The Turkish Patent and Trademark Office (the “Office”), which receives a trademark application, will ex officio examine the trademark application (regardless of whether it is a national application[i] or an international registration designating Turkey under the Madrid Protocol) based on the absolute grounds for refusal. If the Office identifies an absolute ground for refusing protection of the trademark application, it will issue a refusal decision accordingly. However, the respective decision may be challenged by an appeal.
Absolute Grounds for Refusal
The absolute grounds for refusal are examined by an examiner of the Trademark Department of the Office. The respective grounds for refusal, which are listed in article 5 of the Industrial Property Code (“Code”) numbered 6769, are as follows:
Signs, which cannot be trademarks according to article 4[ii],
Signs, which are devoid of any distinctive character[iii],
Signs, which consist exclusively or include as an essential element of signs or denominations which in the market denote the kind, type, characteristics, quality, quantity, intended purpose, value, geographic origin, or indicate the date of production of the goods or of providing of the services, or denote other characteristics of the goods or services[iii],
Signs, which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type[iv],
Signs, which consist exclusively of, or include as the main element of signs or indications used by everyone in the trade area or which serve to distinguish members of a particular professional, vocational or commercial group from others[iii],
Signs, which consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or other characteristics which are mandatory to obtain a technical result or give substantial value to the goods,
Signs, which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services,
Signs, which shall be refused under article 6ter of the Paris Convention,
Signs other than those covered by article 6ter of the Paris Convention, but which are of public interest, and which contain historical and cultural values, and emblems, badges or coats of arms for which the consent of the competent authority has not been given,
Signs, which contain religious values or symbols,
Signs, which are against public order or decency,
Signs, which consist of a registered geographical sign or which contain a registered geographical sign.
If the Office finds any absolute grounds for refusal listed above, it will issue a provisional decision refusing the trademark application (either in its entirety or partially).
Appeal Body, Deadline, Required Documents, and Official Appeal Fee
In accordance with article 20 of the Code, the provisional refusal decision of the Office can be appealed before the Re-examination and Evaluation Board (“Board”) of the Office. The decision on the appeal will be examined by the Board comprising of three members (i.e., the chairman of the Board and two trademark examiners of the Office who have no connection to the refusal decision of the Office being appealed).
The appeal must be filed within two months from the date of notification of the refusal decision (i.e., the notification received from the Office or in case of an international registration under the Madrid Protocol, the notification received from the WIPO).
The appeal petition along with any relevant evidence supporting the grounds for appeal is submitted through the online system of the Office. The language of the submission must be Turkish. If the original evidence is in a foreign language, its Turkish translation certified by a sworn translator will also be needed. However, it is not required to submit a power of attorney for the respective appeal, even though persons (natural or legal) who reside outside of Turkey may only be represented by trademark attorneys registered in Turkey.
The official appeal fee to be paid to the Office is TRY 370 for the year 2020.
Cancellation Action Before the Court
The decisions of the Board are final. If the appeal is dismissed (either in its entirety or partially), a cancellation action against the respective final decision may be initiated within two months from the date of notification of the respective decision. The cancellation action must be filed before the specialized IP courts in Ankara, namely Ankara Intellectual and Industrial Rights Civil Court. The respective court’s jurisdiction is exclusive.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 514 20 14
[i] If it is a national application, the examination based on the absolute grounds for refusal will be made upon the initial examination on formal deficiencies.
[ii] Article 4 of the Code reads as follows: “Trademarks may consist of any signs, such as words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor.”
[iii] If a trademark has been used in Turkey before the application, and through this use, has acquired a distinctive character in respect of the goods and services subject to the application, the registration of this trademark may not be refused based on this ground.
[iv] A trademark application may not be refused based on this ground, if a notarized consent letter of the prior trademark owner for the registration of the application is submitted to the Office.