INTRODUCTION
Trademark registration is a constitutive administrative act that grants the owner exclusive rights over the relevant sign and allows the owner to enforce these rights against third parties. However, the fact that the registration process has been completed before the Turkish Patent and Trademark Office (“TÜRKPATENT”) and the trademark has been entered in the register does not create an absolute and untouchable result regarding the legal validity of the trademark.
During the registration process, a sign may mistakenly be registered even though there are absolute or relative grounds for refusal under the law. It is also possible that the earlier rights of third parties may be overlooked. At this point, the following question arises: On which legal grounds may a registered trademark be removed from the register, and what are the retroactive effects of an invalidity decision given by a court?
I. LEGAL NATURE AND EFFECTS OF TRADEMARK INVALIDITY
An action for invalidity of a trademark is a constitutive legal action through which a registered trademark is removed from the register after a court determines that the trademark did not meet the legal validity requirements at the time of application or registration.
1. Principle of Retroactive Effect (Ex Tunc) – Article 27/1 of the Industrial Property Code
The main characteristic of an invalidity decision is that, as a rule, it has a retroactive (ex tunc) effect. Once the invalidity decision given by the competent court becomes final, the protection granted by the registration is considered never to have existed from the application date. Therefore, the trademark owner loses, retroactively, all exclusive rights obtained through the registration.
2. Legal Exceptions and Limits to Retroactive Effect – Article 27/2
In order to protect legal certainty, transactional security and the acquired rights of third parties, Article 27/2 of the Industrial Property Code provides two limited exceptions to the principle of retroactive effect:
Final Decisions on Trademark Infringement: Final court decisions concerning infringement of trademark rights that were given and enforced before the invalidity decision remain valid.
Performed Contracts: Contracts concluded and fully performed before the invalidity decision, such as licence agreements under which licence fees have already been paid, also remain valid. However, depending on the requirements of equity, partial repayment of the amount paid may be requested.
Exception: The legislator excludes trademark owners acting in bad faith or with gross negligence from these exceptions under Article 27/3 of the Industrial Property Code. Where the trademark was registered in bad faith or the registration was used with the intention of causing harm to third parties, an action may be brought under the general provisions for the repayment of compensation paid under previous final judgments, the repayment of collected licence fees, and compensation for the damages suffered.
3. Partial Invalidity – Article 25/4
A trademark application may cover more than one class of goods or services under the Nice Classification. If the ground for invalidity exists only for some of the goods or services for which the trademark is registered, the trademark is not declared invalid for all classes. Instead, partial invalidity is ordered only for the goods or services affected by the relevant defect.
The trademark continues to remain valid and protected in the register for the other classes for which there is no ground for invalidity.
II. INVALIDITY BASED ON ABSOLUTE GROUNDS FOR REFUSAL – ARTICLE 5
Absolute grounds for refusal aim to protect public interest and the balance of the free market. They prevent words, signs or shapes that should remain available for everyone in commercial life from being monopolised by a single person or company.
TÜRKPATENT must examine these grounds ex officio during the registration process. However, if a sign escapes this administrative review and is mistakenly registered, an invalidity action may always be brought under the reference made by Article 25/1(a) of the Industrial Property Code.
1. Failure to Qualify as a Sign and Inability to Be Represented in the Register – Article 5/1(a)
For a sign to qualify as a trademark, it must be capable of distinguishing the goods or services of one undertaking from those of other undertakings and must be capable of being represented in the register in a clear, precise and understandable manner under Article 4 of the Industrial Property Code.
For example, abstract ideas or smells that cannot technically be defined or linked to a standard colour code may fall within this provision.
2. Lack of Distinctive Character – Article 5/1(b)
Simple geometric shapes without any graphic characteristics, originality or stylisation, such as a straight line or a simple circle, as well as single letters or single numbers, are generally considered to lack distinctive character.
Since these signs are not capable of indicating a specific commercial origin in the eyes of consumers, they cannot be registered.
3. Descriptive Signs – Article 5/1(c)
Signs that directly describe the type, characteristics, quality, quantity, intended purpose, value or geographical origin of goods or services are subject to refusal.
Granting exclusive rights over such signs to a single trader would restrict the ability of competitors to describe their own goods or services.
For example:
If such expressions are registered as trademarks, the registrations may be declared invalid because of their descriptive character.
4. Signs Commonly Used in Trade / Generic Signs – Article 5/1(d)
These are expressions and signs that are commonly used by everyone operating in a particular profession, art or trade sector, or that have become the common name of the relevant goods or services.
5. Shapes and Product Characteristics Resulting from Technical Necessity – Article 5/1(e)
Shapes resulting from the natural form of the goods, such as the natural shape of a banana, three-dimensional designs that are necessary to obtain a technical result, or shapes that give substantial value to the goods cannot be registered as trademarks.
Such technical functions may only be protected for limited periods under patent or utility model law. They cannot be turned into an unlimited monopoly through trademark registration.
6. Deceptive Signs – Article 5/1(f)
These are signs that are capable of misleading the public regarding the nature, quality, content or geographical origin of goods or services.
For example, the registration of the expression “PURE COTTON” for a completely synthetic fabric containing no cotton, or the expression “SWISS STEEL” for an ordinary pocket knife manufactured in Bursa, would be misleading to the public.
7. Public Order, Public Morality and Religious Values – Articles 5/1(g), (ğ), (h) and (ı)
Expressions contrary to public order and public morality, religious symbols and names considered sacred by society, as well as historical and cultural values, official coats of arms and emblems falling within the scope of Article 6ter of the Paris Convention constitute absolute grounds for refusal.
8. Identity or Indistinguishable Similarity – Article 5/1(ç)
The registration of a sign is prevented where it is identical or indistinguishably similar, including differences only in letters or colours, to an earlier registered trademark or an earlier trademark application covering identical or identical types of goods and services.
Legal Mechanisms Overcoming Absolute Grounds for Refusal
Taking into account the dynamic nature of commercial life, the legislator provides two special legal mechanisms through which certain absolute grounds for refusal may be overcome.
A. Acquired Distinctiveness Through Use – Articles 5/2 and 25/3
Even if a sign lacks distinctiveness, is descriptive or is commonly used in trade at the application date under Articles 5/1(b), (c) and (d), it cannot be declared invalid if, before the application date, it has acquired distinctive character through intensive, widespread and long-term use in the market and has come to be perceived by consumers as identifying the goods or services of a particular undertaking.
Important Distinction: This exception applies only to paragraphs (b), (c) and (d).
If a sign consists of a technically necessary shape under Article 5/1(e), is deceptive under Article 5/1(f), or is contrary to public order under Article 5/1(g), it cannot be registered and cannot avoid invalidity even if it has been used continuously for 50 years and has become known by everyone.
B. Letter of Consent (Coexistence) – Article 5/3
A letter of consent is the written approval given by the owner of an earlier trademark for the registration of a later identical or similar trademark.
Rule in Practice: The letter of consent mechanism applies only to Article 5/1(ç) concerning the similarity barrier. It must be submitted to TÜRKPATENT in notarised form.
Even if consent is given for a descriptive or deceptive sign, the registration cannot become valid because of the public interest involved.
III. INVALIDITY BASED ON RELATIVE GROUNDS FOR REFUSAL – ARTICLE 6
Relative grounds for refusal concern disputes involving the infringement of earlier, superior and personal rights of third parties rather than public interest.
These grounds are not examined ex officio by TÜRKPATENT during the application process. They are examined through invalidity actions brought by the actual right holders.
1. Likelihood of Confusion – Article 6/1
Likelihood of confusion occurs where a sign that is identical or similar to a registered trademark or an earlier trademark application is used for identical or similar goods or services and creates the impression among the relevant public that there is an administrative or economic connection between the two signs.
Criteria Applied by the 11th Civil Chamber of the Court of Cassation in Assessing Likelihood of Confusion:
2. Unauthorised Registration by a Commercial Agent or Representative – Article 6/2
This ground applies where a commercial agent, agency, distributor or authorised representative of the trademark owner registers the trademark in its own name without the trademark owner’s consent or without a justified reason.
Such conduct, which is contrary to the representative’s duty of loyalty, directly constitutes a ground for invalidity.
3. Earlier Genuine Right Ownership – Article 6/3
Although the registration system applies in Turkish trademark law, the principle of registration is not absolute.
Even if a person has not registered a sign, if that person commercially used and promoted the sign in the market before the application date and acquired an earlier right over it, that person may request the invalidation of a later registration made in the name of another person.
Requirement of Proof: The claimant must prove that the use of the unregistered sign was earlier, continuous, uninterrupted and used as a trademark. This may be proved through invoices, advertisements, catalogues, customs records and turnover documents.
4. Extended Protection of Well-Known Trademarks – Articles 6/4 and 6/5
Well-known trademarks within the meaning of the Paris Convention and trademarks known by a broad part of society because of the level of recognition they have reached in Türkiye receive special protection.
Where an identical or similar sign is registered even for different classes of goods or services, the registration may be declared invalid if it would:
Example: If the name or logo of a world-famous luxury automobile trademark is registered by a third party for textile or furniture products, the automobile trademark owner may have this registration in a different class declared invalid under Article 6/5.
5. Conflict with Personality Rights, Copyright, Trade Names and Designs – Article 6/6
Where another person’s name, photograph, copyrighted artistic or graphic work, registered design or trade name is registered as a trademark without the permission of the right holder, the right holder may bring an invalidity action.
6. Status of a Trademark That Has Not Been Renewed – Articles 6/7 and 6/8
Trademarks whose ten-year protection period has expired and which are not renewed within the legal period are removed from the register.
Individual Trademarks – Article 6/8: Within two years following the expiry of a non-renewed trademark, the former trademark owner may request the invalidation of applications filed for identical or similar goods or services.
Critical Requirement – Proof of Use: According to the established case law of the 11th Civil Chamber of the Court of Cassation, in order for the former trademark owner to benefit from this two-year protection period, the owner must prove that the trademark was actually and genuinely used during this period. If there is no use, the registration cannot be declared invalid.
7. Registration in Bad Faith – Article 6/9
Bad faith means the intention to use the legal protection provided by the registration system, contrary to the principle of good faith under Article 2 of the Turkish Civil Code, as a means of pressure, unfair gain or appropriation against another person.
Bad Faith Criteria Applied by the 11th Civil Chamber of the Court of Cassation:
Knowledge Alone Is Not Sufficient: The fact that a person knows about another person’s unregistered trademark does not, by itself, prove bad faith.
Requirement of Concrete Facts: For bad faith to be accepted, concrete facts are required. These may include:
IV. GROUNDS FOR INVALIDITY ARISING AFTER REGISTRATION
Even if a trademark was fully lawful at the time of registration, it may later face invalidity because of certain circumstances arising during its use after registration under Articles 25/1(b) and (c).
1. Trademark Becoming a Generic Name – Article 25/1(b)
This occurs where, as a result of the acts of the trademark owner or the owner’s failure to take necessary protective measures, such as failing to bring actions against infringements or remaining silent when the trademark is used as a generic definition in dictionaries, the trademark becomes a common name in trade for the relevant product.
2. Trademark Becoming Misleading Through Use – Article 25/1(c)
This occurs where, because of the manner in which the trademark is used by the trademark owner or an authorised person, the trademark becomes misleading to consumers regarding the nature, quality or geographical origin of the goods.
V. PROCEDURE, TIME LIMITS AND PROCEDURAL DEFENCES
An invalidity action is conducted before the Civil Courts for Intellectual and Industrial Property Rights and is subject to strict procedural rules.
1. Competent Court and Jurisdiction
Subject-Matter Jurisdiction: The specialised Civil Courts for Intellectual and Industrial Property Rights have jurisdiction. In judicial districts where these specialised courts have not been established, the Civil Courts of First Instance designated by the Council of Judges and Prosecutors are competent.
Territorial Jurisdiction: Under Article 156 of the Industrial Property Code, jurisdiction belongs to the court of the defendant’s place of residence at the date the action is filed, or to the court of the place where the unlawful act occurred or where its effects were observed.
2. Legal Standing
Active Standing – Claimant: An invalidity action may be brought by any person having an interest, public prosecutors, or relevant public institutions and organisations under Article 25/2 of the Industrial Property Code.
The concept of interest includes competitors in the market, traders using similar signs, or persons whose commercial activities are restricted because of the registration.
Passive Standing – Defendant: The defendant is the person or company appearing as the trademark owner in the register or their legal successors.
3. Time Limit for Filing an Action and the Principle of Acquiescence
Five-Year Limitation Period: As a rule, an invalidity action must be filed within five years from the registration dateof the trademark under Article 25/6 of the Industrial Property Code.
This period begins not from the application date, but from the date on which the registration is published in the Bulletin and becomes final.
Bad Faith Exception: If the registration was made in bad faith, the five-year limitation period does not apply. An action may be filed at any time as long as the registration remains on the register.
Loss of Rights Through Acquiescence: If the owner of an earlier right knows, or as a prudent trader should have known, that a later registered trademark is being used in the market but remains silent for a long period without a justified reason and does not bring an action, the earlier right holder may later lose the right to request invalidity under the principle of good faith in Article 2 of the Turkish Civil Code.
According to the practice of the Court of Cassation, this period is generally five years.
However, where the defendant acted in bad faith, the defence of acquiescence is not accepted.
4. The Defendant’s Strongest Defence: Non-Use Defence – Article 25/7
One of the most effective procedural defences available to the defendant in an invalidity action is the non-use defenceunder Article 25/7, with reference to Article 19/2.
How It Works: If the claimant brings an action based on an earlier registered trademark and relies on likelihood of confusion under Article 6/1, and at least five years have passed since the registration of the claimant’s earlier trademark, the defendant may request the claimant to prove that the earlier trademark has been genuinely used in Türkiye for the relevant goods or services during the previous five years.
Burden of Proof: Once this defence is raised, the burden of proof shifts to the claimant.
The claimant must prove genuine use of the trademark in a manner capable of creating or maintaining market share by submitting documents such as invoices, delivery notes, catalogues, advertising and marketing expenditure records, and market share data.
Legal Consequence: If the claimant cannot prove genuine use or a proper reason for non-use, such as an import ban or a state of war, the invalidity action is dismissed on the merits even if there is a direct likelihood of confusion between the trademarks.
CONCLUSION AND ASSESSMENT
An action for invalidity of a trademark is one of the main legal mechanisms that establishes a balance between the exclusive rights provided by trademark registration and the conditions of fair competition in the free market.
Signs that do not meet the registration requirements or that infringe the earlier genuine rights of third parties are completely removed from the register through a court decision on invalidity having retroactive (ex tunc) effect.
On the other hand, mechanisms such as the five-year limitation periods, loss of rights through acquiescence and the defendant’s non-use defence also protect the commercial investments of good-faith traders and market stability.
Within this framework, it is highly important for right holders operating in the field of industrial property to:
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