It is a regular and strict practice of the Turkish Patent Institute to examine a trade mark application on both relative and absolute grounds within six to eight months of its filing date. Accordingly, the Institute rejects ex-officio an application where the mark applied for is identical or very similar to a prior registration or application for identical or similar goods or services.
Without going into details of appeal procedures, it is notable that the Institute will not accept a letter of consent from the owner of a prior registration to overcome the rejection.
It is generally commonsense not to accept a letter of consent submitted where there are two identical marks for identical goods or services so as to avoid confusion among consumers and to preserve the public interest. However, there is a debate over the rejection of letters of consent where there are two similar but not identical marks for identical goods or services and even for different goods or services where registered well-known trade marks are considered.
A recent official decision illustrates the Turkish Patent Institute’s approach to this matter very well. To maintain the privacy of those involved, we will explain the conflict using hypothetical examples: TOUCH (prior registration, well-known trade mark) and TAUCH (new application) claiming the same goods. TAUCH was rejected based on (1) likelihood of confusion in view of the prior registration TOUCH and other three trade marks belonging to the same owner including TOUCH (Article 7.1-b of Trade Mark Decree Law number 556) and (2) the well-known protection of the same mark TOUCH (Article 7.1-ı).
During the appeal stage, the owner of the TOUCH mark provided a letter of consent to the applicant, which was filed at the Institute. The final rejection based on the well-known protection of the prior mark was overcome by accepting the letter of consent in that regard, but the trade mark application TAUCH could still not be registered based on likelihood of confusion in view of prior registrations.
Such a conflicting approach leads us to consider whether coexistence of a similar trade mark may be allowed in the near future in Turkey if there is a written agreement between the parties.
If the Institute rejects an application, the applicant can appeal to the appeal board of the Institute (the Re-evaluation and Examination Board), with a further appeal to the specialized IP court in Ankara and the Supreme Court if necessary.