Intellectual and industrial property rights (IPR) including a company’s trademarks have emerged as leading assets in line with the growth in commercial and digital activities of foreign firms and individuals in Turkey.
All foreign firms and individuals, who are willing to start or currently have a business in Turkey, must comply with the IPR regulations regardless of whether they reside in or outside Turkey.
As part of the IPR regulations, one of the frequent questions we receive relates to the trademark application requirements before the Turkish Patent and Trademark Office (“TPTO”) and how to protect trademark registrations.
How are trademarks registered in Turkey?
In Turkey, trademark registration can be filed by either direct application to TPTO or through international trademark registration designating Turkey within the scope of the Madrid Agreement concerning the International Registration of Marks and relating Protocol. Both direct and international trademark application have same legal impact while the application procedure differs as follow:
For those making a direct trademark application, the TPO examines the trademark application regarding the absolute grounds for refusal ex-officio. Where the application terms are completely fulfilled and the TPTO does not reject the application within the scope of absolute ground for refusal, the application will be published in the monthly Official Trademark Bulletin (“Bulletin”).
Within two months beginning from the publication date, relevant parties can file opposition to the trademark application before the TPTO. If no opposition is filed within this term or is rejected by the TPTO, the trademark will be registered upon the payment of the registry fee and the registration will be published in the Bulletin.
The refusal decision of TPO regarding the opposition against the trademark application can be appealed before the Re-examination and Evaluation Board (“Board”) of TPTO within two months.
If an opposition is filed against the trademark publication and the TPTO partially or completely accepts it, the applicant can appeal this decision before the Board within two months after the notification. Relevant parties can file a lawsuit against the decision of the Board only before Ankara Civil Courts for Intellectual and Industrial Property Rights within two months.
For those making an international trademark application through designating Turkey, World Intellectual Property Organisation (“WIPO”) and the TPTO governs the international trademark applications designating Turkey within the scope of Madrid Protocol. Following the international trademark application is filed before the WIPO; it will notify the TPTO regarding the application.
The TPTO will make a decision in accordance with the provisions regarding the trademark application under the IP Code and notify WIPO within 18 months. Relevant parties can object this decision. The decision regarding the objection will be sent to the WIPO upon request, recorded in the international registry and published WIPO.
Is there any specific protection against IPR violations?
A registered trademark owner can file an opposition against publication of an identical or similar trademark application for the same or similar goods and services. A well-known trademark owner can also file opposition against the trademark application filed for different goods and services and prevent the applicant of the later trademark to gain unfair benefit from the reputation of the trademark, to harm its reputation due to its recognition level reached in Turkey or its distinctive character.
In Turkey, there are specialized IP Courts in Istanbul, Ankara and Izmir. In other cities, basic courts of first instance are on duty. A registered trademark owner can take legal and criminal actions with the support of a Intellectual Property expert lawyer against infringing acts and request following:
- Preliminary injunction decision,
- Determination, prevention and termination of infringement acts,
- Invalidation of the mark,
- Removal of the infringement and the compensation for the material and nonmaterial damages
- Seizure of the products that cause infringement and require penalty, and device and machine such as tools used only for the production, without preventing the production of products other than the products subject to infringement,
- Assign of the property rights to him/herself on the seized products, devices and machinery,
- Taking precautions to prevent the continuation of the infringement, especially on the infractor’s expense, modification of the shapes of the tools like devices and machines and the products seized, deletion of the trademarks on them or if it is impossible to prevent the industrial property right infringement then destruction of the goods subject to the infringement,
- Payment for non-pecuniary and material damages,
- Publication of the finalised decision in the daily gazette or similar media fully or in summary or notification of it to the relevant authorities at the other party’s expense.
In addition to the above, an unregistered trademark owner can also apply to unfair competition provisions under the Turkish Commercial Code and also prevent third-party trademark applications based on real right ownership and bad faith of the applicant.