A. In General:
Trademark opposition in Turkey emerges during the trademark registration stage and is very crucial for the trademark owners.
Thanks to the opposition to the publication of the trademark application, businesses can prevent serious problems that may arise for them in the future, with relatively low cost, in a short time and at the first stage.
Some of the negativities that might have arisen due to not opposing the publication of the trademark application and not taking any legal action regarding the use of the trademark are as follows:
• According to Turkish Commercial Code No. 6102, companies must act like prudent merchants. Being reluctant during opposition against trademark applications which cause the likelihood of confusion on the part of the public and remaining silent to the use of these registered trademarks in commercial life for a long period might result in the loss of rights, which finds its source in Article 2 of the Turkish Civil Code.
• In Turkey, trying to make unfair use of well-known trademarks has now become a phenomenon. The situation has already reached the grim milestone that people who pursue such uses typically apply for trademark applications, and in the case the process is favorable, they can even obtain trademark registrations.
According to Turkish Industrial Property Law No. 6769, these trademark applications, which can be considered malicious, are regulated within the scope of "relative grounds for refusal" that can be asserted at the stage of opposition to the publication of the trademark application. For this reason, as a rule, the Turkish Patent and Trademark Office (TurkPatent) cannot directly reject such applications most of the time in the course Ex-Officio examination.
In this respect, it is crucial to follow up such malicious trademark applications and prevent possible trademark registrations at the first stage by opposing the publication of the trademark application. The opposition which was not lodged during the publication phase necessitates moving to the litigation stage, which is more costly and takes a long time in the future.
In this paper:
• the grounds for the opposition during the publication phase,
• the steps that need to be taken before the Turkish Patent and Trademark Office (Turk Patent) at the stage of opposition, and
• the action aimed at invalidating the Turkish Patent and Trademark Office – Reexamination and Evaluation Board's final decision will be discussed in general terms.
B. The Publication of the Trademark Application:
Trademark applications which are not refused upon examination in terms of form, right of the application, and absolute grounds for refusal, remain published for two months, so that concerned persons submit their oppositions in the monthly issued Official Trademark Bulletin upon the matter that the trademark for which an application is filed should not be registered as per the provisions of articles 5 and 6 arranged in Turkish Industrial Property Law No. 6769.
C. The grounds that can be asserted during Opposition against the Publication of a Trademark:
Relative grounds for refusal, stated in article 6 of the Turkish Industrial Property Law no.6769, and which may be asserted during the period of publication are not based on the reason that such grounds involve public interest, but third parties have acquired a right at an earlier date on the sign subject to an application for registration. (Tekinalp, Fikri Mülkiyet Hukuku, İstanbul, 2002, Beta Basım Yayım Dağıtım, s.356)
A right acquired at an earlier date might either arise from an application or a registration filed for an identical or similar sign. It might also depend on the ground that the genuine trademark owner has a right on that sign or that an unfair application has been made by an agent or representative of the trademark owner, and similar reasons.
Relative grounds for refusal mentioned in article 6 of the Turkish Industrial Property Law no.6769 ensure problems that might appear in case applications for registration which are missed or not evaluated in the scope of article 5, which is related to absolute grounds for refusal in trademark registration, during ex officio examination conducted by Turkish Patent and Trademark Office (Turk Patent) or in case such possibility comes into the scene, by raising objections against such persons. (The detailed review of the ABSOLUTE GROUNDS for REFUSAL in TRADEMARK REGISTRATION regulated in Article 5 of the Turkish Industrial Property Law No. 6769 is included in our blog.)
The reasons that can be asserted at the stage of objection to the publication, which are included in Article 6 of the Industrial Property Law No. 6769, are as follows, with the main headings:
C.1. In the event of the likelihood of confusion among the trademarks on the part of the public, the publication of the trademark application can therefore be subject to opposition. (A detailed review of the concept of the LIKELIHOOD of CONFUSION in TRADEMARK LAW can be reached from our blog.)
In particular, if this ground is relied upon, provided that the trademark, which is the ground for opposition, has been registered for at least five years at the date of application or date of priority of the application for which the opposition is filed, upon the request of the applicant, it shall be requested from the opponent to submit evidence proving that he had genuinely used his trademark on the goods and services relating to the opposition during the five years before the date of application or the date of priority of the latter application or whether he has a proper reason for not using his trademark during that period.
C.2. A trademark application for the registration of an identical or indistinguishably similar trademark filed by a commercial agent or representative in his own name without the trademark proprietor’s consent and without any justifiable ground shall be refused upon the trademark proprietor’s opposition.
C.3. If a right to a non-registered trademark or to another sign used in the course of trade was acquired prior to the date of application or the date of the priority claimed for the application for registration of a trademark, the trademark application shall be refused upon the opposition of the proprietor of that prior sign.
C.4. Trademark applications that are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of identical and similar goods or services.
C.5. A trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to, or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trademark due to the reputation the earlier trademark has in Turkey; shall be refused upon the opposition of the proprietor of that earlier trademark.
C.6. An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright, or any other intellectual property right of another.
C.7. An application for registration of a trademark identical to or similar to a collective mark or a guarantee mark with identical or similar goods or services, that is filed within three years following the expiration of the protection of the collective mark or guarantee mark due to non-renewal shall be refused upon the opposition of the previous right holder.
C.8. An application for registration of a trademark identical to or similar to a registered trademark with identical or similar goods or services, that is filed within two years following the expiration of the protection of the registered trademark due to non-renewal shall be refused upon the opposition of the previous trademark proprietor provided that the trademark has been used during this period.
C.9. Trademark applications filed in bad faith shall be refused upon the opposition.
D. Opposition Period, Procedure and Opposition Process
In case of any of the above-mentioned situations, an opposition can be lodged within two months following the publication date of the trademark application in the official trademark bulletin, together with a written opposition petition and the information and documents proving the claims contained in this petition.
This period is a final term, and if the period is exceeded, the possibility of opposition before the Turkish Patent and Trademark Office (Turk Patent) forfeitures.
The objection is initially examined by the Turkish Patent and Trademark Office - Trademarks Department and, a decision is made on the subject.
The party that the decision is against has the opportunity to request a re-examination by the Re-examination and Evaluation Board, which is the last decision-making body, before the Turkish Patent and Trademark Office (Turk Patent), within two months from the date of notification of this decision.
The decision made by the Turkish Patent and Trademark Office Re-examination and Evaluation Board is the final decision, and there is no further action to be taken before the Office after this decision.
E. Filing Lawsuits against decisions of the Turkish Patent and Trademark Office - Re-Examination and Evaluation Board:
As stated in the paragraph just above, the decision made by the Turkish Patent and Trademark Office Re-examination and Evaluation Board is the final decision.
The party whose decision is against its favor can file a lawsuit for the annulment of the decision of the Re-examination and Evaluation Board within two months from the date of notification of the said decision.
In just the same way as the objection phase, this period is a final term. Therefore, if the period is exceeded, the possibility of filing a lawsuit before the competent Civil Courts of Intellectual and Industrial Property Rights forfeitures. The final term for the lawsuit is evaluated ex officio by the authorized and competent Intellectual and Industrial Property Court. The lawsuits filed after two months from the notification date of the said decision are rejected.
The competent Court in the cases to be filed for the annulment of the decisions given by the Turkish Patent and Trademark Office, Re-Examination, and Evaluation Board (YİDK) is the "Ankara Civil Courts of Intellectual and Industrial Property Rights."
In the lawsuits for the annulment of the decisions given by the Turkish Patent and Trademark Office, Re-Examination, and Evaluation Board (YİDK), in addition to the Turkish Patent and Trademark Office (Turk Patent), the person/company who is the proprietor of relevant trademark application must also be specified as the defendant in the lawsuit.
Attorney at Law
Trademark & Patent Attorney