Registration and useOwnership of marks
Who may apply for registration?
According to article 3 of new Industrial Property Law No. 6769, which came into force on 10 January 2017, the following are entitled to trademark ownership:
- Turkish citizens;
- real or legal persons who are domiciled or who have commercial establishments within Turkish territory;
- persons who have application rights arising owing to the terms of the Paris Agreement and the Agreement Establishing the World Trade Organization dated 15 April 1994; and
- in line with reciprocity principles, nationals of states that provide industrial property rights to Turkish nationals.
What may and may not be protected and registered as a trademark?
According to article 4 of Industrial Property Law No. 6769, trademarks should distinguish one enterprise’s goods and services from another’s and should explicitly define the protections and rights granted to the trademark owner by being registered, and can include names of persons, other words, colours, shapes, symbols, letters, numbers, sounds and labels. In addition, Industrial Property Law No. 6769 defines registration of guarantee marks and joint marks.
Article 5 of Industrial Property Law No. 6769 defines signs and symbols that cannot be registered as trademarks:
- signs that are not distinctive;
- signs that provide the type, kind, qualification, amount, purpose, value or geographical source, that provide the time of production of the goods or the time when the service is provided, or signs that include other qualifications of the goods or services exclusively or as their essential part;
- trademarks that consist exclusively of signs or indications that serve in trade to indicate the kind, characteristics, quality, intended purpose, value or geographical origin, or designate the time of production of the goods or of rendering of the service or other characteristics of goods or services;
- signs that exclusively or as a main element include signs and names that are generally used by all in the trade or that distinguish those that are subject to a specific profession, art or trade group;
- signs containing the shape of the product resulting from the nature of the product, which is necessary to obtain a technical result or which gives substantial value to the product;
- signs that will confuse the public regarding the qualification, quality and geographical source of the goods and services, place of production or geographical origin of the goods and services;
- signs that are to be refused pursuant to article 6-bis(2) of the Paris Convention;
- trademarks containing badges, emblems or escutcheons other than those covered by article 6-bis(2) of the Paris Convention that have not been authorised by the competent authorities and are of particular historical and cultural public interest;
- signs that contain religious symbols;
- signs that are contrary to public order and morality; and
- signs that consist of or include registered geographical indications.
Also, service marks, collective or certification marks and non-traditional marks such as sounds, smells, designs, etc, are registrable under Turkish trademark law.Unregistered trademarks
Can trademark rights be established without registration?
In principle, Turkish trademark law is based on the system of registration. Accordingly, a trademark owner is entitled to rights through registration.
However, in practice, in some cases, non-registered trademarks may also be protected. Such exceptions are as follows:
- the trademark started to be used in Turkey, before the application date of a third party’s trademark;
- the unregistered trademark’s owner has a relationship (such as a distributorship, etc) with the owner of a third party’s trademark; or
- the trademark is filed in bad faith, in other words, a third party is aware of an unregistered trademark and files an application for the exact same trademark.
Also, trademark infringements against non-registered trademarks are protected by articles regulating unfair competition under the Commercial Code.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
According to Turkish precedents, well-known trademarks are also under use obligation. The Supreme Court precedents rule that use requirement of a trademark is valid in terms of all types of trademarks, including well-known trademarks, as well. In other words, even if a trademark is registered as a well-known mark before the Patent and Trademark Office, it will be under threat of cancellation based on non-use - in terms of goods and services that are not used - if the trademark is not used for five years, retrospectively from its registration date.
To prove use of a trademark - being independent from whether it is well-known or not - the following documents such as information about the dealer or distributor in Turkey, invoices, shipping documents, custom documents, catalogues, examples of promotional materials, examples of correspondence with Turkish customers of Turkish dealers, are required.The benefits of registration
What are the benefits of registration?
In Turkish trademark law practice, even if registration is not compulsory, it has by the way an explicatory character, which allow to ensure the trademark owner’s rights. The registered trademarks are protected under Intellectual Property Law No. 6769 - which is being integrated with EU trademark legislation - which is specialised solely for the IP rights and, therefore, includes very specific regulations as to IP matters.
Regardless of whether a trademark is registered or not, there are specialised civil and criminal IP courts in Turkey's three largest cities: Istanbul, Ankara and Izmir. In other cities, regular civil and criminal courts have jurisdiction over IP rights cases. Following years of campaigning against counterfeiting, even non-specialised judges have an establish point of view on IP matters and accept their importance.
However, as a matter of course, registration of a trademark allows greater protection that allows the rights owner to act before any component legal authorities in Turkey, including the customs authority.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
To file a trademark application before the Patent and Trademark Office, no power of attorney is required. For word marks, correct spelling of the word and device marks is required with a digital representation of the trademark in JPEG format, with a resolution of 300 dots per inch and a size of 5cm x 5cm as a minimum.
Also, name, address, telephone and facsimile number of the owner, list of goods or services claimed, certified copy of the priority document - if priority is claimed - are required.
In order to appoint someone as a legal representative before the Patent and Trademark Office, a simple signed power of attorney is required without notarisation. The electronic filing of a trademark application is also available.
Trademark searches before filing are available but not mandatory. The official fees are as follows:
- a similarity or availability search for a trademark in one class: €10; and
- for each additional class: €4.
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
The period of trademark registration begins with the application for registration and ends with issuance of the registration certificate. In other words, registration formally comes into effect, following deposit of the registration fee. However, a trademark is protected as of its application date, with the condition that it is duly registered during the final stage. The Patent and Trademark Office has gone through organisational developments, and with new Industrial Property Law No. 6769 coming into force the publication period of trademark applications on the Official Trademark Bulletin has been decreased from three to two months; as a consequence, this has speeded up the registration process of trademarks. Accordingly, the average trademark registration may take up to six to seven months.
The official cost of the registration process for trademarks with a single class of goods or services is about €125 to €130.
The estimated time and costs given above are purely for smooth registration processes; therefore, in the following cases, the time and costs would increase:
- provisional refusal decisions of the Patent and Trademark Office; or
- filing of third-party opposition to the published trademark.
Another innovation brought in by new Industrial Property Law No. 6769 is abolition of the requirement to submit a power of attorney document during the application process. Accordingly, additional document submission is not required.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Turkey became a party to the Nice Agreement on 12 July 1995 with Decision No. 95/7094 of the Board of Ministers. The agreement came into force on 1 January 1996. Turkey has signed the revised Geneva version of 1997.
The Patent and Trademark Office classifies goods and services in accordance with the Nice Agreement and publishes communiques accordingly.
Turkish trademark law allows multi-class trademark applications.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The trademark application process consists of a formal examination, search of absolute grounds for rejection, opposition to decision of the Patent and Trademark Office and opposition to publication of an application, and assessment of the views and oppositions of third parties. The final part of the process is registration of the trademark.
To duly claim registration, the application submitted to the Patent and Trademark Office must be subjected to formal examination. If any deficiencies are found during the formal examination the applicant shall be informed regarding these deficiencies or mistakes and be given a period of two months in order to remedy the deficiencies. As the law points out, if the formal requirements have not been met during the two-month period, the requests are either dropped or only partially accepted.
Once the formal examination is finalised, absolute reasons for rejection are evaluated by experts also by considering the type of goods and services. If any of the circumstances listed in article 5 of Industrial Property Law No. 6769 are found in part or whole, then the application will be partially or wholly rejected on the grounds of absolute rejection defined in article 5.
Pursuant to article 5/3 of Industrial Property Law No. 6769, coexistence agreements and letters of consent are now enforceable, which allows the applicants to overcome the absolute grounds of rejection (ex officio refusal grounds) by obtaining the prior rights owner’s consent.
The applicant has the right to appeal against the decision of the Patent and Trademark Office within a period of two months.
Applications that have been duly submitted, that have not been rejected on the above grounds, or that have not been appealed or else have been appealed and accepted by the Patent and Trademark Office shall be published in the Official Trademark Bulletin. Oppositions made in relation to articles 5 and 6 of Industrial Property Law No. 6769 to the publications in the Official Trademark Bulletin may be proposed by whom it may concern within a period of two months.
The application is registered and published in the Official Trademark Bulletin in the following circumstances:
- if the application has satisfied all relevant criteria or has done so within any additional period available;
- if any oppositions have been rejected by the Patent Institute; and
- if the registration fee has been paid.
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
As the result of another innovation brought in by new Industrial Property Law No. 6769, in the case of opposition made on the grounds of similarity of the applicant’s trademark to a previously registered trademark, the applicant must be able to submit evidence proving that the goods or services have been widely used in Turkey or must propose justifiable reasons regarding non-use of the trademark within a period of five years prior to the application date. The opposition shall be rejected if the opposition cannot submit any contrary evidence suggesting otherwise.
In addition, an invalidation lawsuit may be brought by the people who it concerns if the trademark has been seriously inactive for five years following the date of registration.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Symbols or phrases such as ™ and ® etc, can be used to trademark use or registration. However, such use is not mandatory, but optional. Also, as long as an application ends with registration, there is no risk of using such signs during application of a trademark. Actually, in Turkey, since registration of a trademark already grants a full trademark protection and since the trademark registry is open to the public, there is no specific positive or negative in using such symbols or phrases. Even if such use does not grant any specific legal rights, in a potential dispute, such use of symbols may help the rights owner to allege that the counterparty should already been aware of the fact that the trademark in dispute is already registered in the name of someone else.Appealing a denied application
Is there an appeal process if the application is denied?
Applicants may submit a written and reasoned appeal against the decisions of the Patent and Trademark Office within a period of two months starting from the date of notification. Appeals submitted to the office are reviewed by the Re-Evaluation and Re-Examination Board. Applicants may apply to the Ankara Court on Duty of Intellectual and Industrial Property Rights against the final decisions given by the board.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Duly made applications and applications that have not been rejected by the Patent and Trademark Office are published in the Official Trademark Bulletin.
Oppositions may be brought within a two-month period on the basis of the grounds set out in article 6 of Industrial Property Law No. 6769.
Third parties that did not oppose the publication within the given period of two months may file an invalidation action based on the same opposition grounds.
One of the listed reasons for opposition under article 6 of the Industrial Trademark Law is bad faith. The Patent and Trademark Office demands substantial and concrete evidence explicitly showing bad faith. In order to demonstrate bad faith:
- the trademark owner opposing must prove that the trademark is widely known and actively used in Turkey and that the applicant should have been aware of such circumstances;
- the existence of a prior professional or commercial relationship between the applicant and the opponent;
- the existence of figurative similarities between the two trademarks in question; and
- the existence of similar conditions must be put forward with substantial evidence.
The official fee for filing an opposition against the Official Trademark Bulletin is €30.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
Trademark protection begins with the application and is granted for 10-year periods. Every 10 years, renewal of trademark registration provides continued protection. Applications for renewal shall be made within six months starting from the end date of the 10-year period of protection, otherwise they will be invalidated. Renewal of trademarks does not require any documents indicating active use of the trademark.Surrender
What is the procedure for surrendering a trademark registration?
Since surrendering a trademark application means a loss of right, for the withdrawal of a trademark, a notarised power of attorney - clearly mentioning the withdrawal authorisation - is required. The withdrawal request may be submitted through the online system along with an official withdrawal form.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Yes. Trademarks may also be protected under other IP rights, ensuring that the conditions foreseen in the relevant legislations are met.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
There is no specific regulation regarding online trademark protection in accordance with Intellectual Property Law No. 6769. In other words, trademarks used in online platforms are protected within the scope of the Law's general provisions.
In terms of the domain names, apart from the international dispute resolution authority the Internet Corporation for Assigned Names and Numbers, there is also Turkey's dispute resolution authority, Nic.tr, which governs Turkey's top-level domain names and is based at the Middle East Technical University in Ankara. Nic.tr has its own regulations, according to which they resolve the disputes brought before them.