In principle, according to Article 5/1(ç) of the Industrial Property Code numbered 6769 (“Code”) – one of the absolute grounds for refusal[1], trademark applications, which are identical or indistinguishably similar to an earlier application or registration, shall be ex-officio refused by the Turkish Patent and Trademark Office (the “Office”). However, if a letter of consent can be obtained from the owner of the relevant prior trademark, the Office shall not refuse such applications based on said article. In this brief article, we will be explaining the general concepts of the letter of consent under Turkish law.
General Notes on the Letter of Consent
The Office examines trademark applications ex officio in terms of absolute grounds for refusal. One of these absolute grounds for refusal is trademarks being identical or indistinguishably similar to each other in terms of marks and classes, as defined in Article 5/1(ç) of the Code.
However, with the consent of the prior trademark owner, an identical or indistinguishably similar trademark application may not be refused based on Article 5/1(ç). Article 5/3, which contains the regulation on this subject, indicates that “a trademark application may not be refused according to Article 5/1(ç) if a notarized document indicating the clear consent of the prior trademark owner for the registration of the application is submitted to the Office.”
In this context, the letter of consent obtained from the prior trademark owner provides authorization for the registration of an identical or indistinguishably similar trademark. Thereby, trademarks that are identical or indistinguishably similar to prior trademarks shall coexist.
The letter of consent, which can only be given as unconditional, can be submitted with the trademark application form to the Office, or in case of opposition to the trademark application, it can be submitted until a decision is issued on the opposition by the Office. Once the letter of consent is submitted to the Office, it cannot be withdrawn.
Required Documents and Information for a Letter of Consent
According to Article 10 of the Regulation on the Application of the Industrial Property Code, the letter of consent to be submitted to the Office must meet the following requirements:
The letter of consent must be issued in a signed form accepted by the Office and approved by a notary public.
The contact details of the parties and the trademark with the relevant goods and services must be provided in the letter of consent.
If the letter of consent is signed by an attorney before the notary public, the notarized power of attorney containing the authorization of the consent must also be provided to the Office.
If the consent form does not contain the requirements listed above, the applicant shall be given two months to correct the deficiencies. If said deficiencies are not corrected in due time, the request shall be deemed not made.
If there are exclusive license holders registered in the registry for prior trademarks, their written permission must also be submitted to the Office.
Please note that a letter of consent may only be issued for only one trademark application at a time. Therefore, it is not possible to submit a general letter of consent covering more than one trademark application.
[1] Detailed information on absolute grounds for refusal may be accessed here, in another one of our articles.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
Elif Koturoglu
Attorney at Law | Trademark Attorney
Evren Firat Goklu
Attorney at Law | Trademark Attorney