Long-awaited Secondary Legislation for Administrative Revocation of Trademarks Finally Published

• The Patent and Trademark Office obtained the authority to revoke trademarks on 10 January 2024
• Fourteen months later, the office published a regulation concerning the implementation of the administrative revocation of trademarks
• A key novelty is that, in addition to the application fee, the requesting party must also pay an escrow fee 

Background

The administrative revocation of trademarks was introduced with the entry into force of the Industrial Property Code No 6769 on 10 January 2017, but its implementation was postponed for seven years. Article 26 of the code determines that interested parties may ask the Patent and Trademark Office to revoke a trademark on the following grounds: 

• absence of genuine use;
• the mark has become generic or misleading for the registered goods or services; or
• use contrary to the technical specifications (for a guarantee or collective mark). 

With the seven-year transition period coming to an end, on 23 October 2023 the office published a “Draft Regulation for Amendment of the Regulation on the Implementation of the Industrial Property Code” for comments. However, the actual “Regulation on Amendment to the Regulation on the Implementation of the Industrial Property Code” (‘the regulation’) was published and entered into force only on 15 March 2025. 

Key points

Article 30/A-3 of the regulation sets forth that a revocation request can be filed by paying the legal fee and submitting the relevant form, which must include:

• the registration and the goods or services subject to the revocation request;
• the ID and contact information of the party making the request and – if any – of the trademark agent (a power of attorney is not necessary);
• the grounds for the revocation, and information or documents regarding the grounds for revocation other than non-use.

The regulation clearly stipulates that each revocation request can be directed only at a single trademark. Therefore, unlike revocation proceedings before the IP courts, a revocation request cannot be directed at multiple trademarks simultaneously. 

Additionally, if the applicant believes that the conditions for revocation were met at an earlier date, this must explicitly be mentioned in the request. Under the regulation, the request must be filed against the trademark proprietor or its legal successor and, if the trademark is assigned during the revocation proceedings, the request will continue to be heard against the new proprietor.

Article 30/A-5 of the regulation sets forth that, if the revocation request is not properly filed, the office will grant one month to the requesting party to fulfil the procedural deficiencies, such as lack of payment of the official fees and dues, and missing information. If the deficiencies are not fulfilled within the prescribed period, the office shall dismiss the revocation request. The regulation stipulates that a revocation request based on non-use filed against trademarks that have been registered for less than five years will be dismissed. 

Upon receiving a properly filed revocation request, the office will ask the trademark proprietor to file evidence proving the genuine use of the trademark at issue for the goods and services for which the trademark is registered, or evidence showing justified reasons for non-use. Use by the trademark proprietor within the three months preceding the submission date of the request shall not be taken into consideration, in case such use is carried out with a view to avoiding the consequences of the revocation request. If no evidence is filed in a timely manner, or if it is insufficient to prove genuine use for the goods or services subject to the revocation request, the office will accept the revocation request. 

The trademark proprietor will have one month to file its evidence and information, and may be granted an additional period of up to one month upon request. The office can also ask for additional documents and explanations if deemed necessary.

The regulation also stipulates that “a revocation decision cannot be made for similar goods or services”. It is assumed that this provision has been added to ensure that the trademark is not revoked for the goods/services for which use is proven; however, this does not extend to similar goods/services. 

Finally, in addition to the application fee, the requesting party shall also pay an escrow fee, to be held in the escrow account until the office renders its final decision on the revocation request. This additional escrow fee will not be applied retrospectively to requests filed before 15 March 2025. In this respect, for revocation requests filed as of 15 March 2025, the total amount that must be paid initially is TL46,916,66 + 20% VAT (ie, TL56,300 including VAT, or approximately €1,375).

Upon the office’s final decision, if the revocation request is entirely rejected, the escrow fee will be refunded to the trademark proprietor upon request; if the revocation request is entirely accepted, the escrow fee will be refunded to the requesting party upon request. In case of partial acceptance of the request, no payment will be made to either party, and the escrow fee will be recorded as revenue for the office. 

Comment

It is understood that the escrow fee was introduced as a deterrent to discourage trademark squatters or infringers that may target genuine trademark owners by abusing the administrative revocation system. Arguably, this new provision is a positive step which might also decrease the office’s workload due to unfounded revocation requests. However, although the provision aims to ensure that the requesting party focuses only on the goods/services that are an obstacle to them, many legal complexities may arise from the escrow amount mechanism in case of partial acceptance of the revocation request. 

Despite a lack of clarity in certain provisions, this long-awaited regulation puts the administrative revocation of trademarks into action. Given the significant number of revocation requests submitted since 10 January 2024, and considering that this procedure was introduced only recently, it is difficult to estimate how long the office will need to reach a final decision on each revocation request.  

Nevertheless, it is anticipated that the office will start handling pending revocation requests filed prior to the regulation’s entry into force by issuing official letters to inform the requesting parties of any deficiencies and move forward with the examination process as soon as possible. 

First published by WTR in Apr 04, 2025.