Clearance and Filing Through Prosecution to Registration
Turkey is a member to the World Trade Organization Agreement and to its attachment, the TRIPs Agreement. Turkey is also one of the signatory states of the Custom Union Agreement under the EU structure. In accordance with its responsibilities stemming from those international agreements, Turkey set out to put in force its responsibilities in the field of intellectual property rights.
On June the 27th 1995, the older Trademark Law 551 was abolished and replaced by the KHK 556 in the field of trademark protection.
Our trademark department incorporates in itself professional trademark attorneys specialized in intellectual property law. We are therefore able to provide our local clients and foreign associates with legal advice on the prosecution of applications. The disputes are handled by the legal branch of the firm.
Trade mark conferences often constitute an important source of information. We contribute to such lectures, provide articles to journals and produce other publications. We are member of the INTA (International Trade Mark Association).
Undertaking National and International Trademark Searches
We always prefer to perform a trademark search prior to filing an application. The trade/service mark similarity & identity searches typically take 2-3 business days.
It is possible to conduct device mark searches in Turkey, but these searches are not performed electronically, so the turn-around time is about one week.
There is a time lag in the Turkish PTO especially for pending applications. So the search results do not include pending applications, which require generally one month. The searches cover potentially conflicting Turkish and International trademark applications and registrations.
Enforcement Advice-Disputes, Third Party Rights and Oppositions
Our firm is experienced in the maintenance and enforcement of its clients’ rights both in Turkey and abroad. This experience encompasses managing criminal complaints or legal actions against infringing third party trade mark use, dealing with opposition and cancellation actions.
Required documentation for a trademark application at the Turkish PTO is as follows:
. Name and address of the applicant,
. Power of attorney (no legalization is required, PoA may be filed following the actual filing date of the application),
. 20 copies of the representation of the trademark, suitable to be reproduced, in minimum -5×5 and maximum 7×7 cm size,
. A list of the goods and services to be covered by the application,
. Documentation of the applicant’s business activity (For registration period only),
An applicant is allowed to file a trademark application for trade and service classes at the same time. A typical application results in approximately 12 months following the filing date. The publication period, during which the application is subject to third party objections, is 3 months.
Natural or legal persons who are nationals of any state party to the Paris Convention or if not nationals, who are domiciled or who have an active business in those states, may claim a right of priority within six months from the date of filing a valid application for registration of a trademark at the authorized bodies of the same states, for the purpose of filing an application for obtaining a registration certificate in Turkey in respect of the same trademark. The priority rights not exercised within this period are considered to be void.
If the right of priority is not documented within three months following the filing of the application, the declaration of priority shall be considered invalid.
Upon concluding that there are no deficiencies with regard to filing requirements by the Turkish PTO, the application shall be examined to find out whether it is eligible for registration within the provisions of absolute grounds in respect of all or parts of the goods and services to be registered.
Trademark is registered for a period of 10 years from the date of filing of the application. Registration may be renewed for further periods of ten years.
Publication and Opposition
In case that no similar trademarks are detected by the Office, the application is published for the opposition of third parties. Any third party has three months for filing an opposition. Typically, it takes a little more than 12 months to receive a registration certificate assuming no opposition filed within the legal time.
In the case of an opposition, the applicant is invited to file a response to the opposition within 2 months following the date of notification. The examiner of the Office freezes the case until all oppositions and responses are timely filed and he decides upon considering the responses.
We take care of all due dates for applications which we file and inform the applicant of all office actions immediately.
Trademark, in accordance with Article 16 of the Decree-Law can be subject to assignment with respect to all or part of the goods or services for which it is registered. Assignment is permissible only with the assignment of the existing other similar marks and applications.
Following documents have to be submitted in case of an assignment:
a) a notarized assignment certificate describing the mark and containing the signatures and declarations of both the assignee and the assignor. In case of partial assignment, the full list of the goods of services assigned have to be specified,
b) a certificate of commercial activity for the assignee,
c) the original Trademark Certificate of Registration,
d) the original receipt for the payment of fees,
e) power of attorney
Following documents have to be submitted in case of a merger.
a) A petition,
b) The documents evidencing the merger,
c) Certificate of commercial activity,
d) The original Trademark Certificate of Registration,
f) Power of attorney,
g) The original receipt for the payment of fees.
The proprietor of a trademark can license his rights over a trademark with respect to some or all of the goods and services for which it is registered. A licensing contract cannot contain provisions contrary to the Decree-Law and the other related laws, decrees and regulations.
Following documents have to be submitted for licenses:
a) Notarized license contract containing the declarations and the signatures of the licensee and the licenser, the registration number of the trademark, the duration and the fees of the contract,
b) Certificate of commercial activity of the licensee,
c) The original Trademark Certificate of Registration,
d) Theoriginal receipt for the payment of fees,
e) Power of attorney
The request for renewal shall be submitted and the renewal fee paid within a period of six months before the last day of the month in which protection ends. In failing this deadline, the request may be submitted within a further period of six months from the day referred to in the previous sentence upon payment of an additional fee.
Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be entered in the Register.
The provisions of this Decree-Law shall cease to produce effect for trademarks which have not been renewed within six months after the expiry of the period of protection.