In the presence of absolute grounds for refusal or relative grounds for refusal set out in Articles 5 and 6 of the Industrial Property Code numbered 6769 (“Code”), the trademark registration request should be rejected. However, in some cases, trademarks have been registered despite the existence of one of the grounds for refusal in Articles 5 and 6. In such case, the registered trademark may be invalidated through a lawsuit.
In this short article, we will be explaining the general issues concerning the invalidation action in Turkey.
General Notes on the Trademark Invalidation Action
Invalidation action (i.e., nullity action) is a lawsuit that allows registered trademarks to be removed from the trademark registry due to the existence of one of the invalidation grounds.
Grounds for invalidation of a trademark are regulated under Article 25/1 of the Code. Accordingly, if one of the grounds for refusal of the trademark application mentioned under Articles 5 or 6 of the Code exists, invalidation of a trademark shall be decided by the court.
Article 5 of the Code lists the absolute grounds for refusal, such as non-distinctiveness, descriptiveness, and deceptiveness of trademarks. The full list of the absolute grounds for refusal may be accessed here, on another one of our articles. The absolute grounds for refusal are, in a general sense, related to the public interest. Therefore, they are examined ex officio. If the Turkish Patent and Trademark Office (the “Office”) identifies any absolute grounds for refusal during the examination period of the trademark application, it shall refuse the registration of the respective trademark.
Article 6 of the Code lists the relative grounds for refusal, such as the likelihood of confusion due to similarity, dilution of well-known trademarks, unauthorized or bad faith applications. The full list of the absolute grounds for refusal may be accessed here, on another one of our articles. The relative grounds for refusal are related to the earlier rights of the opponent. Unless the respective grounds are claimed in the opposition proceedings, they are not examined by the Office.
Thus, if a trademark is registered despite the existence of any absolute or refusal grounds for refusal, an invalidation action may be filed against it.
It should be noted that it is not necessary to raise an opposition to the trademark application within the opposition period to file an invalidation action against the trademark.
According to Article 25/2 of the Code, people who have interests, public prosecutors or relevant public institutions and organizations may request the court to decide on the invalidation of a trademark.
Trademark invalidation actions shall be filed against people who are registered in the registry as trademark owners as of the date of filing of invalidation action or their successors in title. The Office shall not be designated as a party to the trademark invalidation actions.
Time Limit for Trademark Invalidation Actions
According to Article 25/6 of the Code, an invalidation action shall be filed within 5 years. As a rule, if a trademark owner is aware or should have been aware of a trademark with a later date that has been used but has remained silent for 5 consecutive years, they cannot rely on their trademark with an earlier date as a ground for invalidation. This 5-year time limit does not apply against trademarks filed in bad faith.
Competent Authority for Trademark Invalidation Actions
Invalidation actions will be handled by specialized IP courts, namely the Civil Court of Intellectual and Industrial Property Rights of the defendant’s place of residence.
Consequences of Invalidation Decisions
As an invalidation action is filed against registered trademarks despite the existence of absolute and relative grounds for refusal at the time of trademark registration, the invalidation decision has a retroactive effect. It is explicitly stated in Article 27 of the Code that the invalidation decision is effective from the date of the trademark application and the protection provided to the registered trademark by the Code will be considered as never to have been existent.
After the invalidation decision is finalised, the court shall send the decision to the Office ex officio. The trademark shall be removed from the trademark register and published in the Bulletin. The decision of the invalidation of the trademark has a judgment against all.
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Doğukan Berk Aksoy, LL.M.
Avukat | Marka Vekili | Patent Vekili
T: +90 312 514 20 14
T: +90 312 514 20 14