Selin OZBEK CITTONE
Attorney at Law / Managing Partner, Dual qualified lawyer (Turkey and England & Wales)
18 January 2017
The definition of trademark is broadened
Pursuant to article 4 of the Law, the definition of trademark has been broadened to include all kinds of symbols including personal names, words, figures, colours, letters, numbers, sounds and shapes of products and packages that can be distinguished and shown in the registry clearly and accurately. Symbols which may be trademarks are not exhaustively listed in the Law. In addition, as a result of the revocation of graphical representation requirement, new trademark types such as sound-marks and motion-marks can also be registered.
An exception is provided for refusal of trademark registration
In the previous legislation, it was provided that any trademark applications for symbols that were the same as or indistinguishable from a trademark previously registered (or for which a registration application has been made) for the same type of goods and services, would be rejected by the Turkish Patent and Trademark Office (“TP”). An exception is provided with article 5 of the Law, which allows the registration of a similar trademark, provided that the previous trademark proprietor gives express consent through a notarized permission , to the TP. According to the preamble of Article 5, this provision aims to protect the intention of applicants to coexist in the market.
Scope of objections against trademark registration is extended
A general provision has been added to the list of reasons for the denial of registration applications under article 6, which extends the protection provided to existing trademark proprietors, in cases where a trademark application is made in bad faith.
Objection periods are shortened
With Article 18, the announcement period stipulated for third party objections against trademark registration applications has been decreased from 3 months to 2, in order to shorten the total registration term. With the provision prohibiting the alteration and extension of grounds for objection after the end of the objection period, it is intended to prevent any extension of the process in bad faith.
Protection term remains the same; renewal for only a part of the goods and services is now possible
As in the previous legislation, the protection term for registered trademarks is 10 years as of the date of the trademark registration application and this term can be renewed for additional periods of 10 years. The Law differs from the previous legislation and allows the partial renewal of a trademark for specific goods and services under article 23.
New trademark applications may be filed for existing registered identical or similar unused trademarks
According to article 19, in case the trademark proprietor whose trademark has been registered for at least 5 years, objects to a new application which is identical or similar to his own trademark, the trademark proprietor is required to provide evidence regarding the significant use of his trademark in Turkey or valid reasons for the non-use of his trademark upon the request of the applicant. According to the preamble of this article, which lays the burden of proof on the existing trademark proprietor, it is aimed to provide efficient use of registered trademarks in the market and to prevent the abuse of objection right.
Trademark licensing is still valid
As per Article 24, trademark right may be licensed for some or all of the goods and services for which it is registered. This licence may be granted as exclusive or non-exclusive licence.
Unless otherwise provided in the agreement between the parties, the license shall be deemed non-exclusive. In non-exclusive license agreements, licenser may use the trademark himself or grant licences to third parties. In the case of an exclusive license, licenser may not grant licences to other parties and cannot use the trademark himself unless such is specifically reserved in the licence agreement. Unless it is specifically provided in the agreement, licensee cannot transfer the rights arising from the license or cannot grant a sub-license to third parties.
Trademark annulment power is granted to the TP
In addition to invalidity provisions, an administrative annulment is also regulated. Corresponding with the EU trademark practices, in certain cases, the trademark registration may be annulled by the TP as well as courts as per article 26.
According to article 192, article 26 shall be applicable as of 10.01.2024, 7 years after the the Law’s coming into force. Until this date, annulment shall be exercised only by courts.
The trademark shall be annulled in cases where the trademark has become generic in respect of the goods or services due to the acts of the proprietor and because necessary precautions were not taken.
Moreover, as per the article 9, if the trademark has not been used significantly in Turkey within a period of five years following its registration without a valid reason or if its use has been suspended for an uninterrupted period of five years, the trademark shall be annulled.
How will the trademark be affected in case of invalidity and annulment?
In case the trademark is rendered invalid according to article 25, this shall be effective from the date of the trademark application, and the protection provided by the Law for such trademark will be deemed to have never provided. In case the trademark is annulled according to article 26, annulment shall be effective as of the submission date of the annulment request to the TP. However, in the event that the reasons for annulment were based on an earlier date, it may be decided that the annulment is effective as of such earlier date.
The Law introduces mediation
In accordance with article 19 which regulates the examination of objections against trademark registration, if the TP deems necessary, it may encourage the parties to reconciliation. In such case, the provisions of the Law on Mediation in Civil Disputes No. 6325 shall be applied. The main purpose of this regulation is to resolve disputes in the fastest way without going to trial.
There are fines and imprisonment for the infringement of trademark rights
Penal provisions are regulated in article 30 of the Law. According to this article, persons who produce goods or provide services by infringing a trademark in a manner causing confusion or quotation, exposing infringing goods for sale or sell, import and export, purchase, hold, transfer or stock for trading shall be sentenced to imprisonment for a period of one to three years and to pay an administrative fine for up to twenty thousand days. In addition, the scope of infringing actions is widened and the possibility of confusion is also included.