1.1. The Invalidity of a Trademark
1.1. 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 (“SMK”), separate grounds for invalidity and revocation have been devised. Therefore, the uncertainty observed during the Decree-Law period has now ceased. Furthermore, harmonization 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.
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.
1.1.1. 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 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 exist, invalidation of 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 the 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 exist. However, SMK Art. 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 para. 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 5 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 5 years ago.
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 5 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.
1.2. Regarding Partial Invalidity
SMK Article 5 para. 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.
2. Invalidation Proceedings
2.1. 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 the third parties. While there is a 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. According to the said decision, it is decided as “The Court has decided to the partial admission of the case and the refusal of the request concerning the decision of the Board within the Department of Re-examination and Evaluation at the Turkish Patent Instıtute; to the partial invalidation of the trademark “EVYAP” code-numbered 2005/40490 which is registered for the claimants; to the invalidation and degistration of the trademark code-numbered 2005/40490 for the classes 11 and 19 pursuant to Decree-Law No. 556 Articles 8(5) and 42 through the admission of the request; due to the grounds that according to the claimant, defendant, adopted opinion regarding expert’s report, and the scope of the case; that the trademarks of the parties are similar pursuant to Decree-Law No. 556 Article 8(1)(b); that these goods are associated within the given class and that there is a possibility of confusion for the target group, therefore the decision of the Board within the Department of Re-examination and Evaluation is legitimate; that the claimant has a preferential right due to their trade name pursuant to Decree-Law No. 556 Article 8/5 and the product groups which have been requested for invalidation are related/associated; that the grounds for invalidation do not exist; that according to the interpretation of the claimant’s lawsuit petition and their subsequent petitions, the intent of the claimant to rely on their preferential right is based on Decree-Law Articles 8(3) and 8(5), and that since the claimant’s reliance on the registered trade name is implied from the interpretation of their petition’s legal characterization, the amendment of the petition is not necessary due to the applicability of Article 8(5) to the invalidation request; that the judge is not bound with the legal ground purported by the parties and shall investigate and determine the legal ground of the facts purported by the parties in their petitions motu propriu, and since the request contains the Article 8(5) of Law-Decree No. 556, it would not be necessary to amend the petition.”
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.
2.2. Regarding Proceedings
2.2.1. Parties to the Proceedings
Pursuant to SMK Article 25 para. 2, persons who have interests, public prosecutors or relevant public institutions and organizations 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 Law-Decree 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, 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 para. 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.
Another group of those who have interests in requesting invalidation are public institutions and organizations. For instance, if an insignia of a ministry is registered, the aforesaid ministry may request for invalidation as a public institution and organization that has interests.
Pursuant to SMK Article 25 para. 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 proceeding 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, TURKPATENT shall not be designated as a defendant.
2.2.2. 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 civil courts of intellectual and industrial property rights and criminal courts of intellectual and industrial property rights pursuant to SMK Article 156 para. 1. Following the amendments made in 2004, the court is now composed of a single judge rather than a panel of judges.
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 para. 3.
In legal proceedings to be instituted against the owner of trademark by third parties, competent court is the court where the defendant is domiciled, pursuant to SMK Article 156 para. 5. In case the owner of the trademark does not have a domicile in Turkey, 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.
2.2.3. Peremptory Period
The peremptory period in invalidation proceedings is regulated under SMK Article 25 para 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, 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 in 5 years, otherwise, it seems likely to suffer the loss of his rights due to acquiescence.
Another essential point to note in SMK Art. 25 para. 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.
2.2.4. Loss of Rights Due to Acquiescence
As explained above, SMK Art. 25 para. 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, 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 Law-Decree 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, 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 loses the prior trademark proprietor his rights to allege due to his acquiesce 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.
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 Art. 2. In the legal theory, however, Çolak considers that this is a defense and shall be pleaded by a party.
2.2.5. The Invalidation Decision and Its Effect
According to the law of procedure, an invalidation decision is enforced upon the finalization of the decision. While the enforcement procedure regarding the invalidation decision was not regulated under Law-Decree No. 556, SMK clarifies this issue now. SMK Art. 27(6), SMK Art. 27(7), and SMK provisional article 4(3) is of guidance in terms of enforcing the invalidation decision. According to these three articles, following the finalization 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, and pursuant to SMK provisional article 4(3), the decisions given by the courts shall be ex officio sent to the Office upon finalization. In this case, following the invalidation decision and its finalization, the trademark will be removed from the register by TURKPATENT.
Effects of the invalidation decision are regulated under SMK Art. 27. Pursuant to SMK Art. 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 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 decision on invalidity may not affect two cases, pursuant to SMK Art. 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 retroactive effect of the decision on invalidity pursuant to SMK Art. 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.
 Ayşe Aytemiz Özünel, Marka Hukukunda Kullanım Sonucu Ayırt Edicilik Kazanılması ve Ayırt Ediciliğin Kaybedilmesi, p. 68.  Yargıtay 11. HD, 17.06.2013 T. , 2012/13214 E. , 2013/12491 K. , https://www.kazanci.com.tr (Date of access: 20.05.2020).  Cahit Suluk / Rauf Karasu / Temel Nal, Fikri Mülkiyet Hukuku, İstanbul, 2017, p.220.  Except for the proceedings to be instituted along with an action for nullity of a decision by TURKPATENT’s Board within the Department of Re-examination and Evaluation.  See 2.2.3.  Uğur Çolak, Türk Marka Hukuku, 4th Edition, İstanbul, 2018, p.891.