01 Making Administrative Cancellation Requests a Preliminary Issue: Evaluation of a New Decision of the TPTO Board1
1. The Procedure for Administrative Cancellation of Trademarks and Ongoing Uncertainty
Industrial Property Law No. 6769 ("IPL") entered into force after it was published in the Turkish Official Gazette No. 29944 dated 10 January 2017. The IPL introduced the procedure for "administrative cancellation of trademarks"2 , and Article 26 of the IPL regulates that the Turkish Patent and Trademark Office ("TPTO") will decide on the cancellation of a trademark upon request, under the conditions specified in Article 26 of the IPL. In addition, Article 192/1 of the IPL sets forth that Article 26 of the IPL will enter into force seven years later (i.e., 10 January 2024), and provisional Article 4 of the IPL regulates that the courts will exercise the cancellation authority until the effective date.
The Regulation on the Implementation of the Industrial Property Law published in the Turkish Official Gazette No. 30047 dated 24 April 2017 does not contain any regulation on the administrative cancellation of trademarks. Therefore, it is expected that a regulation governing the procedures and principles for the implementation of the authorization granted to the TPTO will enter into force. For this purpose, the "Draft Regulation Amending the Regulation on the Implementation of the Industrial Property Law" ("Draft Regulation") prepared by the TPTO was opened for comments on 20 October 20233 and the comments were requested to be made to the TPTO until 3 November 2023.
Article 26 of the IPL entered into force on 10 January 2024 and after this date, it is no longer possible to file a lawsuit for the cancellation of trademarks before the courts. Cancellation requests can be made through the TPTO's Electronic Application System (tr. EPATS) but are not currently being examined. In the first few months after Article 26 of the IPL entered into force, a request could be made without any payment, as the fee for a cancellation request had not been determined. The fee for 20244 was then determined and notifications were sent to the applicants to make payments. If the payment was not made by 31 December 2024, the request would be deemed to have not been filed. However, the cancellation requests are not registered in the TPTO's online database, and — to the best of the author's knowledge — no notification has been made to the trademark owners regarding the cancellation requests. In other words, no further action regarding these requests has been taken up to now.
Although more than eight years have passed since the procedure for administrative cancellation of a trademark was first introduced, and more than a year has passed since its implementation, this extremely significant procedure of trademark law is still waiting to be reactivated (since there is no longer any opportunity to file a cancellation lawsuit). The decision of the TPTO Re-examination and Evaluation Board ("Board"), which will be examined in this article, is also related to the request to make the preliminary issue of the cancellation request in the appeal of the rejected request for cancellation.
2. Board Decision on the Rejection of the Request for Making the Preliminary Issue of the Administrative Cancellation
In the matter concerning this Board decision, an international trademark application filed under the Madrid Protocol was rejected on 18 March 2024 pursuant to Article 5/1(ç) of the IPL based on an earlier trademark registration. The applicant filed a request for cancellation against the earlier trademark before the TPTO and, in the opposition petition, requested that the examination of the appeal against the decision on the application be suspended until the cancellation is concluded.
On 16 January 2025, the Board rejected this request and decided on the merits. The Board has two main grounds for rejecting the request.
Paragraph 3 of Article 6 titled "Board decisions" of the Regulation on the Turkish Patent and Trademark Office Re-examination and Evaluation Department Boards ("Board Regulation") is as follows: "The Board may issue an interim decision to make a matter affecting the decision a preliminary issue." As can be seen from the wording of the relevant provision, the Board does not have a binding authority or obligation to make a matter a preliminary issue, and the Board has discretion in this regard. Although the Board has waited a reasonable period of time regarding this cancellation request, the TPTO has not yet decided on the cancellation request even though more than five months have passed since the date that the opposition petition was submitted. The Regulation for the implementation of the provisions of the IPL regarding the cancellation of trademarks has not yet entered into force, so the time when the TPTO will decide on the cancellation request is currently unpredictable (...).
Although TPTO has the discretion to make a matter a preliminary issue, this discretion will be used within certain limits. In a recent decision discussed on IPR Gezgini5, the Ankara 5th Intellectual Property Court ruled that, while exercising its discretion, the TPTO must always consider the "public interest", which is the ultimate purpose of administrative actions.
The first reason for rejecting the request in the Board decision is that the Trademarks Department has not made any decisions during the elapsed time. Initially, the Draft Regulation did not refer to the unit that would examine cancellation requests. At a symposium held in 2024, it was shared that cancellation requests would be handled first by the Trademarks Department and then by the Re-examination and Evaluation Department Directorate. The Board decision also indicates that no separate department will be established for cancellation requests, and these requests will be examined by the Trademarks Department.
Article 26 of the IPL entered into force on 10 January 2024, and more than a year has passed. Considering that the initial effective date of the IPL was 10 January 2017, more than eight years have passed. It has also been more than 15 months since the Draft Regulation was shared. The Board decision refers to the uncertainty of when a decision on a cancellation request will be made because the relevant regulatory arrangements have not yet come into force. Despite having no control over this matter, the applicant is left to bear the consequences of this uncertainty. If cancellation requests had been considered since 10 January 2024, a decision on the cancellation request would likely have been made by the date of the Board decision. The decision on the cancellation request could have directly impacted the substantive decision to be made.
Although this discussion would be better handled by experts in administrative law, the situation on whether a regulation determining the procedures and principles for exercising authorization must enter into force for the administrative cancellation of trademarks to become operational remains a separate issue. According to Article 1/1 of the Turkish Civil Code, "The law applies to all matters to which its wording and spirit refer". Article 26 of the IPL is detailed and contains provisions not only on substantive matters but also on procedural aspects (such as the time limits applicable to the parties). Provisional Article 4 of the IPL also indicates that the courts will exercise the cancellation authority "in accordance with the procedures and principles specified in the mentioned article". On the other hand, many provisions of the IPL explicitly foresee that the procedures and principles regarding a specific matter will be determined by regulation (e.g., consent; application, classification, and division; priority right request; publication opposition; registration, publication, and registration procedures; technical specifications). There is no such identification in Article 26 of the IPL, and most of the provisions in the Draft Regulation are in line with Article 26 of the IPL.
The second reason for the rejection of the request in the Board's decision is as follows:
On the other hand, considering that the application under review is an international application in which Türkiye is designated as a contracting party under the Madrid Protocol, and that international applications must be concluded by the local offices of the contracting parties within specific time frames according to the provisions of the mentioned Protocol (the notification period for rejection decisions is 18 months for Türkiye), if this period is not adhered to, an implicit acceptance (registration in Türkiye) will result pursuant to Article 4/1-(a) of the Madrid Protocol. In the present case, if the cancellation request is accepted, and the application is published and subsequently opposed by third parties, it will not be possible for the TPTO to issue a rejection decision under Article 6 of the IPL due to the expiration of the relevant periods. Consequently, a potential rejection decision based on a new and different article would not have any legal effect under the relevant Protocol provision and would not be accepted as valid by the World Intellectual Property Organization. Therefore, it has been concluded that the appeal against the decision should be examined within the current legal framework without waiting for the outcome of the cancellation request, and the merits of the case have been addressed.
Since the trademark subject to the Board's decision is an international application, there is time pressure arising from the Madrid Protocol, as also noted by the Board. However, this time pressure is somewhat related to the fact that the cancellation requests have not yet become operational.
While there is time pressure arising from the Madrid Protocol for international trademark applications, there is no such restriction for national trademark applications. In other decisions by the Board regarding appeals against decisions made under Article 5/1(ç) of the IPL, it is stated that the reasonable period expected for obtaining a consent letter or for transferring the trademark to the applicant is five months and that the TPTO is not obliged to delay its procedures beyond a reasonable period. Will the reasonable period for cancellation requests for national trademark applications also be considered five months, and will decisions on cancellation requests be made within this period once they become operational? If cancellation requests are to be examined in the order of submission to the TPTO, it can be expected that the system will take time to become fully operational due to the initial workload.
On the other hand, if cancellation requests are to be handled first by the Trademarks Department and then by the Re-examination and Evaluation Department Directorate, and if a decision has been made at the first stage and this decision is under appeal, it can be considered that the Board should wait for its own examination regardless of the reasonable waiting period. Finally, according to the Draft Regulation, "The final cancellation decisions made by the TPTO are recorded in the Register and published in the Bulletin." In this case, since the final decision on the cancellation request made by the Board will have immediate effect, it can be foreseen that the outcome of any lawsuit filed against the Board's decision will not be awaited, regardless of the stage of the lawsuit, and therefore will not affect the Board's examination.
3. Conclusion
With the awareness that all interested parties operating in the field of intellectual and industrial property law share the same wish, we hope that the procedure for administrative cancellation of trademarks will become operational as soon as possible, uncertainties will be resolved, and the regulatory arrangements regarding the implementation of the provisions of the IPL on the cancellation of trademarks will come into force as soon as possible.
02 European Union Design Law Reform: Innovations and Impacts6
1. Introduction
Technological advancements in the post-millennium period and their impact on almost every aspect of our lives are common knowledge. From smartphones to tablets, humanoid robots to artificial intelligence, NFTs to 3D printers, virtual worlds to quantum computers and digital objects, significant technological progress is being made daily. These advancements affect not only our daily lives, but also, perhaps more importantly, legal systems, especially intellectual and industrial property law.
The discussions prompted by the technological advancements, such as whether artificial intelligence can be an inventor in patent law or whether digital objects can be protected in trademark law, are also reflected in design law. In this context, on 10 November 2020, modernization efforts for the nearly 20-year-old legislation on European Union ("EU") design law were commenced.
The process was completed with the publication in the Official Journal of the EU on 18 November 2024 and the entry into force 20 days after the publication7 of:
- Directive 2024/2823 of 23 October 20248 on the legal protection of designs ("Design Directive"), and
- Regulation 2024/2822 of 23 October 20249 amending Council Regulation 6/2002/EC on Community designs and repealing Commission Regulation 2246/2002/EC ("EU Design Regulation").
EU member states are obliged to make the necessary internal adjustments to transpose the Design Directive into their national laws by 9 December 2027. On the other hand, the EU Design Regulation will directly apply in EU member states without the need for transposition into national law, starting from 1 May 2025, with some provisions taking effect from 1 July 2026.
Design-intensive sectors account for approximately 16% of the EU's gross domestic product and 14% of all jobs in the EU. Therefore, the EU design law reform is expected to have significant implications for relevant actors, particularly designers and design-intensive sectors.
2. Innovations Introduced by the Design Directive and the EU Design Regulation
In the justifications of the EU design law reform package, the main objectives of the reform are to simplify the design registration system, make it more accessible and efficient, and update the legal framework in light of new technological advancements in the market.
i. New Terminology - EU Design
In addition to the existing design protection in the national laws of the EU member states, the term "Community Design" which refers to the unitary design protection valid throughout the EU, has been changed to "European Union Design". This change is also consistent with the definition of "European Union Trademark10".
Correspondingly, the "Community Design Court" has been renamed the "European Union Design Court".
ii. Digital Objects
Ongoing discussions revolve around how to protect technological advancements such as the metaverse, virtual worlds, digital objects and virtual reality games within the scope of intellectual property law11. In this regard, both the Design Directive and the EU Design Regulation have expanded the design protection to include virtual/digital objects and products.
Design is defined as the appearance of the whole or part of a product resulting from the features of the product itself and/or its decoration, particularly lines, contours, colors, shape, texture and/or materials, and including the movement, transition or any other form of animation of those features12.
A product is defined as any industrial or handicraft material other than a computer program, regardless of whether it is physical or non-physical, and includes the following:
- Packaging, sets of articles, spatial arrangements of articles intended to create an interior or exterior environment, and parts intended to be assembled into a complex product,
- Graphic works or symbols, logos, surface patterns, typographic typefaces and graphical user interfaces13.
In line with these new definitions, Article 26/1 of the Design Directive provides that visual reproduction in design applications can be static, dynamic or animated and can be carried out by any suitable means generally available through current technology, including drawings, photographs, videos, computer imaging or computer modeling.
iii. Multiple Applications and Fees
According to Article 35/1 of the EU Design Regulation, EU design applications can only be made to the European Union Intellectual Property Office ("EUIPO"). A simplified fee regime has been introduced for EU design applications, but renewal fees have been significantly increased, especially for the third and fourth renewals. This policy aims to help design applications while ensuring that only truly used design registrations remain in effect.
The new regulation on multiple designs allows multiple designs to be consolidated into a single application without the requirement that all products intended to be included or applied belong to the same class of the Locarno Classification14. For EU design applications, a maximum of 50 designs can be combined in a single application. With this amendment, designers will be able to combine multiple designs from different Locarno classes in the same application, resulting in an effective reduction in registration fees, which is expected to lead to an increase in the number of design applications.
In Turkish law, according to Article 61/7 of the IPL, in multiple applications, each product to which the design is applied or used, except for decorations, must belong to the same Locarno class.
iv. New Limitations on Design Rights
Two new limitations on the scope of design rights have been introduced under Article 18/1 of the Design Directive and Article 20/1 of the EU Design Regulation. In this respect, "acts carried out to indicate that a product is protected by a design right or to refer to that product" and "acts carried out for the purpose of commentary, criticism, or parody" are excluded from the scope of design right protection. The first limitation aims to ensure product interoperability, while the second aims to protect freedom of expression.
In Turkish law, under Article 59/3(c) of the IPL, reproductions for educational or reference purposes are excluded from the scope of design right protection, provided they are compatible with fair commercial practices, do not unnecessarily endanger the normal exploitation of the design, and cite the source. However, no limitation is provided in parallel with the limitations set forth under Article 18/1 of the Design Directive and Article 20/1 of the EU Design Regulation..
v. Visibility of Design Features
The Design Directive and the EU Design Regulation clarify
whether the design features must be visible during use. It is
stipulated that the requirement for visibility only applies only to
component parts of complex products, and there is no general
visibility requirement. On this previously controversial issue, the
General Court, in its Decision No. T-494/12 and dated 9 September
201415 rejected the application for registration of a
design relating to a chocolate filling for a cookie that has the
shape "
"
According to Recital 13 of the EU Design Regulation16, apart from being shown visibly in an application for registration of an EU design, a product's design features do not need to be visible at any particular time or in any particular situation of use to benefit from design protection. The exception to this requirement concerns the design protection of component parts, which must remain visible during the normal use of a complex product.
vi. Cultural Heritage
According to Article 13/3 of the Design Directive, EU member states may regulate that a design application will be refused if it contains a total or partial reproduction of elements related to national cultural heritage. If a design has already been registered, this may also be grounds for invalidation. Recital 26 of the Design Directive provides examples of cultural heritage, which include monuments, building complexes, antiquities, handicrafts, and costumes.
vii. Spare Parts Protection
In the context of the European Green Deal17, products' repairability is central to a sustainable economy. As highlighted in Recital 33 to Recital 35 of the Design Directive, differences in EU member states' national laws regarding the use of protected designs for the repair of complex products, where the design forms a component part of a complex product18, directly affect the establishment and operation of the EU internal market, distort competition and trade within the internal market, and create legal uncertainty.
Therefore, Article 19 of the Design Directive aims to harmonize EU member states' national design laws with a "repair clause"19 similar to the provision currently applied20 to EU Designs. In this context, no protection is granted to a registered design for a component part of a complex product used to repair that complex product to restore its original appearance21 when the component part's design depends on the complex product's appearance.
This provision is intended as a defense against claims of design infringement. The repair defense cannot be invoked by the manufacturer of a complex product or the seller of a component part if it fails to properly inform consumers about the commercial origin and identity of the component part's manufacturer, ensures that consumers are not misled and can make an informed choice among competing products that may be used for repair.
However, the manufacturer or seller of a component part of a complex product is not required to guarantee that the component parts it manufactures or sells will ultimately be used by end users solely for repair purposes in a way that restores the original appearance of the complex product22.
For national legal systems that provide design protection for spare parts before 8 December 2024, the relevant EU member state will continue to provide this protection until 9 December 2032 for designs for which registration applications were filed before 8 December 2024.
Under Turkish law, pursuant to Article 59/4 of the IPL, the use of parts dependent on the appearance of a complex product to restore the original appearance of the complex product three years after the date that the product was first placed on the market does not constitute a design infringement, provided that these parts are not misleading as to their origin. In addition, Article 59/5 of the IPL provides a similar limitation for equivalent parts published by the Ministry of Science, Industry and Technology.
viii.3D Printing Technology
Considering the increasing prevalence of 3D printing technologies in various sectors of the industry and the emerging challenges in effectively preventing the unlawful copying of protected designs by design right holders, a new exclusive right has been established to enable right holders to combat unlawful 3D printing.
In this context, pursuant to Article 16/2 of the Design Directive and Article 19/2 of the EU Design Regulation, right holders may request the prohibition of acts such as creating, downloading, copying, and sharing or distributing any medium or software that records the design for the purpose of making a product in which the design is incorporated or applied.
ix. Implementation Regarding Transit Products
Pursuant to Article 16/3 of the EU Design Directive and Article 19/3 of the EU Design Regulation, the holder of a registered design right (EU design right) has the right to prevent all third parties from bringing from third countries, in the course of trade, products that have not entered free circulation (within the EU) into the EU member state (into the EU) where the design is incorporated or applied in the same manner to those products or where the design cannot be distinguished from those products in their fundamental aspects and in case of the products for which the right holder does not have permission.
Thus, design right holders will be able to assert their design rights against products subject to transit transportation through the EU. The preamble of Article 29 of the EU Design Directive also emphasizes that registered design right holders have the right to prevent the entry and placement of products that constitute design infringement into all customs procedures, including transit, transshipment, storage, free zones, temporary storage, inward processing or temporary admission, even if the products are not intended to be placed on the market of the relevant EU member state.
x. Administrative Invalidity of National Designs
Pursuant to Article 31/1 of the EU Design Directive, EU member states may provide for an efficient and expeditious administrative procedure before their national intellectual property offices for the invalidation of a registered design, without prejudice to the parties' right to apply to the competent courts.
Unlike the situation established for trademark registrations23, the administrative invalidity procedure for designs is optional, and EU member states are not obliged to implement such a regulation.
xi. New Intellectual Property Right Symbol
Pursuant to Article 24 of the EU Design Directive and Article
26a of the EU Design Regulation, the holder of a registered design
right may inform the public about the design's registration by
using a symbol consisting of the letter D enclosed in a circle
("
") on the product in which
the design is incorporated or to which it is applied. This
notification may be accompanied by the design registration number
or provide a link to the design in the register.
According to the Preamble of Article 37 of the EU Design Directive and Article 21 of the EU Design Regulation, this new symbol is expected to help the marketing of design-protected products, particularly by small and medium-sized enterprises and individual designers, and to raise awareness of the existing design registration regimes both at the EU and national level.
3. Conclusion
Following a lengthy legislative process, the EU design law reform agreed on by EU legislators represents a significant advancement in adapting, modernizing and harmonizing design protection regimes at both the EU and national levels in response to the challenges posed by modern technology.
The primary objectives of the EU design law reform are to (i) modernize, clarify and strengthen design protection, (ii) increase the accessibility of design protection within the EU, (iii) enhance the interoperability of design protection systems at both the EU and national levels and (iv) harmonize the protection regime for spare parts that differ in EU member states' national laws.
Changes in the definitions of design and product will allow for protection to be expanded to include virtual/digital (or non-physical) objects and products, digital spaces, the metaverse or NFT objects. The changes in multiple applications and the fee system aim to help to reduce the cost of obtaining design registration, while also targeting the renewal of design registrations that are only used in the market and provide financial returns to the right holder.
One of the most important regulations to be considered by right holders and potential competitors is the repair clause. This regulation can be invoked as a defense against allegations of design right infringement if certain conditions are met. On the other hand, provisions related to 3D printing technology and transit products strengthen right holders' position against acts constituting design right infringement.
According to the 2024 World Intellectual Property Indicators Report24 published by the World Intellectual Property Organization, 1.19 million design applications were filed worldwide in 2023, with a significant increase in the number of applications in recent years. The Turkish Patent and Trademark Office is among the top 10 intellectual property offices with the highest number of design applications in 2023. Accordingly, it is expected that our country, as an EU candidate country, will examine the innovations brought by the EU design law reform and modernize the IPL design law regime to the extent appropriate.
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Footnotes
1. This legal alert was first published in the IPR Gezgini on 4 February 2025
2. For a comprehensive study on the subject, see: Zeynep Bahadır, "Administrative Cancellation Procedure of Trademarks", Ankara Bar Association Journal, 2017/4, pp. 81-104. https://dergipark.org.tr/tr/download/article-file/542383.
3. https://www.turkpatent.gov.tr/duyurular/.
4. The fee for a trademark cancellation request in 2025 is TRY 28,150.
6. This legal alert was first published in the 30th issue of Fikri Gündem journal dated December 2024
7. See: EUIPO, "Design Legislative Reform", Design Legislative Reform and Design Reform - EUIPO.
8. Directive - EU - 2024/2823 - EN - EUR-Lex.
9. Regulation - EU - 2024/2822 - EN - EUR-Lex.
10. Regulation 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union Trademark, Article 1/1.
11. For a discussion of trademark law, see: https://iprgezgini.org/2022/09/30/fiziksel-mal-ve-hizmetler-icin-yapilan-marka-tescilleri-metaverselerde-koruma-saglamaya-yetecek-mi-usptonun-gucci-ve-prada-kararlari-bu-konuya-isik-tutuyor/.
12 Pursuant to Article 55/1 of Industrial Property Law No. 6769 ("IPL"), a design is defined as "the appearance of the whole or part of the product or the ornamentation thereon, resulting from features such as line, shape, form, color, material or surface pattern".
13 Pursuant to Article 55/2 of the IPL, a product is defined as "any industrially or manually produced object, excluding computer programs, as well as a combined product or its constituent parts, objects such as packaging, presentations of multiple objects perceived together, graphic symbols and typographic characters".
14. See: https://www.wipo.int/classifications/locarno/en/.
15. CURIA - Documents.
16. Design Directive, Recital 16.
17. https://commission.europa.eu/strategy-and-policy/priorities-2019-2024/european-green-deal_en.
18. The requirement that the design of the component must depend on the appearance of the complex product, known as must-match spare parts, derives from the aim of limiting the scope of design protection in such a way that only design right holders can obtain de facto product monopolies.
19. According to the European Commission, this provision aims to liberalize the spare parts market and ensure that consumers across the EU have access to more affordable spare parts for repair. It is estimated that European consumers will save between EUR 340 and EUR 544 million over 10 years. See https://www.consilium.europa.eu/en/press/press-releases/2023/12/05/council-and-parliament-strike-provisional-deal-on-design-protection-package/.
20. EU Design Regulation, Article 20a.
21. For instance, a damaged door that needs to be repaired or a broken car headlight that needs to be replaced to make a car appear as it used to.
22. Recital 20 of the EU Design Regulation states that the manufacturer or seller of a component part of a complex product is obliged to exercise due diligence, by appropriate means, particularly through contractual means, to ensure that downstream users do not intend to use the component parts for purposes other than repairs to restore the original appearance of the complex product.
23. Pursuant to Article 45/1 of Directive 2015/2436 of the European Parliament and of the Council dated 16 December 2015 to approximate the laws of the member states relating to trademarks, EU member states shall provide for an efficient and expeditious administrative procedure before their intellectual property offices for the cancellation or invalidation of a trademark, without prejudice to the parties' right to apply to the competent courts.
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.
