23/11/2011

TURKEY - Change of Practice Regarding the Registrability of Servicemarks for Retail Services

The Turkish Patent Institute has revised its practice regarding the registrability of servicemarks in respect of retail services in particular with regard to the type of the concerned retail activity. The change follows the developments in the case law of WIPO Nice Classification Experts Community practice on the interpretation of services commonly referred to as  “retail services”. In its decision, the Turkish Patent Institute also refers to “Praktiker” decision dated July 5, 2005 (Case C-418/02), wherein the European Court of Justice rules that the "sales" as such is not a service activity in itself as it does not relate to “bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods“ but  rather relates to "bringing together variety of goods for the purpose of presenting the same to consumers”.
According to previous practice, Class 35 was generally described as “Grouping of various goods for clients so that they can better see and buy them (the above mentioned services may be provided by means of retail, whole sale stores, electronic media, catalogues and similar other methods)…” which was used to provide a wide coverage for servicemarks without limiting them to determined group of services and goods. Unter the earlier practice the applicants were specifically required "not to specify"any goods or group of goods, whereby the description of "retail services" of applications with specification of such goods were ex-officio amended by the Turkish Patent Institute. As a consequence, if a trademark was already registered in class 35, no applicant was able to register an identical or confusingly similar trademark for the same services even if both marks deal with retailing and sale of totally different goods.
From now onwards, on the basis of its new practice, the TPI may accept the co-existence of identical or similar marks in class 35 in the name of different owners as long as details are provided with regard to the goods or types of goods to which those services relate. What is required is a reference to the goods or type of goods sold at retail in order to distinguish a mark from a previously registered one. Therefore, if a trademark owner has registered the servicemark for retail services in respect of specific goods, it will be possible for other servicemark owners to register the same servicemark for retail services in respect of differing goods. Conflicts between trademarks claiming retail services in respect of different goods will continue to be assesed by the TPI according to Articel 8 on the relative grounds of refusal.
On basis of the its revised practice, the TPI will allow the co-existence of identical or similar marks in name of different holders in class 35, as long as it is specified for which goods or type of goods, which may be specified by also referring to the field of activity such as "good, textiles, automative, electronics, etc." the retail services relate to. Consequently in case you have registered your mark for various goods under the retail services in class 35 for specific goods it might be possible for another trademark holder to obtain a registration for an identical or similar mark for retail services for a different type of goods, which may be specified by also referring to the field of activity such as "food, automobiles, textiles, electronics etc.". Obviously, conflicting marks for retail services indicating the type of goods, will be examined by the Institute according to the currently applied absolute and relative grounds of refusal. We do advise our clients to apply for a new registration in class 35 in which it is clearly stated for what type of goods or specific products the retail services relate to.
For detailed information and reaching the published Guidelines as well as English translation of the official Statement dated October 19 pertaining to the revised practice in respect of class 35, please click on the link Library / Informative Documents.
We would be pleased to reply your questions in this regard.