THE NEW TURKISH IP LAW IN THE ASPECT OF INTERNATIONAL TRADEMARKS EXTENDING TURKEY
29 April, 2016
Long-awaited Draft Law has finally been launched by the Turkish Patent Institute (TPI) for the public consultation, the given term of which was ended last month.The first notable change in the draft is that it is bringing all Decree Laws together, namely Trademarks, Patents, Industrial Designs and Geographical Indications Decree Laws, in a single Act covering all IP rights.
In comparison to the current Decree Laws, the draft law seems to be promising in meeting the requirements of the local practitioners as there are many uncertain issues in current decree laws causing practical difficulties and instabilities.
As well as Turkish trademark applicants, holders/representatives of the international trademark applications extending to Turkey shall wait changes that may affect them. For instance, the exact deadline of filing response against provisional refusals of international trademark applications is a common issue in Turkey as the statements are unclear and open to interpretation. With the new law, the two-month term of contesting to the TPI will start to be counted as of the end of 15th date after WIPO notifies to the owner/representative.
Another common issue between World Intellectual Property Office and the TPI, national trademark applications which have been filed before the entrance of the international applications with earlier filing dates (to the WIPO), shall be ex officio rejected as being a country with first-to- file principle.
A major practical problem faced by international trademark applicants is caused by provisional refusals based on lack of co-existing provisions in Turkey. Currently, letters of consent, documents demonstrating the business relation between companies such as being sister companies etc. or any other kind of co-existence agreements are not accepted by the TPI. The main solution that we could offer is/was a total or partial assignment to overcome such rejections. Now, the draft law will let applicants filing consent letters and therefore, provisional refusals will be overcome by filing contests to the TPI within the prescribed term, accompanied with notarized consent letters or co-existence agreements.
As of February 2016, two Official Trademarks Bulletins are being published by the TPI per month, which means the opposition deadlines has changed to twice a month instead of once, corresponding to the mid and end of each month. With the draft law, opposition periods will be shortened to two months as of the publication date. Increase in the number of monthly bulletins and the decrease in the permitted time for filing oppositions will guide right holders considering watch services in Turkey as a must.
Finally, the draft deals with many issues and unclear provisions which exist, in particular, in the current Decree Law pertaining to the trademarks, considering trademarks which are filed internationally and extended to our jurisdiction.
Sibel GUMUS (Mrs.)
Mechanical Engineer | Patent & Trademark Attorney | Court Appointed Legal Expert
Turkish IP Law – EFOR PATENT