Trademark Invalidation in Turkey: Grounds, Process & Non-Use Defense
- Jan 27
- 5 min read
Updated: Mar 11
In Turkish trademark law, trademark rights may terminate due to the expiration of the registration period without renewal, surrender of the mark, revocation, or invalidation. The fact that a trademark is registered in the registry of the Turkish Patent and Trademark Office (“TURKPATENT”) does not mean it has become an absolute and unquestionable right. While trademark registration provides strong protection, there is always a risk that the trademark may be struck from the registry (cancelled) through an invalidation lawsuit if the registration is based on unlawful grounds.
An invalidation lawsuit is a type of legal action that renders a trademark invalid from the moment of registration and, subject to certain exceptions, strikes it from the legal landscape as if it had "never existed". In this article, we will detail the invalidation process, which is of vital importance for trademark owners and applicants.
General Overview: Parties to the Lawsuit and Jurisdiction
The invalidation of a trademark can only be requested through the courts. Although revocation processes have been transferred to TURKPATENT as an administrative path, the authority to decide on invalidation belongs exclusively to the Civil Courts for Intellectual and Industrial Property Rights.
Who is the Defendant? The defendant in an invalidation lawsuit is the registered owner of the trademark. Contrary to popular belief, TURKPATENT cannot be named as a defendant in this lawsuit.
Who is the Plaintiff? The right to file the lawsuit belongs to persons with a legal interest, public prosecutors, or relevant public institutions and organizations.
Who is a "Person with a Legal Interest"? This includes any real or legal person who suffers commercial damage, faces the risk of damage, or whose right to use a specific sign is unfairly restricted (or at risk of being restricted) due to the contested trademark.
Grounds for Trademark Invalidation
A trademark invalidation lawsuit can be filed based on the absolute grounds for refusal (Art. 5) or relative grounds for refusal (Art. 6) stipulated in the Industrial Property Code numbered 6769 (“Code 6769”).
It should be specifically noted that, pursuant to Art. 6/3 of the Code 6769, parties who do not have a registered trademark but have a prior unregistered use of the sign can also file an invalidation lawsuit based on those prior uses.
For grounds based on absolute refusal reasons, please refer to our other article "Absolute Grounds for Refusal in Trademark Applications & Appeal Processes in Turkey".
For grounds based on relative refusal reasons, please refer to our other article "Oppositions, Relative Grounds for Refusal, and Responses in Turkish Trademark Applications".
Statute of Limitations and Loss of Rights due to Acquiescence
The element of time is critical in invalidation lawsuits. Pursuant to Art. 25/6 of the Code 6769, the rule of "loss of rights due to acquiescence" applies.
If a trademark owner has remained silent regarding the use of a later-dated trademark for five consecutive years, despite knowing or being in a position to know about such use, they can no longer claim invalidation against that later mark—unless the later registration was made in bad faith.
Important Distinction: This rule of "acquiescence" applies only to lawsuits based on relative grounds for refusal. For absolute grounds for refusal, which concern the public interest, such a loss of rights due to silence cannot be claimed.
The Effect of Invalidation and Retroactivity
When an invalidation decision becomes final, it takes effect from the trademark application date. This means the protection provided to the mark by the Code 6769 is considered never to have existed. However, there are some exceptions to this strict rule to protect the stability of commercial life:
Finalized Judgments: Finalized and executed court decisions regarding trademark infringement issued before the invalidation decision are not affected (Art. 27/3).
Executed Contracts: Contracts (license, assignment, franchising, pledge, etc.) made and executed before the invalidation decision generally maintain their validity (Art. 27/3-b).
A finalized invalidation decision is effective erga omnes (against everyone) (Art. 27/5). When a trademark is struck from the registry, this affects not only the parties to the case but also all third parties who may wish to register the same sign.
Important Notes on Invalidation Lawsuits
Acquired Distinctiveness (Art. 25/4): A trademark registered in violation of Art. 5/1 (b, c, or d) cannot be invalidated if it has acquired distinctiveness through use for the registered goods or services prior to the invalidation request.
Consent: A person who has provided a Letter of Consent for the registration of another trademark cannot later request the invalidation of that mark. For detailed information on Letters of Consent, please see our other article "Letter of Consent in Turkey: Overcoming Trademark Refusals and Co-existence".
Prior Opposition is Not Mandatory: It is not a must to have filed an opposition during the bulletin publication stage at TURKPATENT to file an invalidation lawsuit. However, this right must not be abused; in some cases, avoiding opposition solely to cause damage to the applicant and then filing a lawsuit immediately after registration may be considered a violation of the rules of good faith.
The Non-Use Defense (Counterclaim)
One of the strongest defense tools in invalidation lawsuits is the non-use defense. Pursuant to Art. 25/7, if the invalidation lawsuit is based on the likelihood of confusion (Art. 6/1), the defendant (trademark owner) may raise a "non-use defense" against the plaintiff.
If the plaintiff’s trademark has been registered for at least 5 years as of the lawsuit date, the plaintiff must prove they have genuinely used the mark during that period.
Furthermore, if the plaintiff’s mark was already registered for 5 years at the time of the contested mark's application or priority date, the plaintiff must also prove genuine use for the 5-year period preceding that date.
If use cannot be proven, the lawsuit is dismissed regarding the Art. 6/1 argument.
For detailed information on the non-use defense and proof of use, you can review our "Trademark Use Requirements in Turkey: Administrative Revocation, Proof of Use, and the Non-Use Defense" article.
Conclusion: Secure Your Brand's Legal Status
Trademark invalidation lawsuits are highly technical and complex processes, both for those seeking to protect their registered marks and for those whose market access is blocked by unfair registrations. In this type of litigation, which can erase all rights from the registration date, the burden of proof and statutory periods determine the outcome.
Goklu Law & IP Firm provides professional legal consultancy and litigation services in trademark invalidation cases, representing both plaintiffs (requesting the invalidation and removal of unfair marks from the registry) and defendants (protecting registered trademarks). For detailed information regarding the legal security of your brand or your intention to file an invalidation lawsuit, please contact us.
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