the risk of revocation. Similarly, the trade mark becoming a common name in the category of goods or services for which it is registered, or becoming misleading to consumers as regards certain characteristics, may lead to the same outcome.
The Concept of a Trade Mark
The legal definition of the concept appears in Article 4 of the Industrial Property Act No. 6769. Under that provision, a trade mark is any sign that serves to distinguish the products and services of one undertaking from the products and services of another. Because the statutory definition is framed in technical language, the concept of a trade mark may also be expressed more plainly as any sign possessing distinctive character.
The common view identifies a trade mark solely with simple symbols placed on products. Services, however, also fall within the definition provided that the necessary conditions are met; goods need not have been produced for the quality of a trade mark to be acquired. Undertakings providing services, such as air carriers, may likewise turn their activities into a brand and have it entered in the register. Our detailed assessment of the concept of a trade mark, which occupies an important place in industrial property law, and of the registration procedure may be found in our article entitled Choosing and Registering a Trade Mark.
Grounds for Revocation of a Trade Mark
The situations that may result in revocation of a trade mark are governed separately in Article 26 of the Industrial Property Act No. 6769. The grounds prescribed by the statute are the following:
- Failure to make genuine use of the registered trade mark in Türkiye, without proper reason, within the five-year period following the date of registration is a ground for revocation. It makes no difference whether the use is made by the proprietor or by persons authorised by the proprietor. Revocation is also ordered where use of the trade mark has been suspended for an uninterrupted period of five years.
- The trade mark becoming a common name in the category of goods or services covered by the registration may likewise call for revocation. That outcome may arise from the proprietor’s own acts, or it may stem from the proprietor’s failure to take the necessary and sufficient measures to prevent the mark from becoming generic.
- Where use made by the proprietor, or by third parties with the proprietor’s consent, misleads the public as regards certain characteristics of the goods or services covered by the registration, the trade mark may be revoked.
- If use is found that persistently contravenes the technical specification of a collective mark or a guarantee mark, the trade mark subject to that use may be revoked. A guarantee mark is a sign that guarantees the common characteristics, methods of production, geographical origin and quality of a number of undertakings under the control of the proprietor of the mark; a collective mark, in turn, is a sign used jointly by a group composed of manufacturing, trading or service undertakings.
Moreover, as we explain in our study entitled Words and Signs That Cannot Be Registered as a Trade Mark, certain applications may have to be refused at the registration stage itself on the basis of the absolute or relative grounds for refusal.
Revocation Request and Revocation Action
The legislature has gathered the provisions on revocation in Article 26 of the Industrial Property Act No. 6769. The first paragraph of that article is worded as follows: "In the following cases the Office may, upon request, decide to revoke the trade mark…", and the expression "Office" used there corresponds in practice to the Turkish Patent and Trademark Office.
Article 192 of the same Act provides that Article 26 is to enter into force "seven years after its date of publication". Since the Industrial Property Act No. 6769 entered into force on 10 January 2017, under that transitional rule revocation requests were, until 10 January 2024, raised by way of an action for revocation of a trade mark. From that date onwards Article 26 began to be applied and the revocation request became an application for revocation of a trade mark made to the TPMK.
Authority Competent for a Revocation Request
As is apparent from the explanations above, the power of revocation was exercised by the courts until 10 January 2024 and has been exercised by the TPMK since that date.
In the revocation actions that could be brought until that date, subject-matter jurisdiction lay with the Civil Courts for Intellectual and Industrial Property Rights; in judicial districts where those specialised courts had not been established, the civil court of first instance had jurisdiction. As regards the court with territorial jurisdiction, the criterion was the place of residence of the proprietor of the trade mark whose revocation was sought. Revocation requests made after 10 January 2024 are assessed by the TPMK within an administrative procedure.
Time Limit for a Revocation Request
The Industrial Property Act No. 6769 has not laid down a period within which a revocation request may be raised. Given the nature of the request, however, revocation may be sought for as long as the term of protection of the trade mark continues.
Who May Request Revocation?
A revocation request may be raised by interested persons having an interest in the decision being given. In addition, the grounds for revocation relating to trade marks that have become misleading to the public and to use contravening the technical specification of collective and guarantee marks concern public policy. Since in those cases there is a public interest in the trade mark being struck from the register, a public prosecutor may also request revocation.
Consequences and Effect of a Revocation Decision
Where one of the grounds listed in Article 26 of the Act materialises, revocation of the trade mark may be ordered. The revocation decision given is, just as with a judgment of invalidity, a decision of a constitutive and extinguishing character; the trade mark right forming its subject comes to an end. By contrast, in certain situations illustrated in our article entitled Registration of a Trade Mark and the Rights It Confers, the trade mark right lapses of its own accord without any need for a revocation decision. Invalidity, which resembles revocation in many respects, is addressed separately in our study entitled Invalidity of a Trade Mark.
A revocation decision — given by the court until 10 January 2024 and by the TPMK thereafter — as a rule takes effect for the future. The legislature has, however, also provided for exceptions to that rule; in certain cases the decision may produce retroactive effect. Where the trade mark has turned into a sign that misleads the public, which is a ground for revocation concerning public policy, the revocation decision may take effect retroactively.
Independent Legal Assessment
The most frequent problem faced by businesses managing a trade mark portfolio is that, once registration is complete, the mark is treated as an administrative entry and the discipline of use is neglected. Yet the five-year period of non-use is the defence most readily invoked by the opposing side in opposition and infringement proceedings; an inability to document use may leave even a proprietor with a genuinely strong right without a defence.
The risk of a mark becoming generic is seen above all in marks that lead their market. Tolerating use of the trade mark as though it were the name of the product prepares the ground, over time, for the loss of distinctiveness and for revocation. The priority headings in protecting a trade mark portfolio are the following:
- Archiving use systematically by means of invoices, catalogues, promotional material and advertising records
- Auditing actual use separately for each class covered by the registration
- Setting use and warning policies that prevent the trade mark from turning into a generic name
- Monitoring the use made by licensees and dealers within the framework of the contract
- Periodically checking compliance with the technical specification in collective and guarantee marks
- Avoiding promotional practices liable to mislead consumers
Independent Legal advises throughout industrial property procedures, including the preparation of trade mark revocation applications and the conduct of the defence against such requests.