Frequently Asked Questions on Trademarks
Is there a specific definition for a Trademark?
Although there is no clear definition of a trademark in Turkish Industrial Property Law No. 6769, the first paragraph of Article 4 states that: “A trademark may consist of any sign such as words including personal names, shapes, colors, letters, numbers, sounds, and the form or packaging of goods, provided that it enables the goods or services of one undertaking to be distinguished from the goods or services of another undertaking and that it is shown in the register in a manner that clearly and precisely determines the subject matter of the protection granted to the owner.”
In this context, it can be said that there are two basic characteristics for a sign to be accepted as a trademark; one of them is that it is distinctive and the other is that it is not deceptive.
Therefore, a trademark is generally defined as a sign used to distinguish the goods and services of one enterprise from the goods and services of another.
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Who can benefit from trademark protection in Turkey?
Citizens of the Republic of Türkiye, natural or legal persons residing or carrying out industrial or commercial activities within the borders of the Republic of Türkiye, and persons who have the right to apply according to the Paris Convention or the Agreement Establishing the World Trade Organization benefit from trademark protection in Turkey.
Natural or legal persons who are citizens of States that provide legal and de facto protection to citizens of the Republic of Türkiye, other than those mentioned above, benefit from trademark protection according to the principle of reciprocity.
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What is the duration of a trademark registration in Turkey?
A trademark is registered for ten years from the date of application. The registration is renewed for ten years.
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Which points should be considered before filing a trademark application?
After the application for a trademark is filed, the relevant sign is examined ex officio by the relevant department of the Turkish Patent and Trademark Office, namely the Trademarks Department, by the principles adopted by the Industrial Property Law No. 6769. (Please refer to Absolute Grounds for Refusal in Trademark Registration in our Blog Section.)
The scope of these principles is regulated in Article 5 of the Industrial Property Law No. 6769, titled "Absolute grounds for refusal of a trademark". Therefore, a trademark application cannot be asserted primarily against the said article.
The chances of registration of a trademark will increase if the above-mentioned issues are taken into account before filing a trademark application.
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Apart from the absolute grounds for refusal, are there any other grounds that may prevent the registration of a trademark?
In addition to the absolute grounds for refusal, there are also relative grounds for refusal regulated under Article 6 of the Industrial Property Law No. 6769. (Detailed explanations regarding the relative grounds for refusal can be found in our articles titled 'Likelihood of Confusion in Trademark Law', 'Trademark Opposition in Turkey', and 'Class Similarity in Turkish Trademark Law and Problems Occurred by Divergent Interpretations' in our Blog section.)
The likelihood of confusion is the most common claim among the relative grounds. However, it should be noted that the likelihood of confusion is not the only ground.
Please contact us for more information.
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Is Turkish Industrial Property Law Encouraging Trademark Co-existence?
Positive. As a general rule, according to subparagraph (ç) of the first paragraph of Article 5 of the Industrial Property Law No. 6769, signs that are identical or indistinguishably similar to a trademark registered or applied for registration in respect of the same goods and services or goods and services of the same kind cannot be registered as trademarks. This presumption is also considered an absolute ground for refusal.
Nevertheless, the trademark application may not be refused according to subparagraph (ç) of the first paragraph if a notarial document showing the prior trademark owner's explicit consent to the registration of the application is submitted to the Office.
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Is there any chance to appeal against the decision of the Turkish Patent and Trademark Office - Trademarks Department?
An appeal may be lodged by any party adversely affected by a decision of the Turkish Trademark and Patent Office. The notice of such appeal must be submitted in writing to the Office within two months of the notification of the decision.
The relevant unit of the Institution may correct its decision if it finds the appeal justified.
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Is it possible to object to a published trademark application?
Notices of opposition to the registration of a trademark on the grounds that it cannot be registered in accordance with Article 5 or 6 must be filed within two months of the publication of the application.
Subsequently, the Office (Trademarks Office) will examine the relevant opposition petition and decide whether to accept or reject the relevant claims.
Should the decision of the Office not be in favor of the opposing party, an appeal shall be filed in writing to the Institute (Re-examination and Evaluation Board) within two months of the notification of the decision.
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Does Proof of Use Obligation Exist for Trademarks?
The opponent may be required to prove the use of the trademark in some cases, especially during opposition proceedings and in cases where the opposition is based on the grounds of the likelihood of confusion regulated in paragraph 1 of Article 6 of the Industrial Property Law No. 6769.
The same defense can be raised in trademark invalidation and other cases. (Detailed explanations on trademark use and proof of such use can be found in the article titled Social Media and the Question of Evidencing Trademark Use in the Blog section.)
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Can a lawsuit be filed against the decision of the Turkish Patent and Trademark Office, Reexamination and Evaluation Board?
An action may be filed against the final decisions of the Turkish Patent and Trademark Office - Reexamination and Evaluation Board before the competent court within two months following the notification of the decision.
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Which intellectual property court is authorized to review the final decisions of the Turkish Patent and Trademark Office (TURKPATENT) regarding the oppositions against trademark applications?
The Intellectual Property Courts in Ankara are authorized to review the final decisions of the Turkish Patent and Trademark Office regarding opposition to trademark applications.
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Can a trademark be invalidated after registration?
The invalidation of a trademark can be requested by filing a lawsuit in the competent court if it meets certain criteria specified in Article 25 of the Turkish Industrial Property Law No. 6769.
Even if the above-mentioned opposition procedure cannot be applied, there is a chance that a procedure based on some credible grounds may cancel the relevant registration.
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Someone is using my registered trademark on the internet. Can I prevent third parties from doing so?
Yes. The process starts by sending a notice and continues accordingly. Please contact us for more information.
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A post-dated trademark registration is identical and/or confusingly similar to my registered trademark. Should I first invalidate this registration and then sue for trademark infringement?
No. As per Article 155 of the Industrial Property Law No. 6769: The holder of a trademark, patent, or design right may not assert its industrial property right as a defense in an infringement action brought by right holders with an earlier priority or application date than its right.
Accordingly, it is not necessary to file and/or wait for a nullity action before filing an infringement action. While it is not an obligation, it would be useful to file a nullity action to invalidate the aforementioned registrations.