Trademarks

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Trademarks are granted in Turkey by a registration process before the Turkish Patent & Trademark Office. For a quick and smooth procedure, it is highly recommendable to conduct a similarity search in the register in order to find out similar marks and determine the chance of success.

INVOKAT is providing services for conducting preliminary searches, composing legal opinions about registries and filling trademark applications for the local and foreign clients.

Trademark Registration Process

Trademark applications are initially treated by the TPTO with an examination on the basis of absolute grounds for refusal as set forth under Art. 5(1) of the IP Law No: 6769. If TPTO doesn’t find any reason in this respect, the application shall be published in the Trademark Bulletin for two months, which makes the application open to third parties’ opposition.

Oppositions by third parties filed in due time are examined by TPTO. As a result of this examination TPTO decides whether to continue with the registration process or refuse the application. As this decision of TTPO is not final, it is possible to file an objection by an adversely affected party before the supreme commission (Board of Reexamination and Evaluation).

The decisions given by the BoRE are final, and therefore it is only possible to institute a court action for annulment of this decision. Lawsuit must be filed within two months of notification of the decision issued by the BoRE.

Term of a Trademark Protection

A trademark is protected for ten years from the date of filing of the application. Registration may be renewed for further periods of ten years.

Objection to a Decision

It is possible to file an objection against the decision of TPTO before the Reexamination and Evaluation Board regarding outcome of the oppositions or refusal of trademark applications. Objection must be filed within 2 months of notification of the corresponding decision.

The Madrid System, so called Madrid Protocol, is an international system that provides trademark registration in contracting states with one single application.

Its legal basis is the multilateral treaty “Madrid Agreement Concerning the International Registration of Marks”, as well as the Protocol Relating to the Madrid Agreement.

Application

An application for international registration may be filed only by a natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol. Therefore any person or legal entity which does not remain in this system or does not fit with the above description has no right to file an application.

Main Features of the System

A mark may be the subject of an international application only if it has already been registered or applied in National Office of a contracting party. This Office is referred to as the Origin Office. An international application must be presented to the International Bureau (WIPO) through the Origin Office (i.e. Turkish PTO). An international application which is served directly to the WIPO will not be considered valid and will be returned to the sender.

As Turkey is a party only to the Protocol but not the Agreement, only other contracting parties which are also party to the Protocol may be designated for the international application.

Contracting party who received the application examines it by his own legislation and must notify any provisional refusal to the International Bureau within 18 months at most according to the Protocol.

The provisional refusal is recorded in the International Register and published in the Gazette, and a copy thereof is transmitted to the holder of the international registration.

Advantages of the System

After registering a mark, or filing an application for registration, at the Origin Office, the applicant has only to file one application, in one language and pay one fee instead of filing separately in the trademark Offices of the various contracting parties in different languages and paying a separate fee in each office.

Moreover changes subsequent to registration, such as changes in the name or address of the holder or in ownership or limitations of the list of goods and services may be recorded with effect in designated contracting parties through a single and simple procedural step, and by the payment of a single fee.

In addition to that, there will be only one expiry date and only one registration to renew.

A further important advantage of the system is that if the applicant receives a provisional refusal from a contracting party, this will not cease the other applications and international application is maintained in the remaining contracting states.

Dependence on the Basic Registration

For a period of five years from the date of its registration, international registrations remain dependent on the mark registered or applied for in the origin office.

If the basic registration ceases to have effect for any reason within this five year period, the international registration will no longer be protected.

EU Trademark system (formerly known as CTM) provides a unitary trademark protection in EU member states by one single application to the EU Intellectual Property Office (EUIPO).

Advantages of the System

A CTM gives its proprietor an exclusive right in all states of the EU with a single procedure which simplifies trademark policies. Costs of filing an application to register a EU mark is much less than filing separate national applications in all EU member states.

However, besides the economic advantage of using the EU Trademark system, it should always be considered that if an application is refused in one member state the whole application ceases to have an effect. Later on, the applicant cannot get a refund for the costs of filing the application, and gets into a position to repay filings in each country where the application is converted, if he desires to convert the application into one or more national applications.

Another advantage of the system is that a registered TM will also be protected in new members of the Union.

Earlier National Rights

An earlier national trademark constitutes earlier rights against a EU mark. EUIPO does not examine such earlier rights of its own motion. Only the proprietor of the earlier right can raise this issue, either by filing an opposition within 3 months of publication of the application, or following the registration of the CTM by filing an application for a declaration of invalidity on relative grounds.