Frequently Asked Questions on Trademarks
Is there a specific definition for a Trademark?
Although there is not a clear definition for trademarks in 6769 numbered Industrial Property Code, it is stated in the first paragraph of article 4 that: “Trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds, and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor.”
In this respect, one can assert that there are two fundamental features for a sign so as to be regarded as a trademark, one of which is being distinctive and the other is not being deceptive.
Thus, a trademark generally is defined as a sign, which used for distinguishing goods and services of one enterprise from the goods and services of another.
Who can enjoy Trademark protection in Turkey?
The citizens of the Turkish Republic, any natural or legal entities domiciled or engaged in industrial or commercial activities within the borders of the Republic of Turkey, the persons who have the right of the application according to the Paris Convention or Agreement Establishing the World Trade Organization enjoy Trademark protection in Turkey.
Natural or legal entities other than those referred to above who are nationals of States that accord legal and de facto protection to nationals of the Turkish Republic enjoy trademark protection in Turkey according to the principle of reciprocity.
What is the term of trademark registration in Turkey?
A trademark is registered for a period of ten years from the date of filing of the application. Registration is renewed for further periods of ten years.
What are the points that should be taken into consideration prior to filing a trademark application?
Once a trademark application is filed, the concerned sign is examined, ex officio by the Turkish Patent and Trademark Office’s related department -that is to say Trademarks Department- within the merits accepted by 6769 numbered Industrial Property Code.
The scope of the concerned merits is arranged in article 5 of the 6769 numbered Industrial Property Code titled as absolute grounds for refusal of a trademark. Thus, a trademark application shall not be prejudice against the said article firsthand.
If the above-mentioned points are taken into account prior to filing a trademark application then the chance for the concerned sign to be registered will increase. (Please contact us for more information.)
Are there any more grounds other than absolute grounds for refusal?
Yes. In addition to absolute grounds for refusal, relative grounds for refusal, which is stated in article 6 of 6769 numbered Industrial Property Code also exists.
The most common allegation within relative grounds is the likelihood of confusion. However, one should note that likelihood of confusion is not the only relative ground for refusal.
Please contact us for more information.
Does the Turkish Industrial Property Code Encourage Trademark Coexistence?
Yes. According to subparagraph (ç) of the first paragraph of article 5 of 6769 numbered Industrial Property Code and as a general rule, signs, which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type shall not be a registered as a trademark. This assumption is also regarded as an absolute ground for refusal.
However, if a notarial document indicating the clear consent of the prior trademark proprietor for the registration of the application submitted to the Office, then the trademark application may not be refused according to subparagraph (ç) of the first paragraph.
Do I have the chance to lodge an appeal against the decision of the Turkish Patent and Trademark Office - Trademarks Department?
Any party adversely affected by a decision of the Office may appeal. This notice of appeal needs to file with the Institute in writing within two months of the notification of the decision.
The relevant department of the Office may rectify its decision on finding that the appeal well-founded.
Do I have the chance to lodge an appeal against a published trademark application?
Notices of opposition to the registration of a trademark on the ground that it may not be registered under Article 5 or 6 need to be submitted within two months from the publication of the application. (Please contact us for detailed information about absolute and relative grounds of opposition and concerned procedure.)
The Office (Trademarks Department) will then examine the concerned opposition petition and decide whether to accept or refuse the concerning allegations.
If the Office’s decision is not in the opposing party’s favor, a notice of appeal shall be filed with the Institute (Reexamination and Evaluation Board) in writing, within two months of the notification of the decision. (Please contact us for more information.)
Is there a Proof of Use Obligation for Trademarks?
Especially in the course of opposition proceedings and when the opposition is based on the relative ground: the likelihood of confusion, which is arranged in paragraph 1 of article 6 of 6769 numbered Industrial Property Code, the opponent might be asked to prove the trademark usage under some circumstances.
The same defense can also be asserted in trademark invalidation and other proceedings. Please contact us for more information regarding these issues.
Do I have the chance to bring this decision before the competent court?
Actions against final decisions of the Reexamination and Evaluation Board instituted with the competent court, within two months of notification of the said decision. Please contact us for detailed information.
Which IP court is authorized to examine the final decisions of the Turkish Patent and Trademark Office (TURKPATENT) regarding oppositions against trademark applications?
Intellectual Property Courts practicing in Ankara, Turkey are authorized to examine the final decisions of the Turkish Patent and Trademark Office (TURKPATENT) regarding oppositions against trademark applications.
Is it possible to request the invalidity of a trademark after its registration?
The invalidity of a trademark is requested if it meets certain criteria stated in article 25 of 6769 numbered Industrial Property Code by filing a lawsuit with the competent court.
Even if the above-mentioned procedure (opposition, etc.) cannot be able to prosecute, one that hinges on some dependable grounds still has the chance to cancel the concerned registration. (Please contact our office for more information.)
My registered trademark is being used on the Internet by third parties. Can I prevent third parties from these transactions?
Yes. The process starts by sending a cease and desist letter and pursues accordingly. Please contact us for further information.
There is a post-dated trademark registration, which is identical and/or confusingly similar to my registered trademark. Should I first invalidate this registration and then file a lawsuit for trademark infringement?
No. According to article 155 of 6769 numbered Industrial Property Code: Trademark, patent or design right owner shall not put forward his industrial property right as a defense in an infringement proceeding that has been instituted by right owners who have an earlier priority or application date than his own right.
In this respect, you don’t have to wait and/or file an invalidation lawsuit prior to file infringement lawsuits. Although it is not an obligation, it will be useful to file invalidation lawsuits so as to invalidate stated registrations.
Please contact us for detailed information.