Our knowledge, experience, and expertise are now available on the go.
My Tamimi App, a convenient new tool for anyone with an interest in the legal sector, from law students to General Counsel.Find out more
In this Article we highlight a recent update in relation to the practice of the Turkish Patent and Trademark Office (‘Turkish Trademark Office’), with regard to the Madrid Agreement Concerning the International Registration of Marks (‘Madrid Agreement’) and Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (‘Madrid Protocol’).
Turkey is a member of the World Intellectual Property Organization (‘WIPO’) Madrid System, which is based on the Madrid Agreement and the Madrid Protocol. Accordingly, international trademark applications filed through the Madrid System may include Turkey among the designated countries.
According to Article 5 of the Madrid Agreement and Article 5 of the Madrid Protocol, international trademark applications filed through the Madrid System and national applications filed directly before a local trademark office should be treated equally, especially in terms of grounds for refusal of the application. Accordingly, any application refused by any country under the Madrid System must correspond with the grounds of refusal that apply to national applications filed directly before the local trademark office, including a refusal based on the opposition to proceedings initiated by any third party.
However, until recently, the principle of equal treatment between local and international trademark registration applications was not applicable in Turkey in terms of filing a counter statement to a notice of opposition.
In a counter statement to a notice of opposition in Turkey, it is typical for an applicant to rely on the non-use defence whereby the applicant requires the opponent to prove genuine use of the trademark based on which the notice of opposition was filed. Such defence is possible if the opposition is based on the opponent’s prior similar trademark registration, under certain conditions.
The non-use defence is of significant importance because absence of genuine use of the opponent’s trademark, or the inability of the opponent to submit evidence proving such genuine use (whether directly by the opponent or through a licensing arrangement), could potentially lead to the opposition’s proceedings being dismissed.
As per the previous practice by the Turkish Trademark Office, the notification of opposition against the international trademark application was sent to WIPO after a decision was taken by the Turkish Trademark Office in the opposition proceedings, without giving the applicant of the international trademark application a chance to file a defence.
This practice practically deprived the applicant from defending its trademark application in the first opposition stage before the Turkish Trademark Office. Additionally, it made it almost impossible for the applicant to use the defence of non-use because this defence can only be used when filing a counter statement in the opposition proceedings before the Turkish Trademark Office, and cannot be filed later within the appeal before the Turkish Re-examination and Evaluation Board. As such, for a period of two months after publication in the trademarks journal the applicant should actively monitor the trademark application in Turkey, in order to respond to any opposition filed against the trademark application as otherwise, an official notification from the Turkish Trademark Office may not be forthcoming.
Recently, although without an official announcement by the Turkish Trademark Office, this practice changed. Now, prior to issuing a decision, the Turkish Trademark Office would notify the applicant to allow the applicant to defend the trademark application and use the non-use defence where applicable, equal to national applications. This new practice comes in line with other previous improvements in relation to trademark protection in Turkey. Such improvements include recognition of product groups within class 35 back in 2011 , and issuing Law No. 6769 of 2016 on Industrial Property (‘Industrial Property Law’). The Industrial Property Law came into force on 10 January 2017 and allows for the registration of sound and colour trademarks as well as improved trademark protection by including new criminal provisions for trademark infringements .
Disclaimer: This chat service should not be relied upon as a substitute for professional advice which takes account of your specific circumstances and any changes in the law and practice. No warranty is made as to the accuracy or completeness of the information provided via this service and no liability is accepted by Al Tamimi & Company Limited, its affiliates, partners or employees for any loss arising as a result of reliance upon the information provided.
Kindly accept the disclaimer to proceed to a live chat.
Thank you for your inquiry. We will connect you to one of our agents now.
Thank you for your interest in working with Al Tamimi & Company. Please click here to view our latest job openings.