With the entry into force of Article 26/1 of the Industrial Property Law No. 6769 (“IP Law”) on January 10, 2017, the authority to handle non-use cancellation lawsuits, previously under the specialized IP courts, was transferred to the Turkish Patent and Trademark Office (“TPTO”), effective as of January 10, 2024. However, due to the lack of necessary infrastructure, non-use cancellation proceedings have not yet become operational. While applications are being accepted, substantive reviews have not yet commenced. As a recent development, a Regulation Amending the Regulation on the Implementation of the Industrial Property Law (“Amending Regulation”), that introduces provisions regarding non-use cancellation proceedings, was eventually published in the Official Gazette on March 15, 2025. Practitioners and the relevant parties with a legal interest in these proceedings, who have long suffered from the system’s ineffectiveness, now expect that, alongside this regulation, the necessary infrastructure will also be established, ensuring that the system becomes fully functional without further delay.
Another development is that, on March 15, 2025, the TPTO also published a Notification on Changes to the Fee Schedule for 2025, introducing a new fee structure for renewals and filings.
Below, we present the key highlights of the newly published Amending Regulation and notification:
1- New Rules on Non-Use Cancellation Proceedings:
On March 15, 2025, the TPTO published a Regulation Amending the Regulation on the Implementation of the Industrial Property Law (“Amending Regulation”). This amendment introduces specific changes, particularly concerning non-use cancellation proceedings. Key highlights include:
- Only a Single Trademark Can Be Subject to Cancellation in One Application: A cancellation request can only be made for a single registered trademark.
Previously, multiple trademarks could be requested for cancellation in a single lawsuit under court proceedings. This change will significantly increase the fees when cancellation proceedings need to be filed for multiple trademarks under the same owner.
- Two-Item Cancellation Fee and Fee Refund Process: The cancellation fee is defined as two items: the official TPTO fee and the fee to be held in a trust account. The concept of the trust account fee and its refund procedure is introduced for the first time with this Amending Regulation. According to the Amending Regulation: i) If the cancellation request is completely rejected, the fee held in the trust account will be transferred to the trademark owner, upon request; ii) If the cancellation request is completely accepted, the fee held in the trust account will be refunded to the cancellation applicant, upon request; iii) In cases of partial acceptance, the fee held in the trust account will be recorded as income by the TPTO, and no payment will be made to the parties. However, it should be noted that the Amending Regulation stipulates that these provisions will not apply to cancellation requests submitted to the TPTO before the entry into force of this Amending Regulation. In other words, the trust account fee will not be charged for applications made prior to the effective date of the Amending Regulation. This applies only to requests made after the Amending Regulation comes into force.
We believe the introduction of this additional fee structure aims to prevent frivolous requests, as it is anticipated that the shift from court proceedings to the TPTO handling cancellation requests will lead to an increase in such filings due to reduced costs for such proceedings.
- A cancellation decision cannot be made for similar goods or services: In the Amending Regulation, after stating that the mark will be canceled if the trademark owner fails to provide sufficient evidence of genuine use, it is further added that “a cancellation decision cannot be made for similar goods or services”
The exact meaning of this revision remains unclear. There are two possible interpretations: 1) If a partial cancellation request is filed and use cannot be proven, the cancellation decision will only cover the specific goods subject to the request, in other words, no cancellation decision will be made for similar goods and services if they were not explicitly included in the request. But if this is the intended meaning, it merely states the obvious, as cancellation decisions should, by default, be limited to the goods and services included in the request. 2) Alternatively, this statement may mean that a cancellation decision cannot be made for goods and services that are similar to those for which genuine use has been proven. If this is the case, this is actually different from the previous practice. Because, while cancellation requests were previously handled by the specialized IP courts, the court would only consider the goods or services for which genuine use had been proven, and cancel the rest, regardless of whether they were similar or not to those for which genuine use had been proven.
- Withdrawal of Cancellation Requests: The Amending Regulation provides that a cancellation request can be withdrawn before the TPTO makes a decision on the cancellation. In the case of a withdrawal, the fee held in the trust account will be refunded to the applicant upon request.
This issue was unclear before but has now been clarified. For the withdrawal, a clear power of attorney will be required, which includes this authority.
2- Key Changes in Renewal/Filing Fees:
On March 15, 2025, the TPTO also published a Notification on Changes to the Fee Schedule for 2025. Key highlights include:
- New Fee System for Renewals: Previously, the renewal fee was the same, independent from the number of the classes covered by the trademark registration, although it was again possible to partially renew the trademarks. However, with the Amending Regulation, the renewal fee is now defined in two categories: The renewal fee up to 2 classes and the renewal fee for each subsequent class as of third class the trademark registration is covering. Accordingly, the number of classes to be renewed now affect the renewal fee.
- New Fee System for Filings Involving Classes 35/5: An even more interesting and important amendment is on the filing fees for the services in class 35 subclass 05, which is the sale services of the goods in classes 01-34. Previously, it did not matter which goods in how many classes are included in the services of subclass 35/05, the filing fee was the same. Now, after the Amending Regulation, it was determined that for each class of goods added to the sale services defined in subclass 35/05 as of the third class, there will be additional fee.
These changes seem to ensure that the trademark owners who do not genuinely use or do not have any intention to use their trademarks for some goods and services are discouraged from renewing or registering the trademark for those unused goods and services.