Registration of marksi Inherent registrability
In Turkey, trademark applications are filed with the Turkish Patent and Trademark Office. The application may be filed by one or more legal or natural persons. The application can be made by the applicant him or herself, or by a qualified trademark attorney. However, the applicants whose domiciles are situated abroad must be represented by a trademark attorney who is registered before the Turkish Patent and Trademark Office.
Trademarks can consist of any symbols, such as words, shapes, sounds, colours or letters. In order to be registered as a trademark, a sign must have a distinctive character that makes it possible to distinguish the goods and services it represents from others, and must represent the subject matter of the trademark in a clear and precise manner.
In priority claims under the Paris Convention, it is necessary to state the priority right on the application form. The certified copy of the first application should be submitted to the Turkish Patent and Trademark Office within three months of the date of application.
Once an application is filed, the Turkish Patent and Trademark Office examines whether the classification is correct and accurate, and whether the formal requirements are satisfied. The Office then examines whether there are any absolute grounds for refusing the application. The absolute grounds for refusal are:
- non-compliance with the legal requirements of the Industrial Property Code;
- existence of an identical, or indistinguishably similar, earlier trademark or trademark application, covering the same, or same type of, goods or services;
- if the mark has become customary in current and established trade practices;
- if the mark consists of a shape resulting from the nature of the goods, or that is necessary to obtain a technical result or that gives substantial value to the goods;
- no authorisation from the relevant authorities for the use of the mark;
- the mark includes armorial bearings, emblems or hallmarks with historical and cultural value that are of concern to the public, and the registration of which is not authorised by the relevant authorities;
- the mark involves religious values or symbols;
- the mark is contrary to public policy and public morals; and
- the mark is composed of, or contains, a registered geographical indication.
If there is any absolute ground for refusing the application, the Turkish Patent and Trademark Office issues a provisional refusal of protection. If no absolute grounds are identified, the Office publishes the application in the Official Trademark Bulletin, and the term for filing third-party oppositions begins.
The application fee to be paid to the Turkish Patent and Trademark Office is 205 Turkish lira for one application with one class. For each additional class, the amount will increase by 205 Turkish lira. Once the Turkish Patent and Trademark Office has decided on the registration of the trademark, the applicant must a pay registration fee of 550 Turkish lira to complete the registration process.ii Prior rights
A trademark application may be refused if the trademark is considered substantially identical or deceptively similar to an earlier registered or pending trademark that covers identical or similar goods or services. However, the Industrial Property Code allows later trademark applicants to overcome a provisional refusal decision from the Turkish Patent and Trademark Office by submitting a notarised consent letter from the earlier right holder.iii Inter partes proceedings
Any interested party may submit an opposition to an application on the basis of absolute or relative grounds, or both, for refusal. The absolute grounds are discussed in Section III.i, and the relative grounds for refusal are as follows:
- the application is identical or similar to an earlier trademark registration or application and covers identical or similar goods or services, and there is a likelihood of confusion between them;
- unauthorised application for an identical or indistinguishably similar trademark by the agent or representative of the trademark owner in its own name, without valid justification;
- prior and genuine ownership of the mark applied for by a third party;
- the application is identical or similar to:
- a well-known mark under Article 6 bis of the Paris Convention; or
- an earlier trademark registration or application that is well-known in Turkey;
- the application contains the name, trade name, photograph, copyright or industrial property right of a third party;
- the application is identical or similar to a trade mark registration, the protection period of which has ended due to non-renewal, and covers identical or similar goods or services, if the application is filed within two years of the end of the protection period of the earlier registration and the earlier registration is put to use within this two-year period; and
- the application is filed in bad faith.
The opposition should be filed within two months of the publication of the application in the Official Trademark Bulletin. The two-month period is not extendable. The opposition fee of 130 Turkish lira should be paid by the opponent party. The applicants are entitled to submit a response within one month of the notification of the opposition.
In Turkey, the invalidation or revocation of a registered trademark may only result from a judicial decision. Any interested party may file a lawsuit before the Turkish IP courts by requesting invalidation or revocation of a registered trademark.
With respect to invalidation actions, there is a time limit for the filing of an action. The owner of the prior trademark (registered or unregistered) cannot claim invalidity of the later trademark if he or she knew of the use of the later trademark and had stayed silent on this for five years. However, if the later trademark use is in bad faith, this time limit is not applicable.
With respect to revocation actions based on non-use, if the trademark has not been used without a justifiable reason in Turkey, or if the use has been suspended during an uninterrupted period of five years, the trademark will be revoked. Article 9 of the Industrial Property Code considers use as follows:
- use of the trademark with different elements that do not alter the distinctive character of the trademark;
- use of the trademark on goods or on packaging solely for export purposes; and
- use of the trademark by third parties with the consent of the proprietor.
If there is any absolute ground for refusing the application, the Turkish Patent and Trademark Office issues a provisional refusal of protection and the applicant is granted a two-month period in which to file an appeal to the Re-examination and Evaluation Board of the Office against such a refusal. This period is not extendable.
If an opposition is filed, the Turkish Patent and Trademark Office can accept or refuse the opposition and its decision can be appealed in writing within two months to the Re-examination and Evaluation Board of the Office.
Any decisions rendered by the Re-examination and Evaluation Board of the Turkish Patent and Trademark Office may be appealed before the Turkish IP Courts within two months of notification of the decision.
Furthermore, the final decisions of the Turkish IP courts, which are the courts of first instance, can be appealed before the district courts, and the decisions of the district courts can be appealed before the courts of appeal. An appeal does not automatically stop the execution of the decision, and the suspension of the execution should be requested together with the appeal.