Frequently Asked Questions:
TRADEMARKS

Revised May 2007

 GENERAL

 RESEARCH

 APPLICATION

 OPPOSITION

 LITIGATION

 STATUS CHANGES

What is the legal basis for trade/servicemark protection in Turkey?

Trade/service mark applications can be filed in Turkey in accordance with the enactment of the Decree-Law No. 556 as from June 27, 1995. The respective Implementing Regulations for this Decree-Law came into force on November 5, 1995 following its publication in the Official Journal of same date which has been amended on a number of points with a further Regulation which came into force on October 2, 2002 following the publication in the Official Journal No. 24894 on the same date.

How is trademark protection obtained in Turkey?

In view of Article 6 of the Decree-Law No. 556 “the trade/service mark protection according to this present Decree-Law is obtained by registration”.

According to this provision, Turkey has changed its course by abandoning the earlier “Declarative” system and by adopting a “Constitutive” one in that the registration alone creates the right.

Who is entitled to obtain trademark registration in Turkey?

The following persons are entitled to protection and thereby qualified to obtain registration of their trade/service marks in Turkey according to Articles 3 and 4 of the Decree-Law No. 556 stated as follows:

“Article 3: The protection conferred by this law is available to natural and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Republic of Turkey, or to the persons entitled to file applications under the provisions of the Paris Convention or the Agreement Establishing World Trade Organization.

Natural or legal persons other than those referred in the first paragraph of this Article, who are nationals of states which accord legal and de facto protection to the nationals of the Republic of Turkey shall enjoy, according to the reciprocity principle, trademark protection in Turkey.

Article 4: Where the International Agreements having entered into force according to the Laws of the Republic of Turkey contain provisions which are preferential/more favorable to those of this present Decree-Law, the persons referred to in Article 3 may request to benefit from such preferential/more favorable provisions.”

Can international trademarks under the Madrid protocol be extended to Turkey or filed from Turkey?

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 implementing regulation of the Protocol Relating to the Madrid Agreement has been published in the Official Gazette and has entered into force on March 12, 1999 with retroactive effect as of January 1, 1999.

How are international trademarks under Madrid protocol designating Turkey be processed?

The trademark rights obtained in Turkey as of international registration(s) are protected according to the Decree-Law no. 556 in the same manner as the national registered trademarks. According to the Decree-Law, the protection commences as from the date of the International Registration takes effect.

Where Turkey is designated, the refusal of protection of the International registration for Turkey is to be notified to WIPO within 18 months from the publication date. Where the Turkish Patent Institute does not notify its decision to WIPO within this time period, the International Registration is deemed to have effect and confer protection in Turkey.

How long is the protection period for trademarks?

According to Article 40 of the Decree-Law No, 556, “the term of protection of the registered mark is ten years from the date of filing of the application” and “is renewable for periods of ten years”. The renewal may be filed within of six months prior to the expiration of the 10-year protection date or with a fine within the six (6) subsequent months following the expiration of the 10-year protection date.

What is considered registrable as a trademark?

A trade/service mark may consist of “all kinds of signs such as words, including personal names, designs, letters, numerals, the shape of the goods or of their packaging capable of being represented graphically or by similarly descriptive means and capable of being reproduced and published by printing”, according to the Article 5 of the Decree-Law no. 556.

Are sounds protectable according to the Turkish practice?

Trademarks consisting of “sounds” are not covered by the trademark definition provided under the Decree-Law no. 556 although musical notes representing graphically such “sounds” seem to be registrable as trade/service marks.

Are 3-dimensional trademarks registrable in Turkey?

As far as three-dimensional marks are concerned, the amendment in paragraph 1 of Article 5 seems to render possible their registration in “the shape of the good(s) or (of) the packaging(s)”. On the other hand the provision of the paragraph 2 of Article 5 seems to render without any effect the registration of such three dimensional marks as it states that “trade mark can be registered together with the product or its packaging. In such a situation, the registration of the product or packaging does not grant to the registrant any exclusive right on (the form of) the product or packaging”.

Under these circumstances, the registration of the three-dimensional articles such as products, packagings etc., should be possible whether or not there is a word and/or figurative mark thereon. However, it is to be noted that where there is only a figurative mark, although the recent decisions of the Courts instituted against the T.P.I. for the withdrawal of final decisions of rejection with respect to distinguishing 3D trademarks have been all concluded in favor of the applicants and confirmed by the Supreme Court where the 3D trademark was already registered in the country of origin and other Paris Union countries, the T.P.I continues to refuse the registration of such trademarks even in case the 3D trademark consist of a quite distinctive product or package shape.

Are guarantee and collective marks registrable in Turkey?

In addition to Trade and Service Marks which can be jointly owned by more than one proprietor, the Decree-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:

Article 54: 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 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.

Collective Marks:

Article 55: 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 marks especially in respect of services.

“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 parag. 2 of the Decree-Law No. 556, whereas the Collective (Associative) Mark registrants are authorized to use the Collective Mark on their products or services.

The rules (namely, the Technical Regulation - in the Decree-Law) must be filed simultaneously with the application for Guarantee or Collective Mark. Otherwise, they are considered not validly filed (Article 56 parag. 1 of the Decree-Law No. 556).

The rules must be legalized before the notary according to Article 12 (g) of the regulation.

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, parag. 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.

Can both goods and services be filed under one trademark?

One application can cover goods and/or services in more than one class.

The Nice Classification will apply for the trade and service marks to be filed according to the Decree-Law No. 556. However, the good(s) or service(s) in respect of which the application is filed will have to be specified by taking into consideration the national sub-classification system.

Does Turkey adhere to the Nice Classification System?

Turkey having adhered to the Nice Agreement with the Decision of the Council of Ministries No. 95/7094 of July 12, 1995 under the Decree-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. The English translation of the national sub-classification can be obtained from this link: National_Sub-Classification.pdf

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 included in the same sub-classes as confusingly similar without further distinction. According to the current practice, the T.P.I. accepts for registration 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 causes considerable difficulty as, despite the adoption of the international classification, the T.P.I. 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 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 only for sub-class(es) not covered by the prior/concurrent trademark application/registration.

What constitutes use of a trademark according to the Turkish practice?

The Article 14 of the Decree-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”.

How will a trademark be declared as non-valid due to non-use?

According to Article 42 (c), 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) 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 marks on grounds of non-use as of Article 14. On the other hand, the regulation contains no provision as to the automatic and ex-officio cancellation of trademark registrations on grounds of non-use. Accordingly, the Administration is not vested with any such competence to annul or invalidate trademark registrations for non-use.

Can prior use constitute a ground of refusal/cancellation of a trademark?

We are of the opinion that none of the provisions of the Decree-Law No. 556 and particularly the text of Article 42, parag. 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 for the cancellation on grounds of simple prior use, of a subsequent trademark registration.

The solution of this problem will obviously depend on the 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 Decree-Law No. 556.

However, our previous experiences have shown that Article 8, parag. 3.a/b 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.

Is it possile to conduct Trademark Availability Searches ?

Trademark identical or availability searches may effected either in form of an Official Search, or as a private Computer Search. The Official Search is conducted before the T.P.I. and the results thereof can be obtained within 7 –14 business days.

On the other hand, if urgent search results are required an unofficial computer search may be conducted, the results of which can be delivered within 3 – 6 business days. However it is important to note that the applications under prosecution which have not yet been published within last 6-8 months, being confidential to only the T.P.I. due to their being under formal examination stage are not covered and also the details of the trademarks revealed in this unofficial search are not updated. Therefore if a 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.

For this reason, an official search would be advised to cover all the existing applications/registrations as well as international applications, for which Turkey is a designated country in the Trademark Registry.

Is it possible to conduct Device Trademark Searches ?

Searches for device trademarks currently can not be effected before the Turkish Patent Institute (T.P.I.), since the database system of the T.P.I. is unfortunately not well equipped for conducting design mark searches. Such a device 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 T.P.I. and not published in the official Trademark Bulletins within the last 6-8 months.

Is it possible to conduct Company Name Searches ?

Company Name searches may only be conducted in the on-line database of the Ministry of Industry and Trade enabling the search for identical 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 company. An additional search in the on-line database of the Chamber of Commerce / Industry of the majour cities, where available, such as Istanbul, Izmir and Ankara may also be conducted and copies of the company excerpts may be obtained upon request.

What are the documents required to support a trademark application in Turkey?

Under the current procedure, the Power of Attorney has to be submitted simultaneously with the application for the completion of the filing. For the documents needed to support a trademark application (to be) filed in Turkey, please refer to the following link:
TM_requirement_listing.pdf

What are the requirements for filing a claim of priority?

The Priority right shall be requested together with the application. Where the priority right certification is not submitted within 3 months from the date of application, such request to benefit from priority right shall be deemed not to have been made. Furthermore, the claim of priority can also be claimed for trademark applications to be used at national or international exhibitions in Turkey or at official or officially recognized exhibitions in states which are parties to the Paris Treaty for a period of 6 months from the date of display at such an exhibition. Please refer to the following link pertaining to the required filing documents:
TM_requirement_listing.pdf

What is the deadline to submit the supporting filing document for a trademark application?

Under the current procedure, all the supporting documents which have not been filed simultaneously with the application will have to be filed within the unextendable deadline of 2 months from the notification of the official action requesting the completion of same according to Article 12, parag.1, of the regulation of April 9, 2005. According to this amended provision, the one-month extension of deadline accorded by the former regulation is no longer available and the deadline of 2 months is unextendable.

What is the deadline to respond to an office action?

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

• the explanation -item by item- of the specification of goods considered to be too broadly / generally defined. Failure to comply within the above indicated deadlines, will result in the annulment of the 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 an application on absolute grounds.

Is a trademark application published for opposition purposes?

According to Article 33 of the Decree-Law No. 556, the 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.

What are the terms for filing an opposition/observation in Turkey?

The Decree-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 T.P.I. shall refuse the application filed in Turkey as of Article 7(b) for “Absolute Grounds for Refusal”, in case the examination reveals any prior conflicting registration and/or application.

What is the opposition procedure for international trademarks designating Turkey?

The international registration is subject to the same rules of protection and examination as a national application. Like national 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. The term for opposition is 3 months from the publication date.

Who is eligible to file for oppositions/observations with the Turkish patent institute?

According to Article 34, third parties consisting of “any natural or legal person, or any group or any organization representing, providers of services, manufacturers or producers, traders or consumers” may submit their written oppositions/observations without being party to the proceedings before the T.P.I.

How are oppositions filed?

Oppositions have to be presented in writing and will have to be motivated (formal oppositions are not accepted). (Article 35, parag.2).

When do the supporting documents need to be filed for the opposition proceedings?

Supporting evidence and a Power of Attorney shall be submitted with the opposition petition. In case the opponent party does not lodge simultaneously the supporting evidence including the Power of Attorney with the opposition and/or does not cite the motivation/grounds of opposition, the opposition is deemed not have been made/raised at all, according to the last paragraph of Article 35.

What is an alternative solution to settle an opposition?

According to Article 36, parag.2, “if it deems it appropriate, the T.P.I. may invite the parties (to meet) for an amicable settlement” but in practice, the T.P.I. has never adopted such course of action until now.

Is it possible to appeal to the decisions/actions of the T.P.I.?

According to Articles 47 to 53 of the Decree-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 T.P.I. 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.

Which courts are competent for the institution of the actions concerning intellectual and industrial rights in Turkey?

According to Article 71, paragraphs 1 and 3, in all court actions (to be) instituted in accordance of the Decree-Law No. 556 and against all decisions of the T.P.I. in implementing the provisions of the Decree-Law No. 556, the competent courts shall be the specialized courts set-up by the Ministry of Justice.

Both civil and criminal actions regarding Intellectual and Industrial property matters are handled by the “Civil Court of Intellectual and Industrial Property and Criminal Court of Intellectual and Industrial Property” established as specialized courts. Said courts are presently only established in Istanbul, Ankara and İzmir.

Currently for the jurisdictions other than Istanbul, Ankara and İzmir, in the jurisdictions having more than one penal and/or commercial court, according to the decision of the Supreme Council of Judges and Prosecutors, the 3rd Penal Court hears the penal actions for all Intellectual and Industrial Property matters whereas the civil actions are distributed amongst the Commercial Courts of the jurisdiction.

These Courts are competent also for all actions to be instituted versus T.P.I by third persons negatively affected or having suffered damage by the decisions of the T.P.I in any industrial property matter.

Is suspension of release procedure applicable before the Turkish customs?

With the enactment of the package of Industrial Property Legislation under various Decree-Laws, of which No. 556 concerns the Trade/Service Marks, Article 57 has been added to the 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 Decree-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 court within 10 days from the notification of seizure by the customs.

What are the requirements for filing recordals of status changes against Turkish trademarks?

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 T.P.I. 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 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 T.P.I. 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 T.P.I. 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 Decree Law as well as Article 19 of the amended Implementing Regulations.

Why is it necessary to apply for the recordal of continuation of license?

Please also note that, once a license has been recorded against a trademark registration, as long as the license is valid and albeit how long has passed since its recordal, in order to continue the effect of the validity of the recordal of license, the recordal of license must also be renewed simultaneously with the renewal of the trademark. The continuation of the license will be endorsed on the renewal certificate to be issued.