眾律國際法律事務所

Trademark system in Turkey

Introduction:

Language: Turkish

Capital: Ankara

Area: 783,356 km2

Population: 79,814,871 (2016)

Currency: Turkish Lira (TRY)

Religion: Muslim (99.8%) Christian (0.2%)

Geographical situation: transcontinental country in Eurasia, bordered by eight countries: Greece and Bulgaria to the northwest; Georgia to the northeast; Armenia, the Azerbaijani exclave of Nakhchivan and Iran to the east; Iraq and Syria to the south.

International treaty membership:

WIPO Copyright Treaty (November 28, 2008)

Trademark Law Treaty (January 1, 2005)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (January 1, 1999)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (January 1, 1996)

Patent Cooperation Treaty (January 1, 1996)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (January 1, 1996)

Convention Establishing the World Intellectual Property Organization (May 12, 1976)

Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (August 21, 1930)

Paris Convention for the Protection of Industrial Property (October 10, 1925)

Legislation:

In Turkey Trademarks are registered and protected according to the provisions of the DecreeLaw No. 556 Pertaining to the Protection of Trademarks.

Government Institutions:

Directorate General for Copyright, Ministry of Culture and Tourism

Type of trademark:

All kinds of signs such as words, including personal names, designs, letters, numerals, the shape of the goods or (of) the packagings, sounds, colors, the requirement of capability to be represented graphically and reproduced by printing is removed in view of existing electronic means, in order to pave the way for motion marks.

Collective and well known marks can also be registered.

Not registrable:

Absolute ground for refusal:

-  Trademark is identical to a prior trademark registration.

-  trademarks which consist exclusively or whose principal element consist of signs or indications which serve in trade to indicate the kind, characteristics quality, quantity, intended purpose, value, geographical origin, or designate the time of production of the goods or of rendering of the service or other characteristics of goods or services

-  trademarks which consist exclusively or whose principal element consist of signs and names used to distinguish specific groups of craftsmen, professions or tradesmen or have become customary in the current and established practices of the trade

-  signs giving substantial value or its shape to the product which shape is a result of the nature of the concerned product or is conditioned by the necessity of obtaining a given technical result.

-  trademarks which are of such a nature as to deceive the public, such as to the nature, quality, place of production or geographical origin of the goods and services

-  trademarks which contain refer to religious symbols and values,

-  trademarks which are contrary to public order and to accepted principles of morality

-  Trademark who are identical to Well known Trademark

Application content:

An application for registration of a (trade/service) mark must be filed with the following:

-  a petition, the form and contents of which specified in the Implementing Regulations, including information pertaining to the identity of the applicant,

-  a representation of the (trade/service) mark suitable for reproduction,

-  a listing of product or services in respect of which the (trade/service) mark shall be used,

-  the original of the receipt documenting the payment of the application fee,

-  the original of the receipt documenting the payment of the class fee(s),

-  a power of attorney, where an agent is appointed,

-  a signature circular where the applicant is a legal person,

-  a certificate attesting the trading (business) activity of the applicant.

The application fee must be paid at the time of filing in order an application for the registration of a trademark to be valid. For the registration of each trademark a separate application needs to be filed.

Application process:

The registration period of a trademark is approximately 8-12 months and as different steps in the process.

Formal examination:

Institute shall examine whether the application complies with the conditions required for application, and if there is any formal deficiencies.

Then the application will be published in Official Trademark Bulletin, allowing third part to make an opposition within two months following the publication.

If after the formal examination, the application is refused, the applicant may lodge an appeal to the Institute within two months.

Where an application shows no deficiencies or its deficiencies have been remedied or against which no opposition has been raised within the prescribed period or the opposition raised has been definitely refused shall be entered in the Register. The applicant shall receive a “Trade/Service Mark Certificate of Registration”.

Refusal:

The application shall be refused if:

-  the applicant is not able to provide all the required document.

-  A third person has a priority right

-  The trademark doesn’t meet the criteria of trademark’s application written above.

-  The application is made in bad faith.

-  If the mark applied is a well known mark, and the applicant is not the right’s owner of this well known mark.

Rights of exploitation and related delay:

A trademark is registered for a period of ten years from the date of filing of the application. A Registration may be renewed for further periods of ten years.

The application for renewal shall be filed and the renewal fee paid within a period of six months preceding the last day of the month in which the term of protection ends. In failing to meet this deadline, the application for renewal may be filed within a period of six months subsequent to the last day of the month in which the term of protection ends subject to the payment of an additional fee.

The proprietor of a trademark shall be entitled to prevent all third parties not having his consent from using the trademark for identical or similar goods and services, especially if it can create confusion for consumer.

The right holder is also allowed to do transfer, license and levy of execution.

Transfer:

A registered trademark may be transferred in part of or all of the goods or services for which it is registered.

Transfer's conditions:

An assignment of a registered trademark shall be wrote and signed by the parties to the contract, except when it is a result of a court decision. Contracts otherwise are considered to be void.

Where the nature of the transfer is such to deceive the public as to the nature, quality, geographical origin of the goods and services in respect of which the (transferred) trademark is registered, the Turkish Patent Institute shall not register the transfer unless the successors agrees to limit the registration of the trademark to goods or services is not likely to deceive the public.

On request of one of the parties a transfer shall be entered in the register and published. As long as the transfer has not been entered in the register, the parties cannot invoke the rights arising from the registration of the trademark against third parties in good faith.

Certification:

Where an application shows no deficiencies or its deficiencies have been remedied or against which no opposition has been raised within the prescribed period or the opposition raised has been definitely refused shall be entered in the Register. The applicant shall receive a “Trade/Service Mark Certificate of Registration”.

The Register entry shall include; date and number of registration of the trademark, representation of the trademark, application date, the list of the goods or services in respect of the trademark, classification of the goods and services, the name and nationality of the proprietor of the trademark and agent’s name if applicable, title, address and country of incorporation of the legal person, statue changes relating to the trademark and to the rights on the trademark as well as other particulars specified in the Implementing Regulation.

Withdrawal and cancellation:

If, within a period of five years following the registration, the trademark has not been put to use without a justifiable/legitimate reason or if the use has been suspended during an uninterrupted period of five years, the trademark shall be repealed.

Trademark registration can be cancelled, after opposition if a third person prevail that he has right on this trademark. (Similarity, priority, well known mark)

A trademark right shall terminate upon:

• the expiry of the term of protection and non-renewal within the prescribed period, 
• the surrender by the proprietor of a trademark of the trademark right

A trademark application may be withdrawn by the applicant before it is registered.

Customs:

Right holder shall apply to Custom for seizing infringing goods, describing goods. ( the all process is done online, which is faster and easier to track for the applicant.)

The application will be approve within 30 days and notify by email.

Customs authorities, while being exported or imported, shall withhold as a precautionary measure (seizure) the products which have infringed the rights of a trademark.

The withholding measure employed by the customs authorities shall cease to have effect if proceedings are not instituted at the special court or preventive injunction is not obtained from the court within ten days of the withholding.

If the suspected goods are convinced of being counterfeit they will be destroyed by the customs.

Sources:

WIPO.int:

DecreeLaw No. 556 Pertaining to the Protection of Trademarks.

Turkey customs code.