Before entering the subject of Trade and Service Mark protection according to Decree-Law No. 556, mention should be made that Turkey has adhered to the Madrid Protocol for the international registration of trade marks, with effect from, January 1, 1999.
Turkey has become a member of the Protocol Relating to the Madrid Agreement concerning the international registration of trademarks on January 1, 1999 in accordance with the decision No. 97/9731 dated August 5, 1997 of the Council of Ministers. The implementing regulation of the Protocol Relating to the Madrid Agreement has been published in the Official Gazette and has entered into force on March 12, 1999, with retroactive effect as of January 1, 1999. Detailed information on the implementation in Turkey of the Protocol Relating to the Madrid Agreement shall be provided upon request.
Consequently the trademark right can be established in Turkey through national or international registration. The trademark registered whether nationally or internationally is protected according to Decree-Law No. 556.
The earlier Trade Marks Act. No. 551 expressly excluded from registration service marks. Since the entry into force of Decree-Law No. 556 on June 27, 1995 the registration of service marks in Turkey became possible.
The earlier Trade Marks Act No. 551 and the presently in force Decree-Law No. 556 differ on a further point namely the specification and classification of goods. Under the earlier act which did not provide for classification of goods, the description of goods was to be specified, rather closely, item by item, without any reference at all to the class(es) under which such goods would fall. In the trademark practice under the earlier Trade Marks Act No 551, the similarity was assessed in respect of goods alone, without any reference to their classes. Turkey having adhered to the Nice Agreement with the Decision of the Council of Ministers No 95/7094 of July 12, 1995, under the Decree-Law No. 556 the international classification of goods and services according to Nice Agreement applies, while the goods any services continue to be specified item by item, in a manner similar to the practice under the earlier act.
With regard to the classification of goods and services mention needs to be made of the regulation No 96/2 of T.P.I. of August 27, 1996 which specifies, under the concerned international class, the items of goods organized into some kind of national sub-classification, to be preferably used as such, in the applications filed. This regulation has been repealed with the coming into force of the regulation No. 99/2 of February 21, 1999, which has been further amended as of the contents of the sub-classes with the regulation dated May 9, 2000. There after the regulation No. 99/2 has been repealed with the coming into force of the regulation No. 2000/2 of August 22, 2000. The items of goods and their grouping under of sub-classes, of a kind, as retained in the regulation are considerably more detailed and different from the wording and structure of the international class headings, so that it would not be incorrect to say that the classification of goods and services as organized by the concerned regulation No. 2000/2 consists into some kind of national sub-classification, without naming itself as such. So far as is known, no foreign language translation of the concerned regulation is yet available. Although there is no compulsion in adopting in the application the specification or items of goods as organized under the (national) sub-classes, the administration, openly, prefers and encourages that the applications are filed in respect thereof. This is in fact the reason why many applications; instructed to be filed in respect of the general class heading of the class concerned, for instance in class 25 for "clothing, headgear and footwear for men, women and children"; when filed in compliance of the regulation have a much different, longer and item by item specified listing of goods grouped under the nationally organized sub-headings/classes.
For the same reason an application filed for instance, as of the above international class heading will not cover all the goods such class heading is thought/intended to cover, unless the application is filed with the appropriate national sub-classes.
As of its current practice, the Turkish Patent Institute assesses the similarity between the specifications of goods, principally, in respect of their being classified in the regulation under the same sub-class/heading in lieu of the international class heading as such. Accordingly, under the current practice, goods or services falling under the same class would be accepted for registration in the name of differing applicants if they are classified under different sub-classes/headings within the same class.
This situation and practice causes considerable difficulty as, despite the adoption of the international classification, the T.P.I. continues to request a more closely and restrictively defined description of goods on the basis of the sub-classification always quoted under the international class.
One application can cover goods and/or services in more than one class.
The Turkish Patent Institute requests that the broadly defined goods and services be explained and specified item by item within a non-extendable period of 2 months. The goods and services non-specified within said period will be excluded and the application will be further prosecuted without them.
According to Article 40 of the Decree-Law No, 556, "the term of protection of the registered mark is ten years from the date of filing of the application" and "is renewable for periods of ten years".
The trade (service) mark may consist of "all kinds of signs such as words, including personal names, designs, letters, numerals, the shape of the goods or of their packaging capable of being represented graphically or by similarly descriptive means and capable of being reproduced and published by printing". (Article 5, parag. 1 of the Decree-Law No.556 as amended on November 7, 1995 by Law No. 4128).
As far as three-dimensional marks are concerned, the amendment in paragraph 1 of Article 5 seems to render possible their registration in "the shape of the good(s) or (of) the packaging". But, on the other hand the provision of the paragraph 2 of Article 5 seems to render without any effect the registration of such three dimensional marks as it reads "the trade mark can be registered together with the product or its packaging. In such a situation, the registration of the product or packaging does not grant to the registrant any exclusive right on (the form or shape of) the product or packaging".
Under these circumstances, the registration of the three-dimensional articles such as products, packaging etc., would be possible whether or not there is a word and/or figurative mark thereon. However, in view of Article 5, parag. 2 even if a registration is obtained as a trademark, it would appear that such registration will not -in any case- extend any protection to the three dimensional article as such. It is clear that these contradictory provisions in Article 5 will somehow need to be rectified, in order to clarify the issue.
Accordingly, it goes without saying, that to rely, solely, on trade mark registration for protecting the there dimensional forms or shapes of product or of packaging would involve a considerable degree of interpretative uncertainty as to the scope of trademark protection extending to such three dimensional forms or shapes.
A Court Decision rendered for the withdrawal of the decision of refusal of the T.P.I. goes in the sense of removing this uncertainty. The T.P.I. as defendant appealed against this decision but the 11th Civil Chamber of the Supreme Court with its decision No. 1999/6866-1999/9075 of November 12, 1999 upheld it by dismissing the assertions of the defendant.
In the concerned case the application was refused by the T.P.I. on ground of lack of distinctiveness and the 5th Commercial Court of Ankara in its decision No. 1998/777 – 1999/225 of April 22, 1999 ruled to withdraw/cancel the administrative decision of refusal on the following ground :
"The assertion according to which because the three dimensional shape is the packaging (it lacks distinctiveness) is not correct, since the three dimensional shape can be used for purposes other than for packaging. In short, it is necessary to admit/accept that any sign can be registered as a trademark provided it is distinctive."
In another case on the same topic, the Supreme Court with its decision No. 2000/3866-2000/4995 of June 1, 2000 overturned the decision No. 1998/1004-2000/26 of the 3rd Commercial Court of Ankara, which ruled that the shape of a bottle can not be registered as a trademark. However in this case the ground for overturning the decision was that reaching a decision without considering as to whether the concerned shape had been registered as a trademark in the Home Country, UK, was considered inappropriate by the Supreme Court, which overturned the decision in Plaintiff’s favour. As the defendant appealed before the Supreme for the reconsideration of its decision, this case has not yet been finalized.
The situation and practice, in respect of "disclaimers" has remained unchanged in that they were not permitted under the earlier Trade Marks Act No. 551 and they continue not to be permitted under the Decree-Law No. 556.
Under the Decree-Law No. 556, trademark ownership is not subject to effective manufacturing, trading and/or service activity in that all natural or legal persons, irrespective of their manufacturing, trading and/or service activity are qualified to register in Turkey their trade/service marks. Accordingly under the Decree-Law No. 556 holding companies may own trade marks whether by registration or by assignment/merger.
However, in respect of documentary evidence to be filed in support of the application, the situation and practice continue to be quite similar to the one under the earlier Trade Marks Act No. 551 and the Decree-Law No. 556 in that it continues to be necessary to file either the Certified Copy of the corresponding trademark registration obtained in anyone of the Paris Union Countries in respect of the same/overlapping goods/services or the Certificate of Activity obtained from the Chamber of Commerce or Industry of which the applicant is member or the Excerpt of the Commercial Register attesting the existence of the applicant and that it is effective and operational, possibly, in respect of the goods and/or services applied for.
It is important to note that, in view of Article 6 of the Decree-Law No. 556 "the trade (service) mark protection according to this present Decree-Law is obtained by registration". According to this provision, Turkey seems to have changed course by abandoning the earlier "Declarative" system and by adopting newly a "Constitutive" one in that the registration alone seems to create the right. However, on this important subject no court decision has been rendered, as yet confirming that the registration as opposed to use is alone creative of the trade mark right as such.
The use of the registered mark with differing elements in such a manner that the distinctive character of the mark is not thereby affected or altered "shall be considered as use in the sense of Article 14 of the Decree-Law which further rules that shall also be deemed use when the mark is used :
- solely on exported goods;
- with the consent of the proprietor;
- on goods imported into the country.
According to Article 42 (c) the invalidity of the trademark registration on grounds of non-use necessitates a court decision.
According to Article 42 (c), use subsequent to the period of 5 years will not be considered as a ground for invalidity of registration provided such use is serious, therefore not a merely formal/cosmetic use, and provided that it has not commenced within the 3 months prior to the court action, with the aim of preventing it.
Articles 14 and 42 (c) will apply regarding the period of use of 5 years. From Article 42 (c), it appears that only the courts will have competence over deciding the invalidity of the marks on grounds of non-use according to Article 14. On the other hand, the regulation contains no provision as to the automatic and ex-officio cancellation of trademark registrations on grounds of non-use in that the Administration is not vested with any such competence to annul or invalidate trademark registrations for non-use.
The Decree-Law No. 556 provides for the registration of "Guarantee Marks" and "Collective (Associative) Marks". According to Article 54 "the Guarantee mark" is a sign which serves to guarantee, under the control of the proprietor of the mark, the common characteristics, production methods, geographical origins and quality of (the goods/services of) several undertakings." The registrant of the Guarantee Mark or an undertaking economically related/dependent on the registrant are not authorized to use the Guarantee Mark on their products or services." (Article 54 paragraph 2).
According to Article 55 the Collective mark "is a sign used by a group of undertakings of producers / manufacturers or traders or providers of services " which " serves to distinguish the goods and services of the undertakings belonging to the group from the goods and services of other undertakings."
One of the major differences between the earlier Trademarks Act No. 551 and the Decree-Law No. 556 is that the former act did not provide for any opposition procedure in respect of trademark registration whereas the Decree-Law does. Under the former act, during the prosecution phase the trademark application was confidential in that it was not possible to know -and to object/oppose- an application until its registration was published in the Official Industrial Property Journal and that the only course to follow was to institute a court action for the cancellation of the registration of the concerned mark.
The Decree-Law No. 556 provides for pre-grant opposition and observation proceedings in that the application is examined by T. P. I. prior to its publication for opposition/observations purposes, in consideration of :
- Article 7 pertaining to " the absolute grounds for refusal",
- Articles 26 to 28, if priority is claimed,
- Articles 29 to 32 pertaining to the documents to be filed in support of the application and other formal requirements.
Under the current practice, T.P.I. cites prior conflicting registration(s)/application(s), if any, and refuses the application filed in Turkey pursuant to Article 7 paragraph 1 (b) pertaining to the "Absolute Grounds for Refusal". The provision of paragraph 1 (b) covers not only "identical marks", but also "trademarks (almost) identical to the point of being indistinguishably similar" to a prior trademark registration or application in respect of similar goods and services. This further reference to "almost identical" trademarks which is specific to the Decree-Law No. 556 gives, obviously, the legal leverage to T.P.I. to apply the "absolute grounds of refusal" not only in respect of "identical marks" but also of marks very closely similar "(almost identical)" or retained as such by T.P.I according to the circumstances of the case concerned.
Under the current procedure, all the supporting documents which have not been filed simultaneously with the application will have to be filed within the unextendable deadline of 4 months from the notification of the official action requesting the completion of same according to Article 15, parag. 1, of the regulation of April 20, 1999. According to this amended provision, the one month extension of deadline accorded by the former regulation is no longer available and the deadline of 4 months is unextendable.
Failure to comply within the above indicated deadlines, will result in the annulment of the application, without any further administrative action/decision pertaining to such annulment.
The documents needed to support an application (to be) filed in Turkey are indicated in the enclosed listing.
According to Article 33 of the Decree-Law No. 556, the application which "has not been refused according to Articles 29 to 32 shall be published in the relevant Bulletin".
According to Articles 34, 35 and 36, third parties may file their objections/observations and lodge opposition to the registration of the trade (service) mark applied for within three months from the publication of the application in the Official Trade (Service) Marks Bulletin. According to Article 34, third parties consisting of "any natural or legal person, or any group or any organization representing, providers of services, manufacturers or producers, traders or consumers" may submit their written objections/observations without being party to the proceedings before T.P.I. As far as the oppositions are concerned, these will have to be presented in writing and will have to be motivated. (Article 35, parag. 2). Supporting evidence shall be submitted with the opposition petition. In case the opponent does not lodge simultaneously with the opposition the power of attorney and the supporting evidences and/or does not cite the motivation/grounds of opposition, the opposition is deemed not have been lodged at all, pursuant to the last paragraph of Article 35.
In case no objections/observations are filed and/or no opposition is lodged, the published application will proceed to registration thereafter.
As far as the protection of the unregistered trademarks is concerned, none of the provisions of the Decree-Law No. 556 and particularly the text of Article 42, parag. 1(b) reading "A registered trademark shall be declared invalid by the court in the following cases: b) where in breach of Article 8 (pertaining to the Relative Grounds for Refusal)" does seem to, clearly and unequivocally, permit the institution of a court action for the cancellation, on grounds of (prior) use, of a trademark registered by third parties, whether in good or in bad faith, subsequently to such (prior) use.
The solution of this problem will obviously depend on the court decisions to be rendered on this particular point which is likely to constitute one of the major sources of contention between the trademarks enjoying protection, on grounds of prior use, according to the former Trademarks Act as of its Article 15, paragraph 2 and the trademarks registered, subsequently, according to the new Decree-Law No. 556.
However, Article 8, parag. 3.a/b and parag. 4 pertaining to the "Relative Grounds for Refusal" gives the possibility to block the application for the subsequent registration, by third parties, of the mark, on grounds of (prior) use, in the course of the opposition/observation proceedings.
Under these circumstances, those persons having used their mark prior to its (abusive) subsequent registration by third parties and not having opposed the subsequent registration pursuant to Article 8, parag. 3.a/b and parag. 4, of the Decree-Law No. 556, will, only, have the possibility of instituting a court action against them on the basis of the, general, unfair competition rules of the Turkish Code of Commerce, and request the cancellation of the (abusive) subsequent registration within the context of such an action.
For the same reasons to avoid the interpretative uncertainties of future court decisions on this matter, the trademarks, which are used or contemplated to be used in the near future, should preferably be registered in Turkey.
For the above reasons, against such potentially conflicting applications opposition/observation should preferably be lodged with a view to possibly block their registration.
This leads us to the question of unregistered trademarks and to the protection of the rights arising therefrom. As far as I can see, in such case it will only be possible to institute a cancellation action against the subsequent (abusive) registration by claiming the notoriety of the unregistered trademark on the basis of Article 7 paragraph 1 (i).
According to Article 42 paragraph 1 (a), the cancellation action, on ground of notoriety, is to be filed within 5 years from the registration date. Where the abusive registrant is in bad faith the cancellation action can be filed at any-time without being subject to a deadline.
Where the unregistered trademark is not a well-known trademark, the cancellation action will have to be instituted on the basis of the unfair competition provisions of the Turkish Code of Commerce. However, the unfair competition provisions are applicable only where a situation of competition exists which in turn entails that the concerned goods or services are produced/rendered and/or sold in the country.
In this regard, it should be mentioned that there are several court decisions ruling that the well-known trademarks are protected in Turkey even when they are not registered. Several trademarks abusively registered by third parties have been cancelled on ground of notoriety upon actions filed by the right holder of the well-known trademark.
Before concluding reference is made shortly to the protection and rights arising from the International Registration designating Turkey.
As already mentioned, the trademark rights obtained in Turkey as of the International Registration are protected according to Decree-Law No. 556 in the same manner as the nationally registered trademarks.
In other words, the rights originating from a national or international registration are subject to and benefit from the same legal means and actions, than the nationally registered trademarks.
Where Turkey is designated, the refusal of protection of the International Registration for Turkey is to be notified to WIPO within 18 months from the publication date. Where the T.P.I. does not notify its decision of refusal to WIPO within this time-period, the International Registration is deemed to have effect and confer protection in Turkey.
The International Registration is subject to the same rules of prosecution and examination than a national application. In other words, just like a national application, the International Registration is examined as of Article 7 for the "Absolute Grounds for Refusal" and as of Article 8 for the "Relative Grounds for Refusal" and is published for opposition purposes in the Official Trademarks Bulletin of the T.P.I. The term for opposition is 3 months from the publication date. The T.P.I. publishes in its Trademarks Bulletin the International Registration on the basis of WIPO’s notification to them advising the designation of Turkey.
Listing Of Documents Needed To Support A Trade (Service) Mark Application (To Be) Filed In Turkey According To The New Decree-Law No. 556, In Force As From June 27, 1995.
1. Certified Copy Of The Corresponding Home Registration Or Any Other Paris Union Country Registration.
1/1. This Certificate is to cover the same / similar trademark and the same/similar class(es) or good(s) / service(s).
1/2. According to Article 12, paragraph 1(j) of the regulation, where the application in Turkey is filed on the basis of such a Certificate there is no need to additionally send the Certificate attesting the existence and (trading) activity of the applicant as hereafter explained.
2. Certificate Attesting The (Trading) Activity Of The Applicant.
2/1.
This Certificate is to attest that the applicant company has been effectively incorporated as a legal person/body corporate and is presently active and in existence.2/2. This document can be obtained from any authority such as Trade Register / Register of Companies, Chamber of Commerce/Industry, Official Bodies organizing a given profession, Tax Authority.
2/3. The overlapping between the field of activity of the applicant company and the specification of good(s) / class(es) is not anymore a condition for obtaining a trademark registration in Turkey. The document submitted must include the field of Activity of the applicant which in general terms must cover the goods to be protected.
3. Power Of Attorney.
3/1. A small sample of new forms enclosed for your ready reference and use,
3/2. The Power of Attorney is to be simply signed / executed by the applicant. No other legalization, whether notarial or otherwise is needed for filing the application and other actions pertaining to trademarks, to the exception of,
3/3. The petition of withdrawal or of the voluntary cancellation / annulation of the trademark application / registration necessitate the filing of a notarial legalized power of attorney,
4. Document Of Priority/Certified Copy Of Priority Application
.4/1. According to Article 28, parag. 1 of the Decree-Law No. 556, "if the (claimed) right of priority is not documented within three months of the filing of the application by submitting the declaration / document of priority, the priority is considered not to have been claimed". In case, the certified copy of the claimed priority is not filed before the Turkish Patent Institute within three months after the filing date at the latest, the application will be prosecuted as a non-convention application.
4/2.
- the certified specimen of the concerned mark,
- a representation of the exposed good(s) bearing the concerned mark,
- a representation of the (exposed) packaging bearing the concerned mark.
The Protection Of "Geographical Indications/Signs" In Turkey According To Decree-Law No. 555
As for industrial designs, before the coming into force of the Decree-Law No. 554 on June 27, 1995, geographical indications/signs could not be registered in Turkey for want of a specific act permitting and organizing their registration. Before June 27, 1995, the protection of geographical indications/signs could be secured only on the basis of the general unfair competition rules of the Turkish Code of Commerce.
The Decree-Law No. 555 provides for two instruments in respect of the protection of geographical indications/signs :
Designation Of Origin For Protecting :
- goods/products originating from a place, a region, an area or in specific/exceptional cases, from a country, the geographical boundaries of which are defined/ determined/.
- all of the principal characteristics, qualities or particularities of the goods, products, derive from the natural or human elements inherent to the place, region or area.
- the totality of the operations pertaining to the production, processing and preparation of the goods/products are performed and take place within the geographical boundaries of the place, region or area..
Geographical Indication For Protecting :
- goods/products originating from a place, a region or an area, the geographical boundaries of which are defined/ determined.
- A specific characteristic, quality, of the goods/products or their reputation or their other particularities are associated with and attributable to the place, region or area.
- At least one of the operations pertaining to the production, processing and preparation of the goods/products is carried out and takes place within the geographical boundaries of the place, region or area.
The terms "Designation of origin" and "Geographical Indication" have been used in this article, for commodity of reference, to the English translation of the Decree-Law No 555 as prepared by T. P. I. although the terms "Appellation/Denomination of Origin" and "Indication of Source", to be preferably used in lieu thereof, would have reflected more appropriately the Turkish terms "mense ad
i" and "mahreç isareti" as used in the Decree-Law.The term "mahreç isareti" has been used as such in the Turkish Text of the Madrid Agreement on "the Repression of False or Deceptive Indication of Source on Goods" of which Turkey is signatory. It is clear that the protection conferred by the Decree-Law No 555 in respect of "mahreç isareti" (indifferently named "Geographical Indication" or "Indication of Source") needs to be differentiated from the "False Indication of source" according to Madrid Agreement which does not involve the registration of same.
In the sense of Article 4, the protection pursuant to Decree-Law No. 555 is subject to registration, in that the registration is constitutive of the right.
Article 18 paragraph 1 prohibits the concurrent registration as a trademark of the geographical indication/sign.
The persons qualified to apply for the registration of a geographical indication/sign or those having the right to use it, may put forward claims against the registration of same as a trademark within a time-period of 5 years from the publicly known date of its unauthorized use in Turkey (Article 18 paragraph 2).
Article 19 provides for an exception in favor of use in good faith in that the protection of geographical indication/sign would not extend/be applicable against those signs used in good faith, uninterruptedly for a period of 10 years, prior to April 15, 1994, date when the Convention establishing The World Trade Organization was signed.
According to Article 5 are not admitted for registration generic names and signs of the goods; plant varieties, animal breads or similar names which are likely to mislead the public as to the true origin of the goods; signs contrary to the public and morality as is generally accepted; signs/names which are not protected or used in the countries signatory of the Paris Union or of the Convention establishing The World Trade Organization.
According to Article 7, are qualified to apply for the registration of a geographical indication/sign :
- natural or legal persons engaged in the production/preparation of the concerned goods/products.
- consumers associations
- public bodies/institutions related with the subject/products or with the geographical area/region.
If it retains it necessary, T.P.I may refer the application for examination and opinion to one or more expert body(ies) which can be public bodies/institutions universities or independent private institutions (Article 9 paragraph 2).
The applications qualifying for registration are published for opposition purposes in the Official Journal, in two newspapers having the largest nationwide distribution/circulation and in one local newspaper (Article 9 paragraph 3). The published application is entered on the Register of Geographical indications/signs to have effect as provisional registration which becomes final if no opposition is lodged within 6 months from the date of its publication in the Official Journal (Article 9 last paragraph, Article 11 paragraph 1 and Article 12 paragraph 1).
In case of opposition, the application is referred to the expert bodies/institutions together with the opinion of the applicant.
Article 20 rules that the registered geographical indication/sign will be subject to continuous control of the goods produced and marketed under that sign in respect of their production, marketing, the use of the registered sign, of the marking/labeling of same on the goods, and on their packaging.
Any one may institute a court action for the cancellation of a registration of geographical indication/sign (Article 22). A court decision ruling for the cancellation of the registration will have retroactive effect for nullifying same in that the concerned geographical indication/sign shall be deemed not to have arisen and existed from the outset (Article 23 paragraph 1).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
