With the New Turkish Industrial Property (IP) Law No.6769 which has entered into force on 10 January 2017, the legislation with regard to the trademark proceedings has significantly changed;
Main notable changes can be briefly described as follows;
- Scope of definition of trademarks broadened to encompass sounds, colors, packaging and product shape by eliminating the former graphical representation requirement. The Law clearly recognizes sounds and colors as a registrable sign,
- Use of Letters of consent and coexistence agreements are allowed to overcome ex officio refusals of identical or confusingly similar trademark applications protecting the same or similar goods or services provided that such notarized documents of the owner of senior trademarks are submitted to the TPTO,
- Bad-faith listed among absolute grounds for refusal and it can be directed in any oppositions/appeals before the TPTO and invalidation actions before the IP Courts,
- An opponent should prove genuine use of a trademark which forms the basis of an opposition if the non-use grace period (5 years) has expired and if requested by the applicant; such requests are also valid for a plaintiff’s defense in infringement proceedings.
- This change aims: to encourage the use of registered trademarks in the Turkish market, to prevent applicants from filing and to register their marks for goods and services that are not intended to be used and to stop misusing the opposition mechanism,
- Opposition period and response period to ex officio refusals has been shortened to two months (which was previously three months) following its publication date. Although this creates a more effective and prompt process for the registration of trademarks, right holders must note this important shift,
- The new Law regulates cancellation of trademarks by the Turkish Patent Authority upon the request of third parties whereas Turkish courts remain as the venue for the nullity requests. Administrative procedure for the cancellation of registered trademarks at the TPTO, in parallel with the EU regulation, will be effective in 2024,
- National Exhaustion principle has been replaced with International Exhaustion, i.e., after the first sale in Turkey, products can circulate freely on the Turkish market regardless of where it originates and without the need to obtain permission from the rights holder. Rights holders could not prevent parallel imports of related products, provided that they are original and have not been altered or damaged since they entered the market,
- New examination rule on trademark applications designating Turkey under the Madrid Protocol; preventing Turkey extensions from being rejected based on the existence of a national trademark which was filed after the international trademark’s application or priority date,
- Renewing trademarks only for requested classes (of all registered classes) was not available while the Law entitles registrants to partially renew their trademarks for some of the registered goods or services,
- The law accepts “five-year period” as the timeframe for the principle of loss of rights by remaining silent and excludes trademarks filed in bad faith from its scope. The five-year term for filing an invalidation action is also regulated under a separate provision,
- Existence of goods/services in the same and/or different classes does not constitute presumption of similarity/differentness of them,
- The Law orders proving the use of the lapsed trademarks within the related additional two years in order for their protection against latter trademark applications.
Trademark Application in Turkey
We file trademark applications electronically via the on-line system of the Turkish Patent and Trademark Office almost at the same date of the instructions. All applications are officially recorded asto filing date, hour and minute and the official notice of filing number is issued at the time of filing the trademark application.
The registration period of a trademark is approximately 8 months as of the filing date and the stages are as the following:
Trademarks Department of the Turkish Patent and Trademark Office carries out an examination system, which consists of examination for absolute grounds for refusal and also ex-officio examination for prior rights. If no ground for refusal is found in the first examination, the application is published in the Official Trademark Bulletin which is issued twice a month. Third persons may file oppositions in two months time limit following the publication date of the Bulletin.
If there are no oppositions filed within the above-mentioned time limit, the application is registered in the Trademark Register and it is published in the Official Trademark Gazette. If the application is refused totally or partially in the first examination, the applicant may lodge an appeal to the Turkish Patent and Trademark Office in 2 months time limit. In this case, the application should be re-examined regarding the appeal. If the appeal is found acceptable, the application is published totally or partially in the Bulletin, this means that the application may be the subject of a further refusal following an opposition.
For the examination of oppositions and appeals, Turkish Patent and Trademark Office – Trademarks Department has a separate division (oppositions and appeals division). Parties who are not satisfied with the decisions of this division can also appeal to the decisions before the Turkish Patent and Trademark Office. “Re-examination and Evaluation Board” is the final decisive organ of the TPTO but the decisions of the Board may be appealed before the Turkish IP court in Ankara in 2 months time limit.
After the official notice of register and invitation for the payment of registration fee, the registration certificate is prepared within 2 months following the payment of the registration fee.
As seen hereabove, trademark application procedure in Turkey is rather straightforward and once the trademark is registered, the protection survives for ten years and can be extended for periods of ten years.
International trademark applications designating Turkey are also treated as the national applications and the publication term covers two-month as from the publication date just as national trademark applications.
In Turkey, estimated costs of trademark applications are based on the number of classes to be applied and oppositions filed by third parties during publication and/or any official rejection during official examination of the Turkish Patent and Trademark Office’s Trademark officer. As to our charging policy, we do charge our clients reasonably, depending on the substantive valuable services provided, not for incidental telephone inquiries or requests for quotation. Reporting out official actions, reminding due dates, recording information into our databases are also free of charge and we let you know about upcoming costs and wait for your instructions before we take any step.
Furthermore, we can represent you before the Northern Cyprus Turkish Republic authorities and file trademark applications on behalf of you.