IP Topics & ArticlesTen Tips For Protecting Your Mark

Ersin Dereligil and Kemal Yamankaradeniz of Destek Patent explain the importance of searches, use and office responses when protecting trade marks in Turkey

Ten tips for protecting your mark

Turkey receives almost 10,000 trade mark applications every month, and more than 55% of them obtain registrations within an average of 18 months. With these filing numbers, Turkey is leading the European Trademark Filings League, outdistancing England, Germany, and France for the last two years. Given these numbers, and in the context of an emerging market in a critical geographical location, trade mark applicants need to arm themselves with intelligent and efficient strategies. Before the tips, it would be good to start with an overview of Turkish trade mark legislation and the procedural stages of trade mark prosecution. Further information about trade marks statistics and recent draft law is given at the end of the article. Turkish trade mark legislation The first regulation of trade marks in Turkish law, the Alameti Farika Act, was issued in 1871, making Turkey one of the earliest countries to do so in the world. Although it was followed by a few other regulations and amendments, the biggest step forward was taken after the foundation of the Turkish Patent Institute (TPE), with the enactment of the present Trademark Decree-Law 556 in 1995 and the Customs Union between Turkey and the EU.

This was subsequently amended by Laws 4128 and 5194, and most recently on January 28 2009 by Law 5833. A new IP law is expected to be published soon to overcome some of the deficiencies in the present legislation. Non-registered trade marks are protected under the provisions of the Turkish Commercial Code concerning unfair competition. Turkey is a member of the Paris Convention and TRIPs, and so complies with the requirements for the protection of trade marks in Turkish law. Turkey’s possible future accession to the EU, combined with moves towards the global harmonisation of IP protection, is now the key factor in working towards Turkey’s next IP legislation. With regard to trade marks, Turkey is a party to the:

  • Paris Convention on the protection of industrial property (1925);

  • Nice Agreement on the international classification of goods and services of marks (January 1, 1996);

  • Vienna Agreement on the international classification of the figurative elements of marks (January 1 1996);

  • Protocol relating to the Madrid Agreement (January 1 1999); and

  • Trademark Law Treaty (January 1 2005). The Singapore Treaty on the Law of Trademarks was signed on March 28 2006, but is not effected yet.

  • The Singapore Treaty on the Law of Trademarks was signed on March 28 2006, but is not effected yet. Procedural overview The protection period for a registered trade mark is 10 years. It should be renewed every 10 years for the extension of protection. Both goods and services can be included in one application for up to 45 classes, the last 11 of which are for services, in accordance with the 10th edition of the Nice classification. The period from filing to registration takes 15 to 18 months for a straightforward trade mark application.

    It is a regular practice of the TPE to examine a trade mark application on both absolute and relative grounds within six to eight months of its filing date. If an application is rejected, the applicant can appeal to the TPE’s Re-evaluation and Examination Board, with a further appeal to the specialised IP court in Ankara, and to the Supreme Court if necessary. After granting the examination, it will be published for the opposition of third parties for three months in the Official Trademark Bulletin and then registered. Registered trade marks can be cancelled only before the specialised IP courts. Ten tips for protecting your mark

    1.First-to-use country

    Turkey is a so-called first-to-use country, that is, trade mark rights can be established through the use of a mark. Any person or entity which first uses a trade mark in commerce has superior rights to one who later registers the mark. Searches are therefore far more important since a prior user could later challenge and invalidate a later application through opposition before the TPE or a later registration before the Court. However, registration is still strongly recommended in order to secure it on the trade mark registrar and enforce trade mark rights more efficiently. It is also presumptive evidence of the validity of the mark and the owner’s right to use that mark.

    2. Obligation of use

    Where the trade mark is not used within a period of five years from the registration date without a valid reason or where the use of the trade mark is discontinued for an interrupted period of five years, the trade mark can be cancelled provided that a third party files a case based on non-use before the court. Therefore, it is not sufficient to register a trade mark but also use it in the Turkish market. For this purpose, it is not required to file evidence of use to the TPE. Valid reasons for non-use may be an extraordinary governmental situation such as a trade embargo, war, or product/ market-dependent events such as the prolongation of formalities for marketing approval, allowance, authorisation or licence negotiations.

    3. Bad faith and copycat registrations

    The most frequently encountered problems that trade mark right owners complain about in Turkey are bad faith trade mark registrations and uses bearing those marks in the market. In addition, many trade mark registrations are filed by the business partners or Turkish distributors of foreign companies without the consent of the true rights owner abroad. In the absence of an adequate trade mark watch service in Turkey and, thus, an opposition against them in time, there is no administrative or cost effective solution to invalidate such marks. A legal invalidation action before the specialised IP court is necessary, which requires time and incurs proceeding costs.

    4. Over-broad trade marks

    Many applicants want broader trade mark protection so as to include non-marketed or would-not-be marketed goods or services. More than one third of applications are filed for two or more classes of goods or services, and most one-class applications include almost all goods or services in the specified class. This naturally leads to the dissatisfaction of good faith applicants, an increase in the number of oppositions against published trade mark applications and longer official examination periods. Therefore, registering a trade mark in time is crucial

    5. Dealing with trade mark rejections

    Considering that more than 20% of trade mark applications are initially rejected by the Turkish Patent Institute based on absolute grounds and the existence of earlier trade mark rights, and there is only one chance to respond it through an appeal before the TPE, applicants should be wellprepared for their responses and evidentiary documents. Once such an appeal fails, it is only possible to initiate a civil action against the TPE before the courts, but new arguments and documents cannot be added into the case file. Also of importance is the timing of two months from the date of rejection or, for international applications, from the notification date from WIPO to the applicant. This period cannot be extended. If a rejection is based on likelihood of confusion in view of prior registrations, the earlier use argument cannot be accepted by the Institute and the applicant should seek to uphold their rights before the courts. The only exception is for wellknown trade marks. However, rejections of trade mark applications that consist exclusively of signs or names indicating the kind, characteristics, quality, quantity, purpose, value, geographical origin or other characteristics of goods or services may be overcome if distinctive character, prior and frequent use of the trade mark and international reputation are proved.

    6. Letters of consent

    Letters of consent, coexistence agreements or any authorisation for use are not acceptable in order to overcome official rejections based on earlier trade mark rights unless the trade marks indicated as a ground for refusal have been withdrawn for the goods and services in conflict.

    7. Grace periods for renewals

    The protection period for a registered trade mark is 10 years and should be renewed every 10 years for the extension of protection. The renewal period of a trade mark begins six months before the expiration date. Afterwards, they may also be renewed within six months by paying a fine. As a noteworthy regulation in the Turkish Trademark Act, it has also been defined that, for a period of two years from the termination of the protection of a trade mark for failure to renew, another identical or similar trade mark application for identical or similar goods or services shall be refused where an objection is raised (with necessary evidences proving that the non-renewed trade mark is kept in use in the meantime). In such a case, a grace period of two years is still allowed for the trade mark owners to re-file their lapsed trade mark by filing a new trade mark application, introducing a priority right for the trade mark holders.

    8. Rare re-institution of lost rights

    Re-institution of lost rights caused by missing due dates is almost impossible before the TPE. Almost all deadlines are non-extendible during the trade mark prosecution stages and no second official warning exists. Therefore, the trade mark attorney’s and applicant’s mutual attention and follow-up with the due dates are crucial.

    The trade mark attorney’s and applicant’s mutual attention and follow-up with the due dates are crucial

    9. Trade mark attorneys

    As a profession, the title of Turkish trade mark attorney was first introduced in June 1994 and the first qualifying exam was held in 1996. In trade mark filing and prosecution stages, good references by trade mark professionals are important, since a university bachelor degree and the passing of the written examination are two basic requirements to become a trade mark attorney, (no internship is required).

    10. Online database

    Free online trade mark file inspections and searches are available via the English website at www.tpe.gov.tr. It is useful to carry out basic identical word mark searches but it requires using Turkish letters without confusing with similar couples, such as c/ç, ı/i, o/ö, s/ş, u/ü. As per the file inspection, one can see all the basic information about the trade mark application, applicant and important dates in the database once it is published. However, (automatic) translation will be required for Turkish lists of contents of goods and services (except those from international applications) and all the prosecution history. However, it is not straightforward to understand the validity of a trade mark, since invalid trade marks will have not been regularly updated there.

    Some trade mark statistics

    The TPE received 111,120 trade mark filings in 2012. This is a 5.6% decrease on the 117,723 filings that the Institute received in 2011. But this decrease may be an exception due to the increased number of filings in class 35 in 2011 after the new regulation and change in office practice. The TPE registered more trade marks in 2012 than 2011, with certificates increasing 54% to 64,769 from 42,059 (see table and chart). Over the past six years, the number of domestic applications has almost doubled, reaching the 100,000 mark in 2012; those from foreign applicants came to a deadlock below 14,000 according to the official filing statistics. 

    A new draft law

    Despite the advanced legislative alignment that has been achieved, its implementation and enforcement still needs to be strengthened. The TPE has published a new draft law with amendments to the present industrial property rights laws, including the trade mark, patent and industrial design laws, and the law related to the TPE’s duties and personnel recruitment. The aim is to keep pace with the national programme to comply with EU regulations and recent developments worldwide, to eliminate the recent legal void in criminal enforcement after the invalidation of the related provisions in the laws by the Constitutional Court, and to ease the TPE’s present need for new staff. In fact, all the present decree-laws should have been converted into basic laws, with required additions and amendments, instead of the new IP law package. However, there are many other laws waiting in the queue to be debated at the Turkish Senate, and it is very difficult for them to be passed, as they include several hundreds of articles, each of which requires extensive discussion.

    This article first appeared in Ten tips for protecting your mark, a supplement to Managingip, published by Euromoney Legal Media Group. To view the issue in full, please go to www.managingip.com

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