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A Guide to Turkish Trademark Office Action and Opposition System:
This guide is prepared to brief the colleagues worldwide about the Turkish Trademark Office Action and Opposition System. While it is very strongly recommended to always seek help of an IP Professional when faced with an opposition and/or Office Action, we believe this guide may help to answer some common questions.
For the purposes of this guide,
“Office Action” will be used to define Turkish Patent and Trademark Office’s (hereinafter “TurkPatent”) ex-officio decisions on absolute grounds of refusal.
“Opposition” will be used for “objections against a trademark application which has been published”.
Grounds for Office Actions and Oppositions:
Absolute Grounds of Refusal
Characteristics of absolute grounds of refusal decisions
Once a trademark application is filed, after the application is examined formally, it is evaluated ex officio by TürkPatent in terms of absolute grounds. If the examiner decides that it is eligible for registration, in other words if the examiner comes to a conclusion that there is no reason to reject it in terms of absolute grounds, it is published in the Official Trademark Bulletin. Otherwise it is refused as a whole or partially by the examiner.
List of the absolute grounds
The following signs set out below shall not be registered as a trademark:
I. Signs which may not be trademark according to Article 4 which states:
Trademarks may consist of any signs like 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.
Briefly, Article 4 lists the following criteria for a sign to be able to become a trademark:
a) Ability to distinguish goods and/or services of an entity from others
b) Ability to be clearly represented on the register in a way to determine the clear and precise subject matter of protection
II. Signs which are devoid of any distinctive character;
This ground is pretty self-explanatory. However, important notes to consider here:
- Acquired distinctiveness is an exemption for this ground. If the applicant is able to provide that the applied sign has acquired distinctiveness before the date of the application due to a continuous and extensive use which occurred over the course of many years, this particular ground can be overcome.
- Total distinctiveness of a sign will be subject to the evaluation. In accordance with BABYDRY decision of ECJ, multiple signs devoid of distinctive character can still result in a distinctive sign when combined. However a sign such as BACONCHIPS will be deemed as devoid of distinctive character since combination of the words still do not result in a distinctive sign.
- Evaluation will be made on the basis of perception of the sign by the relevant public. If the Office deems that relevant public may fail to perceive the sign as a distinctive trademark, the application will be refused based on this ground.
III. Signs which consist exclusively or includes as an essential element of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of rendering of the services or other characteristics of goods or services,
This ground is pretty self-explanatory and also very similar to second absolute refusal grounds (distinctiveness).
- Evaluation for this ground will still be conducted over the “total of the trademark” and on the basis of perception of the sign by the relevant public.
- It can be said that distinctiveness ground relates more to the sign while this particular ground relates more to the connection between goods and services and the sign itself.
IV. 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,
This ground is often confused with the Article 6/1; as 6/1, a relative ground, suggests likelihood of confusion between the trademarks will require refusal of the latter application. The difference between these grounds is that, Article 5/4 (or as commonly known in Turkish 5/ç) a more direct similarity between both signs and the goods&services will be sought which differs from the likelihood of confusion.
V. Signs which consist exclusively or includes as an essential element of signs or indications used by everyone in the trade area or which serves to distinguish members of a particular professional, vocational or commercial group from others.
Trademark applications which consist of signs that are widely used in daily life and in the field of trade are rejected in case there is a connection between the goods and services requested to be registered with the applied sign.
Since currencies and symbols of these currencies are intended to address the entire business life, applications containing these marks exclusively will be rejected for all goods and services subject to the registration request. For example; “euro” should be evaluated within this context.
VI. 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 is mandatory to obtain a technical result or gives substantial value to the goods;
This ground covers three elements:
1-Shapes or other characteristics that arise due to the nature of the goods
2-Shapes or other characteristics required to achieve a technical result
3-Shapes or other characteristics that give the original value of the goods
VII. Signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;
For example, the trademark application “chicken deluxe sandwich crunchy” has been rejected by Türk Patent since it is accepted as misleading in terms of the nature of the goods “meat sandwiches, pork sandwiches, fish sandwiches”
VIII. Signs which shall be refused pursuant to Article 6ter of the Paris Convention;
This article regulates the protection of official command/dynastic badges, flags and emblems and official control and guarantee signs.
IX. Signs other than those covered by Article 6ter of the Paris Convention but which are of public interest, and which contain historical, cultural values, and emblems, badges or escutcheons for which the consent of the competent authority has not been given,
As an example for this ground the name of “MUSTAFA KEMAL ATATÜRK” who is the leader emerged from the ashes of the Ottoman Empire to establish Turkey as a sovereign republic cannot be registered as a trademark.
X. Signs that contain religious values or symbols;
Signs bearing the aim and effect of harming the religious feelings of the society; exploiting them and gaining interest are evaluated within the scope of this article. One reason for rejecting such applications is to prevent commercialization of such expressions. For example, “Jesus Christ” or “Hz. Muhammed” will be refused due to this ground.
XI. Signs which are contrary to public policy or to accepted principles of morality;
For instance, a trademark application consisting of the word “terrorist” has been rejected by Türk Patent based on the subject article.
XII. Signs which consist of a registered geographical sign or which contain a registered geographical sign.
In order to apply the subject article there are two requirements:
1-At the time of the evaluation of the trademark application, there should be a registered geographical sign
2- The trademark application should consist of the registered geographical sign or it should include the registered geographical sign with supplementary elements.
How can a refusal decision in terms of absolute grounds be overcome?
If a trademark application is refused based on a prior application/registration; a reponse can be filed and argued that the signs are different and/or they cover different goods/services. Another option would be to obtain consent letter from the owner of the prior mark and submit it along with the response writ or until the decision is given regarding the response.
If a trademark application is refused based on the articles 5/b, 5/c and 5/d (respectively II, III and V in this article), then in the response the secondary meaning of the mark can be stated by proving that the mark is continuously and extensively used in Turkey before the date of the application and acquired distinctive character upon such use.
Relative Grounds of Refusal
Characteristics of relative grounds of refusal decisions
If a trademark is found eligible for registration, in other words if it passes the examination in terms of absolute grounds, it is published in the official Trademarks Bulletin. Within two months as of the publication date, any third party who has interest might file an Opposition against the subject application. Only then the application is evaluated in terms of relative grounds. Otherwise the registration process of the application continues.
List of the relative grounds
I. An application for trademark registration shall be refused upon opposition if there exists 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.
This article includes not only the concept of “likelihood of confusion” but also the “association possibility” that can be explained as the possibility that the consumers might associate the sources of the goods and services. It is arguably the most popular ground when opposing a trademark application.
II. 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.
In order to apply this article there must be a commercial relationship between the applicant and the rightful owner of the mark which allows the applicant to use and distribute the goods/services bearing the subject mark in the name of the rightful owner.
III. 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 opposition of the proprietor of that prior sign.
This article is important especially when the opponent does not own any trademark registration/application in Turkey. In that case if the opponent has prior use in Turkey regarding the mark subject to the dispute and if such use can be proven by written evidence, then this would be strong ground for the opponent to succeed.
IV. 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 the identical and similar goods or services.
To apply this article the opponent’s mark should be well-known within Turkey; additionally, this article provides protection only for the same/similar goods/services.
V. 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 trade mark due to the reputation the earlier trademark has in Turkey; shall be refused upon opposition of the proprietor of that earlier trademark.
According to the subject article which sets out the requirements for the protection of well-known trademarks in view of applications for different goods and services, such application shall be refused if the earlier trade mark has reached a certain level of notoriety in the public and if the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to the distinctive character or repute of the registered trade mark. In terms of this article the opponent should prove that there is a high risk that one of these provisions might occur.
VI. 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.
In addition to the earlier rights protected by Article 6/3, 6/5 provides for the protection of other non-registered rights, such as rights to a name, photograph, copyright work or any other industrial property rights vested in third parties. For example, assuming that the famous Coca-Cola bottle design is only protected by a design protection, this article aims to prevent any figurative trademark application which includes the bottle design.
VII. 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 opposition of the previous right holder.
An opposition based on guarantee or collective marks can be claimed within three years after the mark’s expiry date
VIII. 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 opposition of previous trademark proprietor provided that the trademark has been used during this period.
The opposition based on the subject article, after the expiry date of the protection of the mark that is the ground for opposition due to non-renewal, the documents that prove the use on goods/services within the scope of registration should be submitted.
IX. Trademark applications filed in bad faith shall be refused upon opposition.
Consistent with the previous laws, the lawmakers deliberately refuse to provide a specific description for bad-faith, in order to not to limit it. The roots of “bad-faith” in Turkish IP law are found in Article 2 of Turkish Code of Civil Law which states “Every person must act in good-faith when exercising their rights and fulfilling their duties. The law shall not protect evident misuse of a right.”
In order to establish a frame within the reader’s mind, a rule of thumb is that a trademark applicant should have known or expected to have known that the sign they applied for actually belongs to someone else. This manifests itself in numerous instances such as a prior business connection between the parties, high popularity of the mark (such as Volkswagen, Dolce&Gabbana or Ferrari), other potentially bad-faith applications by the same applicant, the business sector of the applicant.
How can an opposition be overcome?
A response can be filed as of the notification date of the opposition. In the response the applicant can set forth the counter statements as to the grounds specified in the opposition. For example; the applicant can mention differences between the signs and/or the goods/services and claim that there would not be likelihood of confusion between them. Additionally, if the opponent based the opposition to the marks which passed 5 years use period, the applicant can invite the opponent to prove the genuine use of its marks in Turkey for the last 5 years. If the opponent cannot prove this, the opposition would be rejected in terms of likelihood of confusion for the marks that the genuine use could not be proven.
Is there an Appeal step?
Yes, any party who is not satisfied with the decision given as to the Opposition has right to file an Appeal within two months as of the notification date. Appeals must be filed before Re-examination and Re- Evaluation Board. The decision given by the Board is the final decision of TürkPatent. If one of the parties is not satisfied with the decision, they should file a cancellation action before IP Courts.
What is procedure for Office actions and Oppositions
The Oppositions should be filed within two months as of the publication date of the trademark application in written format. While filing the opposition all grounds should be stated and the payment of the official fee should made. A Power of Attorney is not needed to file an opposition.
The Office Actions should be filed within two months as of the notification date of the refusal decision in written format. While filing the Office Action all grounds should be stated and the payment of the official fee should made. A Power of Attorney is not needed to file an Office Action.
What are the common mistakes in Office Actions and Oppositions?
I. Failure to base the claims on some of the grounds
Failure to include some of the grounds can be fatal in terms of trademark prosecution work. This means, even if the rights-holder has a case, TurkPatent will not be researching the grounds which are not included, thus decrease chances of success. Also, the left-out grounds can no longer be included when filing a court action against the Office decision. It is extremely be important to check each ground one by one and objectively decide which ones would apply to the case at hand.
II. To base the claims on too many/irrelevant grounds
A common mistake which can be encountered in many oppositions. Including too many and irrelevant grounds is usually done in order to “increase chances” however it usually works otherwise. For example, including “bad-faith” among the refusal grounds while not being able to submit any relevant evidence would only make the opposition motion look bad. Since the oppositions are evaluated by experts who deal with thousands of matters on a daily basis, it decreases credibility and seriousness of the whole motion.
III. Failure to base the claims on some of the marks as the basis of the Opposition
Leaving out some of the trademark registrations is never a good idea and it can cost so much in opposition and litigation phases. Each trademark of the rights-holder must be carefully examined for several aspects such as goods&services, figurative elements, any changes in records. Also, including irrelevant trademarks of the right-holder must be avoided since it also decreases credibility and seriousness of the whole motion.
IV. Failure to adhere times established by law
Maybe the most fatal mistake in trademark prosecution (as in all aspects of law). Missing out deadlines will almost always lead to loss of rights, only with some rare exceptions. This may happen on local attorney’s part or on rights-holder’s part, therefore healthy and orderly communication between all parties involved in the prosecution must be maintained.
V. (If the conditions allow) Failure to invoke the defense of non-use when responding to an opposition by a third-party
One of the new aspects of the Turkish IP Code (No. 6769) was introduction of non-use defense on prosecution stage. Therefore, when replying to an opposition filed by a third-party trademark owner, a quick, online research to see if the trademark has been used in the past 5 years could result in an effortless win.
VI. Failure to submit an adequate number of evidences
Taking the easy way and only enclosing the easiest documents at hand, to the motion is not a very good idea. It is very important for the rights-holder to have an archive of their trademark uses. Also, a quick research which may took only 15 minutes may reveal very useful information to the case, such as a previous business contact with the opposed trademark’s applicant.
Frequently Asked Questions
Do I have to own prior registration/application to file an Opposition?
No, having a prior registration/application is not mandatory to file an Opposition. According to the content of the case, suitable absolute and/or relative grounds might be used as the basis of the Opposition.
Are the deadlines for filing an Opposition and/or Office Actions extendable?
No, those deadlines are not extendable, they are sharp.
When I will receive the decision as to our Opposition and/or Office Action?
It takes approx. 6-8 months until the decision is received.
What happens if I miss the deadline?
If the deadline is missed as to an Opposition, the application that you aimed to oppose will be registered if there no other oppositions and if the Registration fee is paid by the applicant. In this case the only way to nullify the registration is to file a court action.
If the deadline is missed as to an Office Action, then a new trademark application should be filed and if the application is refused again, you will have a new deadline for a possible Office Action.
My trademark is already registered and protected. Why is TurkPatent not protecting my brand?
TürkPatent only refuses the trademark applications ex officio when it is identical or almost identical to your trademark and if the both marks cover the same/same type of goods/services. For other trademark applications that might be confused with your trademark a third party Opposition should be filed.
Is it possible to file additional documentation/evidences after filing of an Opposition against a trademark application/Office action?
Yes after filing the Opposition/Office Action and after the deadline passed, it is still possible to submit supplementary evidence until the decision is is given.
Does WIPO inform the applicant when a third party Opposition is filed?
Any third party Opposition filed against an international trademark application in Turkey is not notified to the applicant unless such Opposition is accepted. But this might cause loss of rights. In other words, if the applicant is not aware of the third party Opposition, it will not be able to use its right to invite the opponent for the proof of use in addition to lose its right to file its counterviews against a third party Opposition. That’s why it would be beneficial for the applicant to assign a representative in Turkey for its international application, so that the Turkish attorney can notify the applicant in case of an Opposition. Kindly note that there is no official deadline to file a response against subject Opposition as the applicant is not notified of the proceedings officially, but any counterview should be submitted before the examiner gives the final decision.
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