Turkey has recently taken a parallel step to the famous “Praktiker” judgment of the European Court of Justice and the corresponding practice of European Union for the registration of trade marks for retail services.
It is henceforth possible to register a national trade mark for the retail services for specific goods, type of goods or field of business in Turkey with the amendment made in the official communication (Communication No: BİK/TPE:2007/2) concerning class 35, which came into force on October 19, 2011.
Before the present amendment, the services in class 35 were only registrable by the broad terms “the bringing together, of a variety of goods enabling customers to conveniently view and purchase those goods” but without allowing any reference to the same type of services for specific goods, type of goods, or field of business.
The recent amendment made it possible to provide details pertaining to the goods or types of goods to which those services relate, where required, while keeping the up-to-now practice applicable. To speak specifically, the applicants will be able to specify their requests for trade mark making an emphasis on “particular goods”, rather than using the broad terms “… of a variety of goods…”, as exemplified below:
bringing together of home improvement tools for the do it yourself sector enabling customers to conveniently view and purchase;
bringing together of foodstuff enabling customers to conveniently view and purchase;
bringing together of stationery enabling customers to conveniently view and purchase etc.
The following terms will be unacceptable as they are deemed unclear, obscure, and inexplicable:
The new practice paves the way for any requests to register trade marks of “the services for the specific goods or types of goods” concerning any identical or similar trademark previously registered with broad terms in class 35.
The rights of trademark holders derived from the prior registrations with the broad terms “the bringing together of a variety of goods…” are being reserved without any effect. Whereas, any request for amendment to make the broad terms specified or limited is not allowed.
The present holders of trademarks with the broad terms in class 35 is recommended to file new application(s) of the same trade mark(s) to obtain protection on the retail services as specifying the goods or type of goods. Otherwise, they will be vulnerable to or attacked by any third party applications under class 35 for the services of such specified goods or type of goods as trade marks of same or similar expressions for which the goods or type of goods are not specified and for which the goods or type of goods are specified will not be acknowledged for the first time as relating to the same or same kind of services.
Even though the current holders with broad terms has the right to file opposition to prevent the registration of any trademark application filed as being specified for the identical or similar trade marks, each case will be handled of its own nature by the Turkish Patent Institute. In this respect, the present owners of the trademarks with broad terms in class 35 are advised to at least monitor the potential applications with specified terms to be filed for the currently registered identical or similar trade marks in class 35 to get grasp of opportunity for filing opposition during the registration procedures as the TPI will not ex-officio refuse but will consider to accept or not these kinds of applications in view of the oppositions to be lodged after their publications.
Please do not hesitate to contact us for your specific questions on this amendment.