Turkey: Constitutional Court Cancels Provision Concerning The Invalidation Of Trademarks Due To Non-Use Thereby Fragilizing Further The Legislative Basis For The Protection Of Patents, Uitility Models, Design Patents, Geographical Indications And Trademarks

Last Updated: 27 October 2014
Article by Okan Çan and Gulcin Gokus

According to a recent decision1 of the Turkish Constitutional Court, the provision of Article 42/c of the Turkish Decree Law no: 556 on trademarks has been cancelled upon a request filed by the 4th Intellectual Property Court of Istanbul (IP Court).

The cancelled provision of Article 42/c regulated the issue of invalidity due to non-use and read as follows;

A registered trademark shall be declared invalid by the court in following cases: [... ...] c) where in breach of Article 14, (However, serious use between the date of instituting of the proceedings and the expiry of five years shall not constitute a ground for invalidity. If use has been made upon realization that proceedings are to be instituted, in such a case the court shall not take into consideration the use that took place within three months prior of the institution of the proceedings).

The action before the constitutional court was triggered by the 4th IP Court of Istanbul in accordance with Article 152 of the Constitution whereby the Constitutional Court was requested to cancel the provision of Article 42/c for violating Articles 22, 353 and 91/14 of the Constitution mainly on following grounds:

1. In accordance with the provision of Article 42/c, a registered trademark can be invalidated by the Court and since the invalidity decision has a retroactive effect as per Article 44 of the Decree Law, the registered trademark is declared invalid as from its registration date. The IP Court claimed that the decision should not have a retroactive effect but should be deemed as a cancellation, having effect from the finalization of the cancellation decision, without having a retroactive effect to the registration date. The IP Court claimed that Article 145 of the same Decree Law properly provided the sanction for non-use to be a cancellation instead of invalidity with retroactive effect.

2. The second ground for cancelling the provision was that a "registered trademark" consists of a "property right" and that the invalidation/cancellation of a registered trademark on the basis of the Decree Law is destructive of such "property right". The claim of the IP Court was grounded on the fact that "property rights" can be restricted or abolished only on the basis of a legislative Act voted through the Parliament, but not on the basis of a Decree law, which is an Act of the Council of Ministers.

The Constitutional Court, favorably considering the IP Court's request and grounds for cancellation, decided to cancel the provision of Art 42/c for violating the constitution. In its reasoned decision, the Constitutional Court states that a trademark right consists of a "property right" protected as of Article 35 (property rights) of the Constitution and that Article 91 of the Constitution prohibits the restriction/abolishment of a "Property Right" on the basis of a Decree Law. The Constitutional Court, having based its motivation on the aforementioned main grounds, did not address the other grounds of cancellation put forward by the IP Court.

The decision, by cancelling the provision of Article 42/c of the Decree Law no. 556 concerning the invalidity due to non-use is causing hesitation and uncertainty in regard to claiming cancellation/invalidity of a trademark where the trademark has not been put to use for the past 5 years as of its registration date. Although the Constitutional Court's decision cancelled the provision regarding the invalidation, we continue to believe that the cancellation (but not invalidation) can still be claimed in accordance with Article 14 of the Decree Law No: 556, which has not been affected by the Constitutional Court's decision. However, it should be noted that the cancellation decision to be rendered by the Courts on the basis of Article 14 of Decree-Law No: 556 will not have a retroactive effect to the registration date.

The Constitutional Court has previously issued other decisions declaring unconstitutional the provisions of Articles 1656 and 1587 of the Decree Law No: 551 on Patents and Utility Models which are reasoned exactly on the same grounds: [that patent rights/utility models are "property rights"] that Article 91 of the Constitution provides that the restriction/abolishment of a "property right" can be made solely on the basis of an Act of Parliament and that a Decree Law can therefore not constitute the basis for restricting/abolishing a "property right" such as a Patent or Utility Models.

The Constitutional Court has rendered a decision8 on declaring unconstitutional and cancelling the Additional Article 2 of the Copyright Act No: 5846, as amended by Law No: 4630 dated 21/02/2001, on the ground that it violates Article 35 of the constitution on "property rights"

By another decision9 in 2008, the Constitutional Court also cancelled criminal provisions and sanctions provided in Decree-Law no. 556 on trademarks on the grounds that the definition of offences and of the criminal sanctions need to be regulated by an Act and not by a Decree-Law, as per the general principle of criminal law i.e. "Nullum crimen sine lege". A new Act No. 5833 replacing the cancelled provisions of the Decree-Law pertaining to Trademarks only entered into force on 28 January 2009 and the trademark right holders gained the right to ask for the conviction of new trademark infringements committed after 28 January 2009 according to the new Act No 5833.

By declaring them unconstitutional and cancelling some provisions of the Decree Law No 551 on Patents and Utility Models, of the Decree Law No: 556 on trademarks and of the Copyright Act. No: 5846, successive decisions of the Constitutional Court fragilize the legislative basis for the protection of patents, utility models, design patents, geographical indications and trademarks as the Decree-Laws No: 551, 554, 555 and 556 regulating them contain several provisions which may lead to the restriction/abolishment of the "property right" based on them. The combined effects of these decisions obviously bring forward the debate concerning the validity and enforceability of the provisions of the Decree Laws No: 556 for trademarks, Decree Law No: 551 for patents and Utility Models, Decree Law No: 554 for Industrial Designs and Decree Law No: 555 for Geographical Indications, as any attempt for either partial or total invalidation/cancellation of the IP rights regulated on the basis of these Decree Laws can be objected and questioned in light of the above referenced precedent decisions of the Constitutional Court during the court proceedings. Such a possibility is obviously causing serious legal uncertainty with respect to the enforceability of Turkish patents, Utility Models, design patents, trademarks and geographical indications on the basis of the current legislation regulating them, which mainly consists of Decree Laws.

The draft of the Act which is waiting before the Parliament to be enacted, aims to partially amend the provisions of the existing Decree Laws rather than to replace them with a new Act. The partial amendments are not likely to prevent the non-amended provisions of the Decree Laws from being challenged as unconstitutional. Therefore, in order to remove any uncertainty concerning the effective enforcement of the Decree Laws currently in force and any further decisions of the Constitutional Court on similar grounds, they need to be replaced in their entirety with new and updated Laws enacted through the Parliament.


1 Case No: 2013/147, Decision No:2014/75, Date:09/04/2014

2 II. Characteristics of the Republic; Article 2: The Republic of Turkey is a democratic, secular and social state governed by the rule of law; bearing in mind the concepts of public peace, national solidarity and justice; respecting human rights; loyal to the nationalism of Atatürk, and based on the fundamental tenets set forth in the Preamble

3 XII. Property Rights; Article 35; Everyone has the right to own and inherit property. These rights may be limited by law in view of public interest. The exercise of the right to own property shall not be in contravention of the public interest

4 E. Authorization to Enact Decrees Having the Force of Law; ARTICLE 91. The Turkish Grand National Assembly may empower the Council of Ministers to issue decrees having the force of law. However, the fundamental rights, individual rights and duties included in the First and Second Chapter of the Second Part of the Constitution and the political rights and duties listed in the Fourth Chapter, cannot be regulated by decrees having the force of law except during periods of martial law and states of emergency.

5 Article 14: If, within a period of five years following the registration, the trademark has not been put to use without a justifiable/legitimate reason or if the use has been suspended during an uninterrupted period of five years, the trademark shall be cancelled. The following shall be understood to constitute use:

a) Use of the registered mark with differing elements without altering/affecting thereby the distinctive character of the trademark,

b) Use of the trademark on goods or their packaging solely for exportation purposes,

c) Use of the trademark with the consent of the proprietor,

d) Importation of the goods carrying the trademark.

6 Case No. 2001/1, Decision 2004/36, Date 23/03/2004, Action triggered by the 1st Commercial Court of Bursa for the cancellation of the provision of Article 165 parag. 3 of the Decree Law No: 551 on Patents and Utility Models.

7 Case No. 2013/100, Decision 2014/14, Date 29/01/2014, Action triggered by the request of the 4th IP Court of Ankara for the cancellation of the provision of Article 158 parag 2 of the Decree Law No: 551 on Patents and Utility Models.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Okan Çan
Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions