Trademark Invalidity in Turkey: SMK Grounds and Proceedings

Trademark invalidity proceedings in Turkey under Industrial Property Code (SMK No. 6769): grounds for invalidity under Articles 5 and 6, court proceedings under Article 25, peremptory period and acquiescence, retroactive effects under Article 27

The Invalidity of a Trademark

Grounds for Invalidity

Grounds for the invalidity and revocation of trademarks were not regulated separately under Decree-Law No. 556 Pertaining to the Protection of Trademarks ("MarKHK"). This issue had caused uncertainties and indetermination. However, with the adoption of the Industrial Property Code (Law No. 6769, "SMK") of 10 January 2017 (Resmi Gazete 10.1.2017/29944), separate grounds for invalidity and revocation have been devised. Therefore, the uncertainty observed during the Decree-Law period has now ceased. Furthermore, harmonisation with the EU Trademark Directive No. 2015/2436 and the EU Trademark Regulation No. 2015/2424 has been achieved. Apart from this, the existence of an absolute or relative ground for refusal is codified in both the Decree-Law and SMK as a ground for invalidity. Practice may vary by authority and year — check current guidance.

Invalidity of a trademark within the scope of SMK comes into question in terms of trademarks that have been registered despite the existence of absolute and relative grounds for refusal at the time of registration. It is impossible to decide on the invalidity of a trademark based on any other subsequent ground. Even if a ground for invalidity has been noticed, the trademark shall not be deregistered unless it is invalidated by a decision as a result of trademark invalidation proceedings before the competent court.

Regarding Articles 5 and 6 of the Industrial Property Code

Grounds for invalidity of a trademark are regulated under Article 25 of the Industrial Property Code (Law No. 6769). Pursuant to this article, if one of the absolute grounds for invalidity regulated under SMK Article 5 or one of the relative grounds for invalidity regulated under SMK Article 6 exists, invalidation of the trademark shall be decided by the court. Since the absolute grounds for invalidity regulated under SMK Article 5 pertain to the public order concerning trademark registration, they shall be considered ex officio, whereas the relative grounds for invalidity regulated under SMK Article 6 shall be considered upon opposition, as they are related to third parties.

It will be sufficient to decide on the invalidity of a trademark if one of the conditions mentioned under Articles 5 or 6 exists. However, SMK Article 5(2) is worth noting. According to the said paragraph: "If a trademark has been used before the application, and through this use, has acquired distinctive character in respect of the goods and services subject to the application, the registration of this trademark may not be refused in accordance with subparagraphs (b), (c) and (d) of the first paragraph." To clarify Article 5(2), it is impossible to render a decision regarding the invalidity of a trademark even if a trademark is composed of "signs which are devoid of any distinctive character, descriptive signs, and signs which are used by everyone in the trade area" as annotated under Article 5, if the trademark had been used before the date of application, and through this use, has acquired distinctive character in respect of the goods and services subject to the application. The same provision is also included in the EU Trademark Regulation. The question of whether a trademark has acquired a distinctive character shall be decided upon the circumstances of each present case. In this matter, the Federal Patent Court of Germany rendered a decision that it may not be accepted for a trademark to acquire distinctive power based on the results of a survey conducted five years ago, and it is impossible for the average consumer at a reasonable level to remember and perceive a distinctive power which had been acquired five years ago.[1] Practice may vary by authority and year — check current guidance.

This is because a distinctive power acquired several years ago might be weakened or completely vanished. However, a distinctive power acquired long ago might as well be so powerful that it might still retain its power at the time of application. For this reason, it is not accepted as a principle that a trademark would still have a distinctive power if it has acquired such distinctive power before a long period such as five years but was not used subsequently. Nevertheless, it is noted that an evaluation must be made by considering the features of each case and decisions must be rendered by researching the current distinctive power of a trademark.

Regarding Partial Invalidity

SMK Article 25(2), which regulates the grounds for invalidation and the request for invalidation, mandates that if the grounds for invalidity exist for some goods or services for which the trademark is registered, a decision regarding the partial invalidation shall be given for only such goods or services and a decision which has the result of altering the representation of the trademark may not be given. Practice may vary by authority and year — check current guidance.

Invalidation Proceedings

Regarding Procedure

As explained above, since the absolute grounds for invalidity regulated under SMK Article 5 pertain to the public order concerning trademark registration, they shall be considered ex officio, whereas the relative grounds for invalidity regulated under SMK Article 6 are considered upon opposition, as they are related to third parties. While there is certainty in the Code regarding registration, there is no provision regarding whether absolute grounds for invalidity regulated under SMK Article 5 shall be considered ex officio in invalidation proceedings. Thus, case law must be considered. It is worth noting a decision dated 2013 by the 11th Civil Chamber of the Court of Cassation.[2] According to the said decision, the Court ruled on partial admission of the case in proceedings concerning the decision of the Re-examination and Evaluation Board within the Turkish Patent Institute, ordering partial invalidation of the trademark "EVYAP" (registration code-numbered 2005/40490) for classes 11 and 19 pursuant to Decree-Law No. 556 Articles 8(5) and 42, on grounds that: the trademarks of the parties were similar pursuant to Decree-Law No. 556 Article 8(1)(b); the goods were associated within the given class with possibility of confusion for the target group; the claimant had a preferential right based on trade name pursuant to Article 8/5; and the judge is not bound by the legal ground purported by the parties but shall investigate and determine the legal ground of the facts purported in the petition motu proprio. Practice may vary by authority and year — check current guidance.

As might be noticed, the Court of Cassation remarks that the judge must interpret based on the facts purported in the petition and that the facts which are not relied upon shall not be considered as a ground for invalidation.

Regarding Proceedings

Parties to the Proceedings — Claimant

Pursuant to SMK Article 25(2), persons who have interests, public prosecutors or relevant public institutions and organisations may request the court to decide on the invalidity of a trademark. The expression "persons who have interests" in the said article is one of the novelties brought with SMK. In Decree-Law No. 556, the expression "persons who have suffered" was preferred instead of "persons who have interests". This amendment is suitable since it yields to a larger concept. According to an opinion,[3] since it is evident that the expression "persons who have interests" contains those who suffer from the registration of a trademark which must not have been registered and those who might confront the risk of suffering, the debate on whether one could file a lawsuit due to the risk of suffering during the era of Decree-Law No. 556 is now over.

Pursuant to SMK Article 25(2), public prosecutors may also request the invalidation of a trademark from the court. It is worth noting here that the public prosecutors may request invalidation based on absolute grounds for refusal only. The reason for this is that public prosecutors shall oversee the public order. Practice may vary by authority and year — check current guidance.

Another group of those who have interests in requesting invalidation are public institutions and organisations. For instance, if an insignia of a ministry is registered, the aforesaid ministry may request for invalidation as a public institution and organisation that has interests.

Parties to the Proceedings — Defendant

Pursuant to SMK Article 25(3), trademark invalidation proceedings shall be claimed against persons who are registered in the register as trademark proprietors as of the date of filing of invalidation proceedings or their successors in title. In this case, the lawsuit for invalidation shall be directed towards those who are registered in the trademark registry as proprietors or towards their heirs in the case the registered owner is deceased. The final remark to be made regarding the defendant is that the Turkish Patent and Trademark Office (Türk Patent ve Marka Kurumu, "TÜRKPATENT") shall not be designated as a defendant.[4]

Commissioned and Competent Court

Commissioned and competent courts in invalidation proceedings are regulated under SMK. The commissioned court is determined pursuant to SMK Article 156. Commissioned courts in trademark invalidation proceedings are the Civil Courts of Intellectual and Industrial Property Rights and Criminal Courts of Intellectual and Industrial Property Rights pursuant to SMK Article 156(1). Following the amendments made in 2004, the court is now composed of a single judge rather than a panel of judges. Practice may vary by authority and year — check current guidance.

Competent courts are also determined pursuant to SMK Article 156. There are different territorial jurisdiction rules concerning the proceedings to be initiated against the person who appears as the trademark proprietor in the registry and the proceedings to be initiated by the trademark proprietor. In legal proceedings to be instituted against third parties by the owner of a trademark, the competent court shall be the court where the claimant is domiciled or where the action violating the law has taken place or where the impacts of this action are observed, pursuant to SMK Article 156(3).

In legal proceedings to be instituted against the owner of trademark by third parties, the competent court is the court where the defendant is domiciled, pursuant to SMK Article 156(5). In case the owner of the trademark does not have a domicile in Türkiye, the competent court in legal proceedings to be instituted against the owner of the trademark shall be the court where, at the instituting date of the legal proceeding, the business place of the attorney registered in the registry is located, and if the record of the attorney has been deleted, the competent court is the court where the headquarters of the Office is located, pursuant to the fourth paragraph of the abovementioned article.

Peremptory Period

The peremptory period in invalidation proceedings is regulated under SMK Article 25(6). In the said paragraph, the provision is set forth as: "where a trademark proprietor has acquiesced in the use of a later trademark for a period of five successive years while being aware or should have been aware of this situation, the trademark proprietor may not allege his trademark as an invalidation ground unless the registration of the later trademark is in bad faith." In this case, invalidation proceedings shall be instituted by the trademark proprietor within five years; otherwise, it seems likely to suffer the loss of rights due to acquiescence. Practice may vary by authority and year — check current guidance.

Another essential point to note in SMK Article 25(6) is the expression "unless the registration of the later trademark is in bad faith". The importance of this expression is that in case the registration of a trademark is in bad faith, there is no peremptory period to institute invalidation proceedings. The existence of bad faith shall be proved by the claimant and it must be evaluated separately according to the nature of each present case.

Loss of Rights Due to Acquiescence

As explained above, SMK Article 25(6) sets forth the following provision concerning invalidation proceedings: "Where a trademark proprietor has acquiesced in the use of a later trademark for a period of five successive years while being aware or should have been aware of this situation, the trademark proprietor may not allege his trademark as an invalidation ground unless the registration of the later trademark is in bad faith." The said provision regulates the loss of rights due to acquiescence. This provision was not envisioned in Decree-Law No. 556 and is one of the novelties brought with SMK. If the trademark proprietor is aware or should be aware that a later trademark is used within the scope of SMK Article 25(6), but nevertheless acquiesced for five successive years, he may not allege his trademark as an invalidation ground unless the registration of the later trademark is in bad faith.

Therefore, the prior trademark proprietor shall be aware or should have been aware of the use of a later trademark; shall acquiesce in this situation for a period of five successive years; the registration of the later trademark shall not be in bad faith. It should be noted that here the prior trademark proprietor loses the right to allege due to his acquiescence although certain conduct was expected from him; therefore, loss of trademark proprietorship right by the prior trademark proprietor is not the case. The only right to be lost is the right to institute invalidation proceedings against those whom the claimant has acquiesced in their infringement. Practice may vary by authority and year — check current guidance.

The Court of Cassation is of the opinion that the loss of a right due to acquiescence is an opposition which shall be considered by the court ex officio pursuant to Turkish Civil Code (Law No. 4721) Article 2 (good faith principle). In the legal theory, however, Çolak[5] considers that this is a defence and shall be pleaded by a party.

The Invalidation Decision and Its Effect

According to the law of procedure, an invalidation decision is enforced upon the finalisation of the decision. While the enforcement procedure regarding the invalidation decision was not regulated under Decree-Law No. 556, SMK clarifies this issue now. SMK Articles 27(6), 27(7), and SMK Provisional Article 4(3) provide guidance in terms of enforcing the invalidation decision. According to these three articles, following the finalisation of the invalidation decision, the court shall ex officio send this judgment to the Office, the trademark shall be removed from the register and this situation shall be published in the Bulletin (Resmi Marka Bülteni); pursuant to SMK Provisional Article 4(3), the decisions given by the courts shall be ex officio sent to the Office upon finalisation. In this case, following the invalidation decision and its finalisation, the trademark will be removed from the register by TÜRKPATENT.

Effects of the invalidation decision are regulated under SMK Article 27. Pursuant to SMK Article 27(1), if a decision related to the invalidation of a trademark is given in accordance with Article 25, such a decision will be effective from the application date of the trademark and the trademark shall be deemed not to have had the protection provided by the Code. As might be understood from this article, the invalidation decision takes effect retroactively. Even though the invalidation decision takes retroactive effect, the retroactive effect of the decision on invalidity may not affect two cases, pursuant to SMK Article 27(3). To clarify, final and enforced judgments of courts in proceedings filed due to infringement of the rights provided by trademark, prior to the decision, and contracts established and performed prior to the decision are not affected by the retroactive effect of the decision on invalidity pursuant to SMK Article 27(3). The final decisions regarding the invalidity of the trademark shall have an erga omnes effect — in other words, it shall be effective for everyone. Practice may vary by authority and year — check current guidance.

Footnotes and References

[1] Ayşe Aytemiz Özünel, Marka Hukukunda Kullanım Sonucu Ayırt Edicilik Kazanılması ve Ayırt Ediciliğin Kaybedilmesi, p. 68.
[2] Yargıtay 11. HD, 17.06.2013 T., 2012/13214 E., 2013/12491 K. (Kazancı Hukuk Otomasyonu, accessed 20.05.2020).
[3] Cahit Suluk / Rauf Karasu / Temel Nal, Fikri Mülkiyet Hukuku, İstanbul, 2017, p. 220.
[4] Except for the proceedings to be instituted along with an action for nullity of a decision by TÜRKPATENT's Re-examination and Evaluation Board.
[5] Uğur Çolak, Türk Marka Hukuku, 4th Edition, İstanbul, 2018, p. 891.

Frequently Asked Questions

  1. What law governs trademark invalidity in Türkiye? The Industrial Property Code (Law No. 6769, the "SMK") of 10 January 2017 (Resmi Gazete 10.1.2017/29944), particularly Articles 5 (absolute grounds), 6 (relative grounds), 25 (invalidation proceedings), 27 (effects), and 156 (jurisdiction).
  2. What are absolute grounds under SMK Article 5? Public-order grounds including: signs not capable of distinguishing goods or services; signs devoid of distinctive character; descriptive signs; generic signs used by everyone in the trade area; signs of shape resulting from the goods' nature, technical function, or substantial value; signs likely to mislead the public; signs contrary to public order or morality; emblems and badges of high public interest without competent authority consent; signs containing protected geographical indications; among others.
  3. What are relative grounds under SMK Article 6? Third-party-rights grounds including: identity or likelihood of confusion with earlier trademark; well-known trademark protection under Paris Convention; conflict with personal name, image, copyright, or other intellectual property rights; agent or representative registering trademark in own name; conflict with earlier non-registered sign rights; bad faith registration.
  4. Who can request trademark invalidation? Under SMK Article 25(2): persons who have interests (broader than prior "persons who have suffered" formulation under Decree-Law 556); public prosecutors (for absolute grounds only, in public order capacity); and relevant public institutions and organisations (such as ministries whose insignia have been registered).
  5. Can the Court consider grounds not raised in the petition? Per the Court of Cassation 11th Civil Chamber decision discussed, the judge is not bound by the legal ground purported by the parties but shall investigate and determine the legal ground of the facts purported in the petition. However, facts not relied upon by the claimant cannot serve as basis for invalidation — the analysis remains within the factual framework presented.
  6. What is partial invalidation? Under SMK Article 25(2), if grounds for invalidity exist for some goods or services for which the trademark is registered, partial invalidation shall be ordered for only such goods or services. Decisions altering the representation of the trademark itself may not be given.
  7. Which courts have jurisdiction? Under SMK Article 156(1), Civil Courts of Intellectual and Industrial Property Rights (Fikri ve Sınai Haklar Hukuk Mahkemeleri) and corresponding Criminal Courts. Following 2004 amendments, the court is composed of a single judge. Specialised courts operate in Istanbul, Ankara, and İzmir; general civil courts hear IP matters in other provinces under their general jurisdiction.
  8. What are territorial jurisdiction rules? Under SMK Article 156: in proceedings instituted by the trademark proprietor against third parties, claimant's domicile or place of infringement (Article 156(3)); in proceedings instituted against the trademark proprietor by third parties, defendant's domicile (Article 156(5)). For non-domiciled trademark proprietors, the registered attorney's business place or, failing that, TÜRKPATENT's headquarters location.
  9. Is TÜRKPATENT a defendant? No. TÜRKPATENT shall not be designated as a defendant in trademark invalidation proceedings, except in proceedings instituted along with an action for nullity of a decision by TÜRKPATENT's Re-examination and Evaluation Board.
  10. What is the peremptory period? SMK Article 25(6) establishes a five-year acquiescence period: where a trademark proprietor has acquiesced in the use of a later trademark for five successive years while being aware or should have been aware of this situation, the proprietor may not allege his trademark as an invalidation ground — unless the registration of the later trademark is in bad faith, in which case no peremptory period applies.
  11. What is the bad faith exception? Under SMK Article 25(6), where the later trademark registration is in bad faith, the five-year acquiescence period does not apply and invalidation can be sought without time limitation. Bad faith must be proved by the claimant and evaluated separately according to each case's nature.
  12. What is the loss of rights consequence? The prior trademark proprietor loses only the right to institute invalidation proceedings against the specific later trademark whose use was acquiesced in — not the underlying trademark proprietorship right. The Court of Cassation considers acquiescence-based loss of rights as ex officio consideration under Civil Code (Law No. 4721) Article 2 good faith principle, while academic theory (Çolak) considers it a defence requiring party plea.
  13. What is the effect of an invalidation decision? Under SMK Article 27(1), the invalidation decision takes retroactive effect from the trademark's application date — the trademark is deemed not to have had Code protection. Under SMK Article 27(3), retroactive effect does not affect: final and enforced infringement judgments rendered before the invalidation; and contracts established and performed before the invalidation. The decision has erga omnes effect.
  14. How is the decision enforced? Following finalisation, the court shall ex officio send the judgment to TÜRKPATENT under SMK Articles 27(6), 27(7), and Provisional Article 4(3). TÜRKPATENT removes the trademark from the register and publishes the cancellation in the Official Trademark Bulletin.
  15. Where does ER&GUN&ER Law Firm support trademark invalidity matters? Pre-litigation analysis under SMK Article 5 absolute grounds and Article 6 relative grounds; preparation and filing of invalidation proceedings under SMK Article 25 before the Civil Courts of Intellectual and Industrial Property Rights; defence of registered trademarks against invalidation actions; bad faith documentation and proof under SMK Article 25(6) exception; acquiescence analysis and timing planning; partial invalidation strategy under SMK Article 25(2); jurisdiction analysis under SMK Article 156; representation in TÜRKPATENT Re-examination and Evaluation Board proceedings; appeals through Bölge Adliye Mahkemesi (istinaf) and Yargıtay 11th Civil Chamber (temyiz); and integrated trademark portfolio strategy combining registration, monitoring, opposition, invalidation, and infringement enforcement.

Author: Mirkan Topcu is an attorney registered with the Istanbul Bar Association (Istanbul 1st Bar), Bar Registration No: 67874. His practice focuses on cross-border and high-stakes matters where evidence discipline, procedural accuracy, and risk control are decisive.

He advises Turkish and foreign brand owners, technology companies, manufacturers, fashion houses, and consumer goods businesses across Trademark Invalidation under SMK Article 25 and Articles 5-6, Pre-litigation Strategy and Bad Faith Documentation under SMK Article 25(6), Acquiescence Analysis and Five-Year Period Planning, Partial Invalidation under SMK Article 25(2), Jurisdiction under SMK Article 156, Civil Courts of Intellectual and Industrial Property Rights Litigation, TÜRKPATENT Re-examination and Evaluation Board Proceedings, Appeals through Bölge Adliye Mahkemesi and Yargıtay 11th Civil Chamber, Effects of Invalidation under SMK Article 27 with Retroactive Effect Analysis, Integrated Trademark Portfolio Strategy, EU Trademark Directive 2015/2436 and EU Trademark Regulation 2015/2424 Comparative Analysis, and Madrid Protocol International Registration Coordination.

Education: Istanbul University Faculty of Law (2018); Galatasaray University, LL.M. (2022). LinkedIn: Profile. Istanbul Bar Association: Official website.