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Trademark Law in Turkey

Writer:

Aktay

Date:

Tuesday, May 2022 16:44

Date Of Update:

Thursday, Jun 2022 15:59

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General Information

1. What is the trademark law legislation?

Trademark law in Turkey is governed by the Industrial Property Law (“Law”) numbered 6769 which entered into force on 10 January 2017 and superseded Decree Law numbered 556. The Law brought major changes to the trademark law and made it line with the EU regulations.

Turkey is also a signatory to international treaties mentioned in below;

  • Paris Convention for Protection of Industrial Property
  • Protocol relating to the Madrid Agreement Concerning the International Registration of Marks
  • The Agreement on Trade-Related Aspects of Intellectual Property Rights.

 Trademark Registration

2. What may and may not be registered as a trademark?

Trademarks must be capable of distinguishing the goods or services of one undertaking from other undertakings. The description of the trademark and signs that a trademark may consist of are regulated under article 4 of the Law. Any signs, words, personal names, figures, colours, letters, numbers or sounds, as well as the shape of goods or their packaging may be registered as a trademark.

On the contrary, the signs which are not clearly distinguishable, are contrary to public order and decency, comprise religious symbols, are generally used by everyone in a trade etc. may not be registered as a trademark are listed under article 5 of the Law.

3. What are the advantages of trademark registration?

The regulations regarding the trademark registration process are included in article 7 of the Law. Per this article, a trademark right is an exclusive right of the owner that can be claimed against anyone and is absolute.

In addition, any claims are seen before specialized Intellectual Property courts for registered trademarks.

Besides, the trademark right takes effect from the date of the registration application. The registration of a trademark is not obligatory for the owner. Unregistered trademarks are also protected under the Turkish Commercial Code’s unfair competition and relevant provisions. But absolutely, if the trademark is registered, there is a stronger protection according to the Law. Please not that, the trademark registered in Turkey is protected only in Turkey.

4. Who may apply for trademark registration in Turkey?

Persons who entitled to apply to Turkish Patent and Trademark Office (“TURKPATENT”) for trademark registration are regulated under Article 3 of Law as listed in below;

  • Citizens of Republic of Turkey,
  • Natural or legal entities domiciled or engaged in industrial or commercial activities within the borders of Republic of Turkey,
  • Persons who have the right of application according to the Paris Convention or Agreement Establishing the World Trade Organization,
  • According to reciprocity principle, persons whose citizenships are in states that provide Turkish citizens the protection of industrial property rights.

Application for the trademark registration can be made by the trademark attorney or the applicant. However, the applicants who are domiciled abroad must be represented by a trademark attorney.

5. What should consist trademark application?

Trademark application shall consist of;

  • Application form containing information on the identity of applicant,
  • Representation of trademark,
  • List of goods or services for which application is filed,
  • Information showing that the application fee is paid,
  • If the application has been filed for collective or guarantee trademarks, technical specifications,
  • If priority right is claimed, information showing that the fee of priority right claim is paid,
  • If letters other than the Latin alphabet are used in the reproduction of trademark, their transliteration in the Latin alphabet.

6. How is the registration process?

The application should be submitted through EPATS which is the electronic system of TURKPATENT. A trademark application may cover multiple classes. Trademark application fee is 380 TL for each class.

In case of a procedural deficiency, the applicant is given two months to correct the deficiency, and if the deficiency is not corrected, the application is cancelled. If there is an absolute ground for refusal as per the article 5 of the Law, the application could be rejected. In the absence of the deficiency and/or absolute grounds for refusal, the application is published in the Bulletin for two months. After the publication of the trademark application, only relevant persons can file oppositions regarding the trademark application. If there is no deficiency and/or opposition for two months, the registration certificate fee should be paid. After that, the trademark application will be registered. Following the registration process, the registered trademark will be published in the Bulletin. Trademark registration certificate issue about one months after the fee has been paid for the certificate. Its fee is 390 TL in 2022.

Absolute Grounds for Refusal

7. What are the absolute grounds for refusal of trademark registration?

The following signs set out below shall not be registered as trademark:

  • Signs which may not be trademark according to Article 4;
  • Signs which are devoid of any distinctive character;
  • Signs which consist exclusively or includes as an essential element of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of rendering of the services or other characteristics of goods or services;
  • Signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type;
  • Signs which consist exclusively or includes as an essential element of signs or indications used by everyone in the trade area or which serves to distinguish members of a particular professional, vocational or commercial group from others;
  • Signs which consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or other characteristics which is mandatory to obtain a technical result or gives substantial value to the goods;
  • Signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;
  • Signs which shall be refused pursuant to Article 6ter of the Paris Convention;
  • Signs other than those covered by Article 6ter of the Paris Convention but which are of public interest, and which contain historical, cultural values, and emblems, badges or escutcheons for which the consent of the competent authority has not been given;
  • Signs that contain religious values or symbols;
  • Signs which are contrary to public policy or to accepted principles of morality;
  • Signs which consist of a registered geographical sign or which contain a registered geographical sign.

Relative Grounds for Refusal

8. What are the relative grounds for refusal of trademark registration?

Oppositions may be based on the following relative grounds under Article 6;

  • Confusing similarity,
  • Unathorised application by a trade agent;
  • Genuine ownership based on prior and extensive use of the trademark;
  • Well-known status of trademarks;
  • Copyrights or other industrial property rights such as trade or domain names etc.;
  • Personal rights such as unauthorised use of a personal name or photograph;
  • Bad faith of the applicant.

Third-Party Opposition Process

9. How is the third-party opposition process?

An application in which all examination stages have been completed is published in the Bulletin. Oppositions regarding the published trademark must be filed within two months of the publication of the trademark application in the Bulletin. If there is no opposition for two months, the application is registered. The opposition fee is 250 TL in 2022.

10. How does the trademark owner overcome an opposition based on a third-party trademark?

TURKPATENT examine the dispute about the signs that are identical or indistinguishably similar to a registered trademark regarding the identical goods and services. Please note that pursuant to the Article 11/4 of the Law, “Goods or services shall not be presumed as being similar on the ground that they are in the same class and goods or services shall not be regarded as being dissimilar on the ground that they are in different classes.” After the examination, TURKPATENT decide the rejection or acceptance of the opposition. Applicants and persons who are affected by the TURKPATENT’s decision entitled to appeal within two months from the notification date of the decision.

11. May the trademark owner request the proof regarding the genuine use from the opponent?

According to the Article 19/2 of the Law, if there is an opposition based on the relative grounds and the trademark 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, then the trademark owner may request from the opponent to submit evidence proving that opponent genuinely used his/her trademark on the goods and services relating to the opposition.

In case the opponent fails to prove the geniune use during the five-years period 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, opposition shall be refused.

If the opponent proves that the trademark has been used only for some of the goods or services which are covered by registration, then the opposition shall be examined taking into account the goods or services whose use is proven.

In consequence of the examination, it may be decided that the trademark cannot be registered for some or all of the goods or services applied for, or the opposition may be refused.

12. Does a letter of consent prevent the rejection of the identical or indistinguishably similar trademark?

If the letter of consent from the prior trademark owner is avaliable, then a trademark application which is identical or indistinguishably similar to a registered trademark could be registrated. The prior trademark owner must be filled in a special form issued by the TURKPATENT as a letter of consent for each trademark application. The letter of consent must be notarised.

Renewal of Trademark

13. When should the trademark be renewed?

Protection of trademark registration starts from the application date and lasts a decade. The trademark can be renewed for further 10-year periods. After the renewal fee which is 1.280 TL in 2022 has been paid, the trademark owner renewal application must be filed within six months of the end of the 10-year period to the TURKPATENT with a receipt showing that the renewal fee has been paid.

Revocation of Trademark

14. Which situtations cause to revocation of the trademark?

Recovation of the trademark are regulated under Article 26/1 of the Law as listed in below;

a) The trademark has not been put to genuine use in Turkey in line with the goods or services which is registered or the trademark use has been suspended for an uninterrupted period within 5 years following the date of registration, the trademark shall be revoked, unless there are proper reasons for non-use.

b) Trademark becoming generic for the registered goods or services due to trademark owner’s actions or as a consequence of necessary measures not taken by the trademark owner,

c) Trademark misleading the public regarding the nature, quality or geographic origin of the registered goods or services as a consequence of the use by the trademark owner himself/herself or with the trademark owner’s consent,

d) In case of application of relevant persons, public prosecutors or the relevant public institutions on the grounds that the owner does not take necessary measures in order to prevent the continuous use of the collective mark or the guarantee mark contrary to the technical specification, the mark shall be revocated unless the said contrary use is corrected within the prescribed period.

15. Who can apply for revocation of the trademark?

Persons who have interests may request revocation.

16. How to apply for revocation of the trademark?

Revocation action can be filed before intellectual property courts (“IP Courts”). Please note that TURKPATENT will examine the revocation request from 10 January 2024. The revocation request shall be notified to the owner of the trademark. The trademark owner may submit his evidence and responses to the TURKPATENT within a month. In case an extension is requested within this one-month period, TURKPATENT may grant an additional one month. TURKPATENT decide whether the trademark revocate or not. This decision is prospective and could be appealed.

If the trademark have been used in order to prevent a revocation request, TURKPATENT does not take into account the usage of trademark within three months before the revocation request.

Invalidation of Trademark

17. Which situtations cause to invalidity of the trademark?

In case of the absolute and relative grounds mentioned above pursuant to the Article 5 and 6 of the Law, the invalidity of the trademark may be in question.

18. Who can apply for invalidation of the trademark?

Pursuant to Article 25/2 of the Law, persons who have interests, public prosecutors or relevant public institutions and organizations may request the court to decide on the invalidity of trademark.

19. How to apply for invalidation of the trademark?

Invalidation action can be filed before IP Courts. IP Courts decide whether the trademark invalidate or not. This decision is retrospective and could be appealed.

20. What is the loss of a right because of the acquiescence?

In case of a trademark owner has acquiesced in the use of a later trademark for a five-year period although being aware or should have been aware of this situation, trademark owner may not allege his/her trademark as an invalidation ground unless the registration of the later trademark is in bad faith.

Infringement of Trademark

21.  Which acts considered as an infringement of the trademark?

The acts considered as an infringement of the trademark are regulated under Article 29 of Law as listed in below;

  • using the trademark as set out in Article 7 without the consent of the trademark owner;
  • counterfeiting the trademark by using the trademark or a confusingly similar trademark without the consent of the trademark owner;
  • although being aware or should be aware that the trademark is counterfeited by use of the trademark or a confusingly similar trademark, to sell, distribute, put on the market in a different form, possess for commercial purpose, import, export the products carrying infringed trademark or to offer to make a contract related to this product;
  • broadening or transferring the rights given by the trademark proprietor through license to third parties without the consent of the trademark owner.

Civil Enforcement

22. Which court is authorized for the trademark infringement?

The Civil IP Courts where the plaintiff or its attorney reside are authorized. However, if there is not a specialized IP Court, Civil Court of First Instance is authorized.

23. What is the deadline for filling a trademark infringement action?

Trademark owner should file a trademark infringement action within two years as of being informed of the infringing acts and 10 years in any case.

24. What can be the main claims in case of trademark infringement for civil enforcement?

Main claims that the trademark owner can claim in case of trademark infringement are listed below;

  • determination of the trademark infringement and unfair competition caused by the counterparty by using the conflicting trademarks in the market,
  • prevention of the acts of the counterparty causing trademark infringement and unfair competition against us permanently,
  • destruction or recognition of property rights of the products, packages, advertisement materials, printed materials etc. bearing the conflicting trademarks,
  • blocking the access to the online platforms where the related infringement use takes place,
  • compensation of damages and loss of profit.

25. What are the consequences of the civil enforcement?

Judicial costs are more expensive than criminal prosecution. Also, finalization of the case takes between 2 and 5 years. There is no imprisonment for the infringer. Trademark owner can claim compensation for damages. In addition, preliminary injunction for seizure of the counterfeits can be also claimed. Trademark owner can claim preliminary injunction either within a main civil trademark infringement action or within an ex-parte preliminary injunction claim case.

Criminal Prosecution

26. Which court is authorized for the trademark infringement?

The Criminal IP Courts where the crime was committed are authorized. On the other hand, if there is not a specialized IP Court, Criminal Courts of First Instance are authorized.

27. What is the deadline for initiate a criminal investigation?

Trademark owner should initiate a criminal investigation within six months as of the occurrence/detection date of the conflicting unlawful act.

28. What are the consequences of the criminal prosecution?

  • Judicial costs are cheaper than civil enforcement.
  • Finalization of the case takes between 1 and 3 years.
  • Infringer can be sentenced to imprisonment up to 3 years.
  • Raid order for seizure of the counterfeits can be claimed.
  • Punishment of the defendant with imprisonment and/or judicial fine.
  • Destruction of the products, packaging, advertisement materials, printed materials etc. bearing the conflicting trademarks.

Appeal

29. Can applicants submit an appeal if the application is refused?

Applicants can submit an appeal against decisions of the TURKPATENT. Applicant should submit an opposition petition within two months as of the notification date of the decision. Appeal fee is 580 TL and it must be paid within two months.

30. How can be submitted appeal against IP Court’s decision?

The party can submit an appeal against IP Court’s decision within two weeks as of the notification date of the decision. The Regional Court of Justice re-examines the file. As a result of the examination, the decision might be found rightful or be revoked. The Regional Court of Justice might send the case to IP Courts or finalize the case without sending it back to IP Courts.

World Intellectual Property Organization (“WIPO”)

31. What is The World Intellectual Property Organization (“WIPO”) and its function?

WIPO is an organization established to ensure the protection of intellectual property rights in the international order. It was established in 1967 as a specialized organization of the United Nations.

In order to realize the international trademark registration, first of all, a registered trademark or a trademark application must be found in the relevant office of origin. The international trademark application is made to WIPO through the office of origin based on the registered trademark in question or the trademark application.

32. What are advantages of the international trademark registration system?

  • Ease of Application; to carry out the international registration of trademarks in more than one country with a single application, using a single language and for a single fee.
  • International Protection; it is to ensure that the changes to be made after the trademark is registered (address/nev/title/owner change, other dispositions such as appointment/removal of a proxy) are registered in the International Registry through a single and simple process.
  • Cost Advantage; with the Madrid system, trademark registration in each country has been prevented and the obligation to pay the attorney and official institution fees that must be paid in international trademark applications in each country has been eliminated.

33. Where are the international application fees paid and how are they calculated?

There are two types of fees to be paid for international trademark registration. One of these is the fee for notifying WIPO of the international application to be deposited in the Institution’s accounts or the savings related to the application, and the other is the fees for the international trademark application and other savings that must be paid to the WIPO account in Swiss Francs.

In order to calculate the fees to be paid to WIPO, the automatic calculation tool “Fee Calculator” on the WIPO website should be used.

34. What is the European Union Trademark?

The European Union Brand is a type of brand that is valid in all member states of the European Union. Inspection and registration systems are carried out by the European Union Intellectual Property Office (EUIPO), with its new name. European Union Trademark applications can be made directly to the European Union Intellectual Property Office, to the trademark-patent offices of the member countries of the Union or to the Institution within the framework of the Madrid Protocol.

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