Frequently Asked Questions

Turkey has become a member of the Protocol Relating to the Madrid Agreement concerning the international registration of trademarks on January 1, 1999 in accordance with the decision No. 97/9731 dated August 5, 1997 of the Council of Ministers.

The said instrument of accession was accompanied by the declaration that, in accordance with Article 14(5) of the Madrid Protocol (1989), the  registration resulting from any international registration effected under this Protocol before the date of entry into force of this Protocol with respect to the Republic of Turkey cannot be extended to it.
The Madrid Protocol (1989) has entered into force, with respect to the Republic of Turkey, on January 1, 1999.

In addition to Trademark and Servicemarks which can be jointly owned by more than one proprietor, the Turkish Trademark Law No. 556 provides for the registration of Guarantee Marks and Collective (Associate) Marks according to Articles 54 and 55 reading as follows: 
 
Guarantee Marks in Turkey: 
 
Article 54 of the Turkish Trademark Law: A Guarantee mark is a sign, which serves to guarantee, under the control of the proprietor of the mark, the common characteristics, production methods, geographical origins and quality of (the goods/services of) several undertakings. The registrant of the Guarantee Mark or an undertaking economically related/dependent on the registrant are not authorized to use the Guarantee Mark on their products or services.”
The application for the Guarantee Mark in Turkey is to be filed by the entity claiming the title in the mark.
No separate protection is provided as such for Certification Marks, whose certification function is performed by the Guarantee Marks in Turkey.
 
Collective Marks in Turkey: 
 
Article 55 of the Turkish Trademark Law:  The Collective mark is a sign used by a group of undertakings of producers / manufacturers or traders or providers of services. The Collective mark serves to distinguish the goods and services of the undertakings belonging to the group from the goods and services of other undertakings.” The application for the Collective (Associative) Mark is to be filed by the concerned entities acting jointly for registration purposes.

There are no restrictions for such trademarks especially in respect of services in Turkey.

“The registrant of the Guarantee Mark or a company/entity economically related/dependent on the registrant are not authorized to use the Guarantee Mark on their products or services” according to Article 54 paragraph 2 of the Turkish Trademark Law No. 556, whereas the Collective (Associative) Mark registrants are authorized to use the Collective Mark on their products or services in Turkey.

The rules (namely, the Technical Regulation - in the Decree-Law) must be filed simultaneously with the application for Guarantee or Collective Mark in Turkey. Otherwise, they are considered not validly filed (Article 56 paragraph 1 of the Turkish Trademark Law No. 556). The rules must be legalized before the Turkish notary according to Article 12 (g) of the regulation of the Turkish Trademark Law.

The changes in the rules are not applicable for as long as such changes have not been approved by the Turkish Patent Institute (Article 57, paragraph 1 of the Decree-Law No. 556).
In case the rules filed with the application do not comply with the requirements of Article 56 of the Decree-Law No. 556, the Turkish Patent Institute may request that the rules be appropriately changed. In case the changes as requested by the Turkish Patent Institute are not carried out within a period of 6 months from the date of the Administrative request, the application for the Guarantee Mark or the Collective (Associative) Mark is rejected.

Turkey having adhered to the Nice Agreement with the Decision of the Council of Ministries No. 95/7094 of July 12, 1995 under the Turkish Trademark Law no. 556, the international classification of goods and services according to the Nice Agreement applies, while also the 9th edition of the Nice Agreement has been accepted as of January 1, 2007 and is applied on trademarks as of entering into force of respective Regulation No. 2007/2 for the classification of goods dated January 01, 2007.

With the coming into force of Regulation no2007/2 of January 01, 2007, the Regulation specifies the items of goods and services and their grouping under sub-classes of a kind, as retained in the regulation are detailed and differ from the wording and structure of the international class headings and thereby consists/falls into a national sub-classification.

By an ad-hoc regulation, lately amended as of the contents of sub-classes published in the Official Gazette dated January 08, 2007 with the Regulation no. 2007/2. Turkey has established a national sub-classification system based on the Nice Classification.

Accordingly, the current trademark registration practice puts the emphasis on the sub-classification in that the Turkish Patent Institute (T.P.I.), generally considers the goods of the Turkish trademark included in the same sub-classes as confusingly similar without further distinction. According to the current practice in Turkey, the Turkish Patent Institute accepts for registration of Turkish trademarks in the name of differing applicants for goods and/or services under different sub-classes/headings within the same class.
This situation and practice in Turkey causes considerable difficulty as, despite the adoption of the international classification, the Turkish Patent Institute continues to request a more closely and restrictively defined description of goods/services on the basis of the sub-classification always quoted under the international class.
Although a Turkish trademark application may be filed in respect of the general class heading(s) of the currently valid 9th edition of the Nice international classification in view of the current practice, the broadly defined general class heading may not permit the registration of the mark in Turkey, where an identical or similar trademark application/registration happens to exist in respect of one or more sub-class(es). In such case, the trademark may be accepted for registration in Turkey only for sub-class(es) not covered by the prior/concurrent trademark application/registration.

The Article 14 of the Turkish Trademark Law No. 556 concerning use states the following:
“Where the trademark has not been put to use without a justifiable/legitimate reason within a period of five years following the registration or where the use has been suspended during an uninterrupted period of five years, the trademark shall be repealed”.

The following shall be understood to constitute use:
a/ use of the registered mark with differing elements without altering/affecting thereby the distinctive character of the trademark,
b/ use of the trademark on goods or their packaging solely for exportation purposes,
c/ use of the trademark with the consent of the proprietor,
d/ importation of the goods carrying the trademark”.

According to Article 42 (c) of Turkish Trademark Law, the invalidity of the trademark registration on grounds of non-use necessitates a court decision.
According to Article 42 (c), use subsequent to the period of 5 years will not be considered as a ground for invalidity of registration provided such use is serious, therefore not a merely formal/cosmetic use and provided that it has not been initiated within the 3 months prior to the court action, with the aim of preventing it.

Articles 14 and 42 (c) of Turkish Trademark Law will apply regarding the period of use of 5 years. According to Article 42 (c), only the courts have competence over deciding the invalidity of the trademarks on grounds of non-use as of Article 14 in Turkey. On the other hand, the regulation contains no provision as to the automatic and ex-officio cancellation of trademark registrations in Turkey on grounds of non-use. Accordingly, the Administration is not vested with any such competence to annul or invalidate trademark registrations for non-use.

We are of the opinion that none of the provisions of the Turkish Trademark Law No. 556 and particularly the text of Article 42, paragraph 1(b) reading, “A registered trademark shall be declared invalid by the court in the following cases: b) where in breach of Article 8 (pertaining to the Relative Grounds for Refusal)” does clearly and unequivocally permit the filing of an opposition and the institution of a court action in Turkey for the cancellation on grounds of simple prior use, of a subsequent trademark registration.

The solution of this problem will obviously depend on the Turkish court decisions to be rendered on this point, which, to our opinion, is likely to constitute one of the major sources of contention between the trademarks enjoying protection, on grounds of prior use, according to the former Trademarks Act and the trademarks registered, subsequently, according to the Turkish Trademark Law No. 556.
However, our previous experiences in Turkey have shown that Article 8, paragraph 3.a/b of the Turkish Trademark Law No. 556 pertaining to the “Relative Grounds for Refusal” which reads that:
“Upon opposition by the proprietor of a non-registered trademark or of another sign used in the course of trade, the trademark applied for shall not be registered provided that;

a) the rights to the sign were acquired prior to the date of filing of the application for registration of the trademark, or prior to the date of priority claimed for the application for registration,
b) the sign confers on its proprietor the right to prohibit the use of a subsequent trademark gives the possibility to block the application for the subsequent registration, by third parties, of the mark, on grounds of prior longstanding and extensive local use, in the course of the opposition/objection proceedings and also to cancel the registration in the course of the court actions.

For the above reasons to avoid the interpretative uncertainties of the future court decisions concerning this matter, it is strongly recommended to obtain the registrations of the trademarks being already used but not yet registered in turkey and those which are contemplated to be used in the near future.

Trademark identical or availability searches in Turkey may be effected either in form of an Official Search, or as a private Computer Search. The Official Search is conducted before the Turkish Patent Institute and the results thereof can be obtained within 10 business days.

On the other hand, if urgent, trademark search results are required an unofficial computer trademark search may be conducted in Turkey, the results of which can be delivered within 3 – 6 business days. However it is important to note that the Turkish trademark applications under prosecution which have not yet been published within last 4 weeks months, being confidential to only the Turkish Patent Institute due to their being under formal examination stage are not covered and also the details of the trademarks revealed in this unofficial trademark search are not updated. Therefore if a Turkish trademark application/registration has undergone any kind of recordal of status changes, renewal or has been faced with an opposition, this information may not be covered within the unofficial computer search results in Turkey.
For this reason, an official trademark search would be advised to cover all the existing Turkish trademark applications/registrations as well as international trademark applications, for which Turkey is a designated country in the Trademark Registry.

Turkish trademark searches for device trademarks currently can not be effected before the Turkish Patent Institute (T.P.I.), since the database system of the Turkish Patent Institute is unfortunately not well equipped for conducting design mark searches. Such a device trademark search may only be conducted with a private computer database on the basis of the Vienna classification code, the results thereof however may be insufficient as this search will not cover the trademark applications filed with the Turkish Patent Institute and not published in the official Trademark Bulletins within the Last 4 weeks. 

Turkish Company Name searches may only be conducted in the on-line database of the Turkish Ministry of Industry and Trade enabling the search for identical Turkish company names in all cities of Turkey. However the on-line database does not guarantee the completeness and correctness of the records revealed. Thus, the information to be obtained will not be 100 percent reliable. Such a search also does not reveal any detailed information as to the field of activity of the Turkish company. An additional search in the on-line database of the Turkish Chamber of Commerce / Industry of the major cities, where available, such as Istanbul, Izmir and Ankara may also be conducted and copies of the company excerpts may be obtained upon request. 

According to Article 12, of the regulation of the Turkish Trademark Law, the term of 2 months is given by the administration for :

- the explanation -item by item- of the specification of goods of a Turkish trademark application considered to be too broadly / generally defined. Failure to comply within the above indicated deadlines, will result in the annulment of the Turkish trademark application in respect of the non-explained broadly defined or refused goods or services- without any further administrative action/decision pertaining to such annulment.

- completing the fees in respect of the class(es) in case they have not been fully paid earlier

- lodging an objection against the refusal/partial refusal of a trademark application on absolute grounds.

According to Article 33 of the Turkish Trademark Law No. 556, the Turkish trademark application which “has not been refused according to Articles 29 to 32 shall be published in the relevant Bulletin”.

According to Articles 34, 35 and 36, third parties can file their objections/observations and raise opposition to the registration of the trade/service mark applied for within three months from the publication of the application in the Official Trade/Service Mark Bulletin in Turkey.

The Turkish Trademark Law no. 556 provides for pre-grant opposition and observation proceedings in that the application is examined by the Turkish Patent Institute (T.P.I.) prior to its publication for opposition / observations purposes in consideration of:

* Article 7 and 8 concerning “absolute grounds for refusal” and “relative grounds of refusal” respectively,
* Articles 26 to 28, if priority is claimed,
* Articles 29 to 32 concerning the supporting documents and other formal requirements.
Under the current practice, the Turkish Patent Institute shall refuse the Turkish  trademark application in Turkey filed as of Article 7(b) for “Absolute Grounds for Refusal”, in case the examination reveals any prior conflicting registration and/or application.

The international trademark registration is subject to the same rules of protection and examination as a national Turkish trademark application. Like national Turkish trademark applications, International registration is examined as of Article 7 concerning “Absolute Grounds for Refusal” and as of Article 8 concerning “Relative Grounds for Refusal” and is also published in the Official Trademark Bulletin of the Turkish Patent Institute in Turkey. The term for opposition in Turkey is 3 months from the publication date.

On September 26, 2006, Turkey declared that, under Article 5(2)(c) of the said Protocol, when a refusal of protection results from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit. This declaration shall take effect on December 26, 2006.

According to Articles 47 to 53 of the Turkish Trademark Law No. 556, those persons who are damaged/suffer from the Administrative decisions, do have the right of objecting before the Higher Council of Examination and Evaluation of the Turkish Patent Institute against the said administrative decisions -which could concern any matter including a decision on registration of a given mark- within 2 months from the issuance of the official decision of same. 

With the enactment of the package of Industrial Property Legislation under various Decree-Laws, of which No. 556 concerns the Trademark/Servicemarks, Article 57 has been added to the Turkish Customs Act No. 4458 to permit, upon complaint, under the suspension of release procedure the seizure by the customs of goods infringing the intellectual and/or industrial property rights, and among them the trade marks under protection in Turkey. Unless a court action is duly instituted or an interlocutory injunction is obtained from the court within 10 days from the seizure, the goods are released and the custom formalities proceed further.

In this regard, reference is also made to Article 79 of the Turkish Trademark Law No. 556, according to which, upon complaint, the customs authorities can seize counterfeit goods during importation or exportation. The main infringement action is to be instituted before the Turkish court within 10 days from the notification of seizure by the customs in Turkey.

In the case of a change of name, address or corporation status, regardless of the number of the trademarks that were indicated in the petition for the recordal, the Turkish Patent Institute will record the status changes of the trademark owners against all trademarks pending or registered in the same trademark owner. Accordingly, by the submission of one petition and one set of documents for one trademark, the subject change will be recorded on all Turkish trademarks in the name of the same trademark owner. This recordal will be confirmed by the administration with an administrative letter to be issued in this respect.

In case there exist international registrations designating Turkey via Madrid Protocol, the  Turkish Patent Institute requests the trademark holder to file for the recordal of the change of status before the WIPO first and submit the WIPO documents to the Turkish Patent Institute in order to complete the recordal of change of status against all Turkish trademarks and international trademarks extending Turkey.

On the other hand, for the recordal of change of ownership such as assignment as well as merger (demerger), besides the documentation to be provided for the recordal of transfer, the current practice of the Turkish Patent Institute requires the assignment and merger (demerger) of trademarks in the name of the same trademark owner which are identical or confusingly similar to the trademarks to be transferred and covering identical or similar goods on the basis of Article 16 of Turkish Trademark Law as well as Article 19 of the amended Implementing Regulations.