Session 1: Trade marks
Cancellation of trade marks due to non-use –
including latest development in Turkish
trademark practice.
Dr. Elif Betül Akın
Head of Reexamination
and Evaluation
Department
/
President of BOAs
Turkish Patent & Trademark Office
turkpatent
.gov.tr
Turkish IP Code No 6769
Use of Trademarks (Article 9)
Cancellation/Revocation of Trademarks
(Article 26)
Effects of Cancellation (Article 27)
Administrative
Cancellation
January 10, 2024
turkpatent
.gov.tr
Revocation for Non-use
According to Article 26 of IP Code the rights of the proprietor of a
trademark will be revoked on the application to the Office, if
within a
continious period of five years
,
the trademark has not been put to
genuine use
for the goods and
services for which it is registered,
and there are
no proper
reasons
for non-use
Revocation will be effective as of date of the application for revocation. (
ex nunc
)
Request for an earlier date of effect is possible! (Article 27)
turkpatent
.gov.tr
Procedural Aspects
Who can file an application for revocation?
Application for revocation can be filed by
interested persons
.
Burden of proof:
On the
trademark proprietor
!
Period of time to be considered:
Trademark registered for more than five years on the date of application for
revocation.
Trademark must have been genuinely used within five years before that date
15.04.2021
Period of time to be considered
Request for revocation
15.04.2026
5 YEARS
turkpatent
.gov.tr
Generated by Gemini
.
turkpatent
.gov.tr
Genuine use is a
ctual
use of the mark with a
real commercial purpose
that will depend on the
17
Genuine use is a
ctual
use of the mark with a
real commercial purpose
depending on the
characteristics of the market concerned,
not merely token
, serving solely to preserve the
rights conferred by the mark.
The purposes of genuine use is
not to assess commercial success
or the economic strategy of
an undertaking, nor is it to restrict TM protection to large-scale commercial use.
CONCEPT OF GENUINE USE
turkpatent
.gov.tr
Assesment of Genuine Use
Place
of Use
Time
of Use
Extent
of Use
Nature
of Use
18
Overall
assessment
CUMULATIVE
Interdependence
Genuine use demonstrated by objective evidence of
effective and sufficient use of the trademark
on the relevant market.
turkpatent
.gov.tr
Invoices
Catalogues, brochures
Packages, labels, photos, price lists
Advertising materials, catalogues & brochures
Newspaper advertisements, social media coverages
Market surveys, opinion polls
Annual reports
Expert reports, affidavits
Custom documents, declarations from Chamber of Commerce….
19
What types of evidences?
turkpatent
.gov.tr
Procedural Aspects- Notification
Revocation requested for all goods.
TMD: Request was notified to TM holder. Neither evidence nor
request for additional time submitted in due time. Revocation
request accepted, TM revoked for all goods.
BoA:
Notification was invalid
. TM attorney should have been
notified
Procedure over substance!
Appeal upheld, decision annulled, remittal to Trademark
Department
Class: 9 (Vending machines, Fire
extinquishers, welding
apparatus,sunglasses etc)
2026-M-4091
turkpatent
.gov.tr
Extent of Use
The owner argued that trademark was registered in 2019 (when courts
held revocation authority,
TÜRKPATENT lacked the power to revoke
it; the applicant
lacked legal interest
and acted in bad faith.
Evidence: the owner submitted only two invoices (one within time) of
computer services and design) trade registry records, and website
screenshots.
BoA: Not sufficient
to prove genuine use
.
Appeal rejected, TM revoked
2026-M-4831
All the goods/services
in Class 9 and 42
turkpatent
.gov.tr
Evidence submitted: construction & real estate documentation:
contractor query records, building visuals, and store images,
construction permits, work completion certificates, commercial
Documents: Invoices, contracts, activity certificates, and bank
guarantee letters, marketing materials:
Registration maintained for
«construction services»
TM partially revoked, no appeal filed, decision confirmed
All the services included in class 35,
36, 37, 39, 41,42 and 43
Extent of Use
turkpatent
.gov.tr
Nature of Use: Defining independent "Sub-Categories
Evidence (invoices, shelf photos, internet articles) sufficiently proved
use only for
"medicines for human health"
(specifically for infertility
treatment)
BoA: Human medicines" and "animal health medicines" constitute
independent and consistent sub-categories
within Class 5.
Use in one sub-category (human health) does not automatically
protect unrelated sub-categories (animal health, chemical products,
diagnostic kits).
Registration maintained
"medicines for human health"
Appeal rejected, TM partially revoked
2026-M-4244
Class 5: Medicines for human and
animal health, therapeutic creams,
vaccines, vitamins, pregnancy tests,
and diagnostic preparations…
turkpatent
.gov.tr
Nature of Use: Use of the Mark In an Altered Form
Appeal rejected, TM revoked
•
TM holder claimed the mark used extensively in
the furniture and construction sectors.
Submitted invoices, catalogs, and social media
screenshots as evidence
•
BoA: adding the letter
"O"
to the beginning of
"rge"
altered the mark and its pronunciation
•
Addition was not a minor change, created a
new
commercial impression
•
Does not consitute genuine use of the
registered trademark
.
turkpatent
.gov.tr
Questions?
25
Gülay Göksu
NSN Law Firm
Member
FICPI Türkiye
Non-Use Cancellation in Turkey
From Court to TPTO: Key Considerations in Cancellation Proceedings
and Trademark Portfolio Management
What Has Changed in Practice?
Before
• Court proceedings
• Long timelines
→
Less effective in some cases in achieving the
desired outcome
→
Less preferred due to time and cost
Now
• Administrative system (TPTO)
• Faster and easier to initiate
→
More effective
in some cases in achieving the
desired outcome in
achieving the desired
→
Creates a stronger incentive to initiate non-
use actions
What to Consider in Cancellation Proceedings?
APPLICANT'S PERSPECTIVE
01
Active Mon itor in g is Requir ed
02
Retr oactive Effect of Can cellation / Legal In ter est
03
Selective Appr oach to Goods/ Ser vices
0 1- Act ive Monit or ing is Requir ed
Follow the File — Evidence Is
Accessible
Evidence submitted by the
trademark owner is n ot for m ally
n otified to the applicant under
the current system.
What You Should Do
The TPTO system now allows
access to the file and submitted
evidence. Follow the own er 's
defen ce an d eviden ce, an d
r espon d wher e n eeded.
Active m on itor ing is r equir ed — do not assume you will be
automatically informed of evidence submissions by the
trademark owner.
02- Retroactive Effect of Cancellation & Legal
Interest
Default Rule
Cancellation is effective as of t he filin g dat e of the
cancellation request.
Earlier Effect May Be Requested
This is n ot aut om at ic — it must be justified. A
relevant example: prior refusal of the applicant's
mark based on the earlier mark.
When seeking an earlier effective date, always ensure the legal interest is clearly documented and
substantiated in the request.
03-Selective Approach to Goods & Services
Focus on goods/ services where there is a clear legal in t er est .
Efficiency of Review
A more targeted request helps the TPTO carry out a
more efficient review.
Fee Implications
Full acceptance allows the deposit fee to be fully
r efun ded. However, if the cancellation is fully or
partially rejected, the deposit is n ot r efun ded.
A targeted scope of goods/ services is both strategically and financially advantageous.
What to Consider in Cancellation Proceedings?
TRADEMARK OWNER'S PERSPECTIVE
1
Act Quickly – Deadlines
Are Strict
Deadlines are short and
strict. Late submission of
evidence may lead to loss of
rights.
2
Be Selective with Evidence
Evidence
Prioritise strong evidence
(e.g. invoices, sales records).
Avoid overloading the file
with weak or irrelevant
documents.
3
Ensure Clarity
Evidence should clearly
show the mark, date and use.
Make it easy for the Office to
understand the use.
What to Consider Under the New System for
Tr adem ar k Por tfolio Man agem en t?
PROACTIVE PORTFOLIO AUDIT:
Non- use not only creates a risk of cancellation, but also affects enforceability: Risk of n on - use defen ce in
opposit ion s, in validat ion an d in fr in gem en t act ion s.
Review vulnerable marks and consider alternative filing strategies.
MAINTAIN STRONG EVIDENCE OF USE:
Do not wait until a cancellation action is filed to begin gathering
evidence.
Proactive documentation is no longer optional — it is a core part of portfolio management.
MORE SELECTIVE OPPOSITION:
Avoid relying vulnerable marks where possible.
FILING STRATEGY (IR vs National):
In cases of ex officio risk due to a prior mark that is not in use, national filings may offer more flexibility
The TPTO may wait for the outcome of non- use cancellation in national applications
This may not always be possible for IR applications due to time constraints
Eleni Kokkini
PPT Legal, Greece
Vice President
Study & Work Committee
Session 1: Trade
marks
Cancellation of European Trade marks
due to non-use: Basic rules and latest
developments
The basic EUTMR provisions: Article
58(1)(a) and 58(2)
Article 58(1)(a): 1. The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or
on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in
connection with the goods or services in respect of which it is registered, and there are no proper reasons for nonuse; however, no
person may claim that the proprietor's rights in an EU trade mark should be revoked where, during
the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the
trade mark has been started or resumed; the commencement or resumption of use within a period of three months
preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous
period of five years of non-use shall, however, be disregarded where preparations for the commencement or
resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;
2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the
EU trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or
services only
Basic legal requirements:
Burden of proof: the
EUTM proprietor
(Art. 19(1) EUTMDR)
No ex officio
determination of
genuine use – even
proprietors of well-
known marks must
prove genuine use
Evidence:
indications
concerning place,
time, extent and
nature of use (Art.
19(1) & Art. 10(3)
EUTMDR)
Assessment of
genuine use same
as in opposition
proceedings
Period of time for
proof of genuine
use: 5-year period
preceding the date
of the filing of the
cancellation
(Example: a. EUTM
registered
01.01.2011. b.
susceptible to
cancellation from
02.01.2016. c.
Application for
cancellation filed
15.09.2016. d.
Period for proof of
use: 15.09.2011 to
14.09.2016.
Earlier effective
date of cancellation
may be requested
(Art. 62(1) EUTMR),
only with legitimate
interest and under
circumstances
General principles on the standard of proof (Minimax C-
40/01 & Laboratoire de la mer C-259/02)
•
Actual use, not merely token
•
Consistent with the essential function of the mark (guarantee the identity
of the origin of the goods/services)
•
Use on the market, no internal use
•
Relating to goods or services marketed or about to be marketed
•
Real exploitation of the mark, with the purpose of maintaining or creating
a share in the market
•
No “one size fits all”: nature of goods/services, characteristics of the
market concerned, scale and frequency of use
•
“Quality, not quantity counts” / No de minimis rule
Place, time and extent of use
Place: use in the EU
No need to use in a
substantial part of EU
Also use in single
Member State (or even
city?) may be sufficient
Important: the impact of
use in the internal
market, market share
(intention – commercial
success not relevant)
Use in import and
export: YES. Mere
transit: NO
Time of use: 5 years
before the cancellation.
Undated material?
Extent of use:
interdependence of the
relevant factors, no de
minimis rule
Use as a trade mark
No purely illustrative use
or on promotional goods
and services
Use as a sign or business
name? Depends on the
circumstances
Use as a domain name:
usually only identifies
website as such
Use publicly and
outwardly, in the context
of commercial activity
Goods and services
offered free of charge?
Use on merchandize
items?
Use for services:
business paper,
advertising, invoices
Use on the internet?
Use of the mark as registered or of an
acceptable variation: challenging! (also
see CP8 Common Practice)
•
Case of simultaneous use of
independent marks (e.g. house mark
and sub-brand): criterion of remaining
independent and perception by the
public.
•
Use in a form different from the one
registered: a) which elements are
distinctive and contribute to the
distinctive character b) identify
differences and evaluate the impact of
variations
Use in connection with registered goods /
services
•
Aladin case T-126/03: cancellation = permissible
limitation of proprietor’s rights
•
Assessment of goods / services used in comparison of
category of registered goods / services
•
Relevance of classification? (in some cases the class
chosen may be crucial)
•
Aladin case: if category able to be divided into
subcategories: protection afforded only to
subcategory to which the goods/services in use
belong (challenging exercise, matter of justification)
Recent EUIPO & court case trends and
developments
RoboBett case: BoA R 0623/2025:
Litigation risk is not a justification for non-use! Ongoing legal battles
(infringement or opposition proceedings) do not excuse a failure to use a mark. Legitimate reasons for non-
use must be objective obstacles independent of the proprietor's will, not strategic commercial caution.
CJEU Dialoga case: T-1075/23: even if a trademark is well-known, it must still meet the "genuine use"
requirement for all registered goods and services to avoid partial revocation.
Zoom decision of the BoA: R 270/2025-2 and R 272/2025-2: "ZOOM" trademark cancelled for certain
hardware, demonstrating that even famous brands risk losing protections if the mark is not actively used in
the specific commercial sectors listed in the registration
Recent EUIPO & court case trends and
developments
03/09/2025, T-1/24, SANDOKAN, EU:T:2025:818
: Vague evidence, low social media activity, or
limited sales are insufficient to prove genuine use. Invoices must directly relate to the registered
services, and the proprietor has the burden of proof to show actual, sustained market use.
Mediation Available for Cancellations (June 2024, since
01.07.2024): (
https://www.euipo.europa.eu/en/news/mediation-service-available-for-eutm-
).
Thank you for your attention!
Any questions? Contact me at
or
46
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