Trademark Opposition
With the New Turkish Industrial Property (IP) Law No.6769 which has entered into force on 10 January 2017, the Turkish Patent legislation with regard to the opposition proceedings has significantly changed;
Main notable changes can be briefly described as follows;
- 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 trademarks 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, trademark right holders must note this important shift.
The Turkish Patent and Trademark Office officers examine trademarks prior to their publication, in consideration of the related articles of the Turkish IP Law No.6769, pertaining to the absolute and relative grounds of refusal in Turkey.
If any grounds for refusal have not been revealed during examination, the trademarks are published in the Official Trademark Bulletin for opposition purposes for a 2-month term. Any natural or legal person or any group representing manufacturers, producers, suppliers, traders or consumers may submit to the Turkish Patent and Trademark Office their written oppositions that the trademark does not conform to the registration requirements even they are not party to the proceedings before the Turkish Patent and Trademark Office. The examiner of the Turkish Patent and Trademark Office freezes the case until all oppositions and responses are timely filed and decides upon considering the responses. Trademark holders have right to file counter-statements against the subject oppositions before the Turkish Patent and Trademark Office.
International trademarks applications designating Turkey are also treated as the national applications. Like national applications, they are examined as of relevant articles of the Turkish IP Law No.6769 pertaining to the absolute and relative grounds of refusal and published in the Official Trademark Bulletin for 2-month period. When a refusal of protection results from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit.
According to the relevant articles of the Turkish IP Law No.6769 , persons who are damaged from unfavorable administrative decisions have the right of objecting to these decisions before the Higher Board Re-examination and Evaluation of the Turkish Patent and Trademark Office. Such appeals should be filed to the Turkish Patent and Trademark Office within 2 months as of the issuance date of the said administrative decisions.
Supporting evidence and a Power of Attorney shall be submitted before the Turkish Patent and Trademark Office with the opposition petition. In case the opponent party does not lodge simultaneously the supporting evidence including the Power of Attorney with the opposition and/or does not cite the motivation/grounds of opposition, the opposition is deemed not have been raised at all.
EFOR IP assists their clients for the filing of oppositions, appeals, counter-statements and observations before the Turkish Patent and Trademark Office on behalf of trademark holders and against third party trademark applications in Turkey.
Our service fee is mainly calculated on the time spent on preparation of opposition petition with capped fees.
For a cost estimate, please contact us at efor@eforpatent.com
