Industrial Property & Intellectual Rights

Trademark

Trademarks are words, logos and slogans identifying the goods or services of a company. Registering a trademark ensures to protection of rights and prevents other companies to use identical or similar trademarks which are in same or similar goods and/or services classes.

Trademarks can be renewed indefinitely in periods of ten years, so trademark can be protected as long as desired.

The protection of rights greatly effects the success of the company in the market. As PARAGON, we are aware of the importance of the presence of a company in their own market. Our trademark attorneys are adequate in all aspects of Turkish trademark law, and competent for preparing, drafting, filing and litigating of trademark applications with the specialists in their field in Turkey.



SERVICES IN TURKEY

  • Searching availability of trademark
  • Filing trademark applications
  • Trademark registrations
  • Trademark oppositions
  • Litigation
  • Consulting for trademark infringement cases
  • Consulting for trademark infringement evaluations
  • Filing a lawsuit against trademark infringement
  • Strategy management regarding trademarks
  • Trademark registrations, Community Trademark Registrations (OHIM) (OHIM procedures are conducted over local agents in EU member states) and International Registrations in the scope of the Madrid Protocol (WIPO)
  • Searching trademarks to identify details of trademark applications and registrations in home country or abroad
  • Searching official bulletin for similar or identical trademark for sake of trademark protection

SERVICES IN EUROPE

The Community Trademark is accepted in all member states of European Union. We, as PARAGON, conduct all procedures of Community Trademark from application to registration including opposition and lawsuit over local agents in EU member states.

WORLDWIDE SERVICES

Our trademark attorneys also conduct trademark application and registration procedures and provide international protection in scope of the Madrid Protocol. Our broad network enables us to provide trademark services throughout the world.

THE INTERNATIONAL AGREEMENTS TO WHICH TURKEY IS A PARTY

TREATY

SIGNATURE

INSTRUMENT

ENTRY INTO FORCE

Paris Convention

 

Accession: August 6, 1925

October 10, 1925

Madrid Protocol

 

 

Accession: October 1, 1998

January 1, 1999

Nice Agreement
Concerning the
International
Classification of
Goods and Services
for the Purposes of
the Registration of
Marks

December 18, 1958

Accession: October 1, 1995

January 1, 1996

Vienna Agreement
Establishing an
International Classification of the
Figurative Elements
of Marks

 

Accession: October 1, 1995

January 1, 1996

Trademark Law
Treaty

October 28,
1994

Ratification: October
1, 2004

January 1, 2005

Singapore Treaty on
the Law of
Trademarks

March 28,
2006

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THE LEGAL FRAMEWORK

NAME ENTRY INTO FORCE
Decree-Law No. 556 June 27, 1995
Implementing Regulations for Decree-Law No. 556 November 5, 1995
Amendment on Implementing Regulations for Decree-Law No. 556 April 9, 2005
Law No: 4128 November 7, 1995
Law No: 5194 June 25, 2004

Decision of constitutional Court regarding the penalties

July 5, 2008
Law No. 5833 January 28, 2009

SIGNS THAT CAN BE REGISTERED AS A TRADEMARK OR SERVICE MARK

A trademark distinguishes the goods and services of the company from others and may comprises any kind of signs which are symbolized by words such as names, designs, shapes, letters or numbers. The trademarks should be suitable for publishing or printing.

SOUND MARKS

The sound marks are the sounds which are associated with the goods or services of a certain company. In scope of Turkish Decree Law No. 556, trademarks consisting of “sounds” are not protected even if the musical notes symbolizing the “sounds” graphically are registrable as trademark or service mark in Turkey. The first sound mark has been registered in Turkey as a jingle of one company in 2007.

3 DIMENSIONAL TRADEMARKS

According to the Turkish Decree Law No. 556, the registration of the product or packaging is possible. However, the registration of the product or the packaging does not grant exclusive rights.

GUARANTEE MARKS

It is stated in the Turkish Decree Law No. 556 that a guarantee mark, under the control of the proprietor of the mark, serves the purpose of the guaranteeing the common characteristics of the undertakings, production methods, geographical sign and quality of those undertakings. The registrant of the guarantee mark or a company economically related on the registrant is not authorized to use the guarantee mark on their products or services. For instance, TSE (Turkish Standards Institution) can not use own TSE certificate for the Turkish Standards Institution. The entity who claims the title of mark should file the application of the guarantee mark. The certification function of the certification marks which is performed by the Guarantee Marks has no separate protection.

COLLECTIVE MARKS

It is cited in the Turkish Trademark Law that collective mark is a mark used by a group of undertakings of producers or traders or providers of services. Collective mark serves the purpose of distinguishing the goods and services of the undertakings belonging to the group from the goods and services of the other undertakings. The associated entities who act together for registration should file the application of the collective mark. The owner of the collective mark is able to use collective mark with their own goods or services in Turkey. According to the Article of the Turkish Decree Law No. 556, when filing an application for registration of a guarantee or a collective mark, a regulation specifying the ways and means of using the mark must be filed. The rules must be legalized before the Turkish notary according to the regulation of the Turkish Trademark Law. According to the Turkish Decree Law No. 556, technical regulations can not be altered unless approved by the Turkish Patent Institute. If the filed rules are not in accordance with the Turkish Decree Law No. 556, the Institute may request the rules to be changed properly. If the changes are not appropriately completed in 6 months, the application for the guarantee or collective mark is regarded as abandoned.

FILING A TRADEMARK APPLICATION

According to the Turkish Decree Law No. 556, the protection conferred by this law is available to natural and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Turkish Republic, or to the persons who have application rights resulting from the terms of the Paris or Bern Conventions or the Agreement Establishing World Trade Organisation.

FILING ONE TRADEMARK APPLICATION FOR BOTH GOODS AND SERVICES CLASSES

It is possible to multiple class trademark application which covers goods and/or services. For the trademarks to be filed according to the Turkish Decree Law No. 556, the Nice Classification will be applied.

FILING REQUIREMENTS

  1. Name, nationality and complete address of the applicant(s);
  2. List of goods and/or services accordance with Nice Agreement (it is possible to file multi-class applications);
  3. Sample of mark (min 5x5 cm, max 8x8 size);
  4. In case of priority claim:
    • Priority date, country and serial no.
    • Certified copy (copies) of the priority application(s) (term: within 3 months after the filing date;
  5. Power of attorney is to be filed (notarization and/or legalization are not being required except the withdrawal of the trademarks or the cancellation of trademark registration).
  6. The original receipt documenting the payment of the application fees (application fees only change in respect to number of classes, are not change according to the type of the trademarks such as verbal or graphic marks, color or black/white marks.)
According to the Turkish Decree Law No. 556, the documents which have not been filed together with the trademark application (except priority documents) have to be filed within 2 months from the notification of the official action.

CLAIMING AND VERIFICATION OF THE PRIORITY

It is possible to request the priority right on a trademark in course of the trademark application in Turkey. However, if the priority right certificate of the trademark is not submitted within 3 months from the date of the application, it is not possible to use the advantage of the priority right. Moreover, according to the Turkish Decree Law No. 556, natural or legal persons who have displayed the products or services on which the trademark is applied, at national or international exhibitions in Turkey or at official or officially recognized national or international exhibitions in the states party to the Paris Convention, may claim a right of priority for registration of the trademark in Turkey if the application for priority is filed within a period of six months from the date of the first display of the products.

USING THE REGISTERED TRADEMARK

It is stated in the Turkish Decree Law No. 556 that where the trademark has not been put to use without a justifiable/legitimate reason within a period of five years following the registration or where the use has been suspended during an uninterrupted period of five years, the trademark shall be repealed. The following shall be understood to constitute use: a) use of the registered mark in a form differing in elements which do not alter the distinctive character of the trademark, b) use of the trademark on goods or their packaging solely for export purposes, c) use of the trademark with the consent of the proprietor, d) importing of the goods carrying the trademark. In short, if the trademark has not been used in 5 years after the registration without any legitimate reason or is pendent for 5 years, it is assumed that the trademark is abandoned and may be nullified by court.

INVALIDITY OF A TRADEMARK

According to the Turkish Decree Law No. 556, a registered trademark shall be declared invalid by the court in following cases:
  • Where in breach of Article 7, (However, the action regarding well-known trademarks as specified subparagraph (i) of Article 7 has to be instituted within five years from the date of registration. If there is bad faith time limit shall not apply.)
  • Where in breach of Article 8, (However, regarding the proceedings instituted under the last paragraph of Article 8, if the previous right holder has not used his trademark within the two years after the expiry of the period of protection it will not constitute a reason for invalidity.)
  • Where in breach of Article 14, (However, serious use between the date of instituting of the proceedings and the expiry of the years shall not constitute a reason of invalidity. If use has been made upon realisation that proceedings are to be instituted, in such a case the court shall not take into consideration the use within three months prior of the institution of the proceedings.)
  • d) Where the trademark has become generic in respect of the goods or services by the acts of the proprietor of the trademark,
  • Where, as result of the use made by the proprietor or by the person authorised by him, there exists a likelihood of confusion on the part of the public as to the nature, quality, place of production and geographical origin in respect of the goods or services it is registered,
  • Where used in breach of Article 59, Where the invalidity is involved only for some of the products or services, partial invalidity shall be ruled with respect of those products and services.

RESPONSE TO OFFICE ACTION

The responses are provided against all kind of actions of the Turkish Patent Institute such as registrations, oppositions, irregularity report, etc. According to the Turkish Decree Law No. 556, the term of 2 months is given for this kind of explanations.

PUBLICATION

According to the Turkish Decree Law No. 556, an application for registration of a trademark which has complied with the application conditions and has not been refused due to the lack of conditions of filing shall be published in the Official Trademarks Bulletin of the Turkish Patent Institute. Third parties can file an opposition to the registration of the trademark within 3 months from the publication date of the Official Trademarks Bulletin in Turkey.

OPPOSITION

An opposition to the registration of the trademark within 3 months from the publication date of the application.

The opposition is examined by the Turkish Patent Institute (T.P.I.) according to

  • the absolute grounds for refusal and relative grounds of refusal;
  • priority right conditions; and
  • the supporting documents and other formal requirements.

The same process is applied for the international trademark registrations.

According to the Turkish Decree Law No. 556, any natural or legal person or any group representing manufacturers, producers, suppliers of services, traders or consumers may submit to the Institute their written observations that the trademark does not conform to the registration requirements following the publication of the trademark application. However, they shall not be parties to the proceedings before the Institute.

APPEAL

According to the Turkish Decree Law No. 556, any party adversely affected by a decision of the Institute may appeal. If the appeal is not found acceptable by the related department, the appeal shall be forwarded to the Re-examination and Evaluation Board by the department without comment as to its merits.

PROTECTION TERM

A trademark is protected for ten years period from the date of filing of the application. Registered may be renewed for further periods of ten years.

RENEWAL

The renewal must be filed and the renewal fee must be paid within a period of six months before the last day of the month in which the protection ends. According to the Turkish Decree Law No. 556, in failing this deadline, the request may be submitted within a further period of six months from the day referred to in the previous sentence upon payment of an additional fee. Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be entered in the registry.

IMPLEMENTATION OF NICE CLASSIFICATION SYSTEM IN TURKEY

Turkey is adherent to the Nice Classification System and has applied the 10th edition since January 28, 2012. 45 classes are implemented for the trademark applications and registrations, and the classes 1 to 34 classify the goods and classes 35 to 45 classify the services. It is possible to make multiple class applications which comprise both goods and services.

TRADEMARK SEARCHES IN TURKEY

The search of similar and/or available trademarks in Turkey may be conducted either officially or privately. The official searches are conducted by the Turkish Patent Institute and results are obtained within 15 workdays. On the other hand, unofficial results can be obtained within a week. However, the applications that are under prosecution (has not been published yet) are not covered in this process, because these applications are confidential to the Turkish Patent Institute.

DEVICE TRADEMARK SEARCHES

Turkish trademark searches for the device trademarks are not possible to trace in database system of the Turkish Patent Institute.

COMPANY NAME SEARCHES IN TURKEY

Company name searches are conducted in online database of the Turkish Patent Institute and our own database search system. T.P.I.’s database provides information of the all published trademarks.

CHANGE OF STATUS

If there is a change of name or address, corporation, merger and assignment procedures, the Turkish Patent Institute will apply all the status changes of the trademark owners to all trademarks which are indicated in the petition either pending or registered. Therefore, submitting one petition and the necessary documents for one trademark will change all the records of the all the Turkish trademarks which belong to the same owner.

RECORDAL OF CONTINUATION OF THE LICENSE

According to the Turkish Decree Law No. 556, rights over a registered trademark may be licensed for some or all of the goods and services for which it is registered. Requesting for recordal of license is possible for the pending trademarks. However, the recordal of license is completed when the trademark is registered.

INTERNATIONAL TRADEMARKS

The trademark rights acquired in Turkey as of international registration are under protection in accordance with the Turkish Decree Law No. 556 in the same way as the national registered Turkish trademarks. The protection is in effect starting from the day International registration is valid, according to the decree law. If protection of the International Registration for Turkey is rejected, WIPO must be informed within 18 months from the publication date. If the trademark is accepted in Turkey, Turkish Patent Institute sends WIPO the Statement of Grant of Protection in this given time.