Once the Turkish Patent and Trademark Office (“Office”) has approved a trademark application[i] after its examination[ii], the respective application will be published in the Official Trademark Bulletin for third party oppositions. In this short article, we will be examining how the Turkish trademark law regulates the opposition proceedings.
Deadline for Opposition
The opposition against a trademark application in Turkey must be filed within two months from the date of publication of the respective application in the Bulletin. The opposition period cannot be extended.
Grounds for Opposition
In the opposition petition, the opponent can rely on one or more grounds listed either on absolute grounds or relative grounds for a refusal to prove that the respective trademark application should not be registered.
The absolute grounds and relative grounds for refusal are set out in the Industrial Property Code numbered 6769 (“Code”) in article 5 and article 6, respectively.
The absolute grounds for refusal are, in a general sense, related to the public interest. Even though the Office should ex-officio refuse the registration of the applications which violate the respective grounds, if such does not happen, third parties can claim the existence of any absolute grounds for refusal in the opposition proceedings. The full list of the absolute grounds for refusal may be accessed here, on another one of our articles.
The relative grounds for refusal are related to the earlier rights of the opponent. Unless the respective grounds are claimed in the opposition proceedings, they are not examined by the Office. Article 6 of the Code, which lists the relative grounds for refusal, reads as follows:
An application for trademark registration shall be refused upon opposition in the presence of a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered.
A trademark application for the registration of an identical or indistinguishably similar trademark filed by a commercial agent or representative in his own name without the trademark proprietor’s consent and without any justifiable ground shall be refused upon the trademark proprietor’s opposition.
If a right to a non-registered trademark or to another sign used in the course of trade was acquired prior to the date of application or the date of the priority claimed for the application for registration of a trademark, the trademark application shall be refused upon the opposition of the proprietor of that prior sign.
Trademark applications which are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of identical and similar goods or services.
A trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trademark due to the reputation that the earlier trademark has in Turkey; shall be refused upon the opposition of the proprietor of that earlier trademark.
An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright or any other intellectual property right of another.
An application for registration of a trademark identical to or similar to a collective mark or a guarantee mark with identical or similar goods or services, that is filed within three years following the expiration of the protection of the collective mark or guarantee mark due to non-renewal shall be refused upon the opposition of the previous right holder.
An application for registration of a trademark identical to or similar to a registered trademark with identical or similar goods or services, that is filed within two years following the expiration of the protection of the registered trademark due to non-renewal shall be refused upon the opposition of the previous trademark proprietor provided that the trademark has been used during this period.
Trademark applications filed in bad faith shall be refused upon the opposition.
Required Documents and Opposition Proceedings
The opposition petition along with the grounds for opposition and the relevant evidence supporting the respective grounds is filed through the online system of the Office. Persons, who reside outside of Turkey, may only be represented by trademark attorneys registered in Turkey. However, it is not required to submit a power of attorney for opposition against a trademark application. The official fee for opposing a trademark publication is TRY 160 in 2020.
If an opposition is filed within the deadline, the Office will notify the trademark applicant about the opposition and grant the applicant the right to file a response petition against the opposition within one month from the date of notification.
Please note that under certain conditions, if it is requested from the trademark applicant in the respective response petition, the opponent will need to prove its genuine use of its own trademark in Turkey. You may access our article on this subject from here.
The opposition is examined by an examiner of the Trademark Department of the Office based on the abovementioned opposition and response petitions. If the examiner concludes that the trademark application violates a ground for refusal, a decision refusing the registration of the relevant goods and services will be issued. Otherwise, the opposition will be dismissed. The decision on the opposition will be notified to the parties.
Appeal Before the Board and Cancellation Action Before the Court
The respective decision on the opposition can be appealed by either of the parties before the Re-examination and Evaluation Board (“Board”) of the Office. The deadline for the respective appeal is two months from the date of notification of the decision. The decisions of the Board are final. However, a cancellation action against the respective final decision may be initiated before specialized IP courts in Ankara, namely Ankara Intellectual and Industrial Rights Civil Court, within two months from the date of notification of the respective decision. 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] The respective application may be either a national application or an international registration designating Turkey under the Madrid Protocol. [ii] The examination will be made on the absolute ground for refusal. For a national application, an examination of formal deficiencies will also be made.