The new Industrial Property (IP) Code (6769), which has been in force for more than one year, has made it possible for trademark applicants to:

  • put forward a non-use claim as a defence; and
  • settle an opposition via mediation.

Non-use counterclaim

According to Article 19 of the IP Code, during the examination of an opposition filed against a trademark application, the Trademark and Patent Office can, on the applicant's request, ask the opponent to prove use of the trademark on which the opposition is based. If the opponent cannot prove use of its trademark in Turkey or there is no legitimate reason for non-use, the opposition will be rejected. If the use of the trademark is proven for only some of the covered goods or services, the examination of the opposition will be limited to such goods or services.

Mediation

The IP Code entitles the Trademark and Patent Office to invite parties to settle oppositions through mediation, as per the Mediation Law.

International trademarks

At present, non-use counterclaims and mediation seem to be available only for national trademark applications. This situation is likely to create a disadvantage for international trademark holders whose marks are extended to Turkey via the Madrid Protocol.

Both non-use counterclaims and mediation are available only during the evaluation of the initial opposition phase.

To benefit from the non-use counterclaim procedure, applicants must file a counterstatement against the third party's opposition within one month from notification of the Trademark and Patent Office's administrative decision. This procedure also applies with respect to national applications.

However, if the opposed trademark is an international application extended to Turkey through the World Intellectual Property Organisation (WIPO), the Trademark and Patent Office will refrain from notifying the applicant of a third-party opposition through the WIPO as it prefers to examine such cases directly.

A possible refusal decision will be notified to the applicant through the WIPO without inviting:

  • the applicant to respond to the opposition filed; or
  • parties to negotiate a settlement via mediation.

Conversely, where the Trademark and Patent Office rejects an application following a third-party opposition, the applicant can file an objection against the refusal of its application before the higher council within two months of the rights holder being notified of the WIPO's decision.

According to the new IP Code, non-use can only be asserted during the Trademark and Patent Office's first examination of opposition. Non-use cannot be asserted as a counterclaim during the examination of an objection before the higher council.

In brief, when an application subject to opposition is an international application extended to Turkey through the WIPO, the applicant is not notified of the opposition through the WIPO. Therefore, the international application will not benefit from non-use as a counterclaim or from the possibility to settle the matter via mediation.

Comment

The owners of international trademark applications should take active measures to monitor their status and avoid a loss of rights during the application phase.

For further information on this topic please contact Bilge Taskara or Serra Coral at Deris Attorneys At Law Partnership by telephone (+90 212 252 6122) or email (bilge.taskara@deris.com or serra.coral@deris.com). The Deris website can be accessed at www.deris.com.tr.

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