On October 19, 2011, a new Communiqué amending the "Communiqué regarding the Classification of the Goods and Services" (hereinafter will be referred to as "Classification Communiqué") has been published within the Official Gazette and it entered into force on the same day. This communiqué which is completely regarding the 6th subgroup of Class 35, was prepared by Turkish Patent Institute (hereinafter will be referred to as "TPI") and the aim of it, announced as being in conformity to the European System on the trademark issues.
The new regulation created a great reaction within the IP sector and its impacts were being discussed by trademark attorneys through private and official meetings in Ankara and Istanbul due to the idea that the new regulation revolutionise the system for some aspects. It is noteworthy to mention that although there are some positive effects of the new implementation, it includes also negative aspects which are tried to be eliminated by the communications with the TPI.
General Information Regarding the Amendment
Prior to the amendment the service under 6th subgroup of Class 35 was as follows: "Services of gathering various goods in order to enable customers to examine and purchase them in convenience (the specified services can be provided by retail, wholesale shops, electronic media, catalogues and other similar methods).".
By means of the new Communiqué it is amended as follows: "Services of gathering "..." in order to enable customers to examine and purchase them in convenience (the specified services can be provided by retail, wholesale shops, electronic media, catalogues and other similar methods).". According to the amendment the "..." part of the sentence should be filled by indicating the product, product group or sector name. If the service contains all of the goods and services "..." part should be filled by writing "various goods" phrase down.
Before the entrance into force of the new Communiqué, in accordance with the practice and decisions of the TPI it was impossible to mention specific products, product groups or sectors while filing a trademark application for the service under 6th subgroup of Class 35. Even the applications filed by indicating products, product groups or sectors were accepted by changing its goods and services list according to the Communiqué which was in force. The sole exception of this practice was the international (hereinafter will be referred to as "IR") applications.
As a result of this previous practice, a trademark was being able to use by exclusively one person for the sale of various goods and this situation was one of the obstacles for the commercial customs. Therefore, two different companies were not allowed to register same trademark for the different products or product groups under the Class 35 with specific term. Consequently, the applicants do not have a choice for another service definition.
Hereinafter, as a result of the new Communiqué the applicants will be able to specify the products, product groups or sectors subject to the 6th subgroup of Class 35 and thus, the differences between the IR and national applications are removed.
On the other hand, the system regarding exclusive holdership of a trademark for all products, product groups and sectors in 6th subgroup of Class 35 will be changed, since the applicants should specify the products, product groups or sectors within their application.
Additionally, by the new Communiqué the following sentence was added to the Classification Communiqué: "Within the context of Class 35, the services of "gathering goods together for their presentation" mentioned by indicating different type of products, product groups or sector; cannot be considered as same or same type with each other and with the services mentioned by not indicating any product, product group or sector.".
In the light of this sentence and its evaluation with the above mentioned amendment, too many controversies arise and the Communiqué became the top subject within the IP world in Turkey.
Although the TPI officers are stating that the main aim of the amendment is being in conformity with the European practice and referring to the "PRAKTIKER" decision of CJEC (Case C-418/02) where the Court stated that the sale transactions are not the subject of the "Services of gathering various goods in order to enable customers to examine and purchase them in convenience" in Class 35 and the products or the sectors of the products should be stated in the service definition to understand the scope of the service; the trademark owners and the trademark attorneys were discontented thinking that their or their Client's earlier rights became unprotected because of the new practice of the TPI.
In fact the concerns of the earlier dated trademark owners and trademark attorneys were appropriate, since the TPI was firstly announced that the new provisions shall also be applied to the earlier dated trademarks and trademark applications. So, all the earlier dated trademarks and applications became unprotected as regards to the absolute grounds of refusal regarding similarity. This approach was changed by the new Application Principles dated December 03, 2011 of the TPI. In other words the new system of ex-officio examination will not be applied to the earlier dated trademarks and applications.
The amendment regarding the applications on the services under 6th subgroup of Class 35 has 3 aspects which are regarding;
a) The Application Procedure;
b) Ex-officio Examination Procedure,
c) Opposition Procedure.
All of these aspects will be explained below respectively:
a) Results of the Amendment Regarding the Application Procedure
Hereinafter, all of the applications containing the service mentioned in 6th subgroup of Class 35, shall be made by specifying the service mentioning which products, product groups will be gathered together.
During the seminars arranged by the TPI, the officers stated that below mentioned kinds of applications are considered as not proper:
- Applications indicating a Class number,
- Applications indicating all of the goods within a Class,
- Applications indicating all of the goods mentioned within the application,
- Applications indicating too many sector names together,
- Applications indicating unrelated sectors according to the TPI's approach.
By the new practice, the officers need to see the product group or sector name not too many product names together e.g. they do not would like to have an application indicating the entire possible product names in textile sector, they only would like to have an indication to the textile sector. Only if limited products from textile sectors are within the scope of the service, the product names may be mentioned.
The TPI also announced that they will evaluate all of the applications whether the said services may be rendered "in real life". It is beyond dispute that this evaluation may cause problems since it will bear a subjective evaluation. Considering the developments on retailing services and new types of retailing shops, all types of products may be decided to sell together. However, within this approach of TPI, the goods and services lists of the applications may be re-arranged by the TPI ex-officio, e.g. TPI may evaluate that the specification is not proper and publish the application as regarding "various goods".
In the light of the above, getting used to the new system may take a little time for the practitioners because of possible subjective evaluations within TPI. We believe that within a reasonable time period TPI may set an objective practice according to which the practitioners may act.
b) Results of the Amendment Regarding the Ex-officio Examination Procedure (Absolute Grounds of Refusal)
As mentioned above, according to the new Communiqué "Within the context of Class 35, the services of "gathering goods together for their presentation" mentioned by indicating different type of products, product groups or sector; cannot be considered as same or same type with each other and with the services mentioned by not indicating any product, product group or sector.". These clause has two aspects: the aspects regarding
- identity examination between two "specified application"
- identity examination between "general application" and "specified application".
In this context, TPI will evaluate "specified applications" as different, if they refer to different products, product groups or services. However it should be born in mind that according to TPI's approach, "Services of gathering textile, furniture and electronic sector products in order to enable customers to examine and purchase them in convenience" is not same type with the "Services of gathering textile and furniture sector products in order to enable customers to examine and purchase them in convenience". Therefore, the second application may be published by passing the ex-officio examination of the Registrar.
TPI will evaluate "specified applications" as "not identical" to the "general applications". Actually, the main problem arose from this point, since the TPI firstly announced that the new provisions shall be applied to the earlier dated applications and registrations, the practitioners have strongly criticized the new regulation. Because, as we mentioned above all of the previous national applications have been filed with the "general wording", namely for "various goods". In other words, it seems that all of the previous registrations became unprotected from the protection of "absolute refusal grounds examination" basing on identity of the trademark and sameness or sameness regarding the type of the goods and services lists.
As stated above, this risk was removed by the new Application Principles of TPI dated December 03, 2011, in which the TPI stated that they will not apply these provisions to the earlier dated trademarks and applications and they will accept the previous applications and trademarks similar to the new ones even if they have been filed in "general wording" or "specified wording".
More clearly, the above provisions will be applied similarity examination between the applications having the date after October 19, 2011. However, there exists always a risk since the provisions are very new even for the examiners/officers and the procedure is not fall into place. So, the earlier dated trademark owners should follow the new applications very closely and oppose against them if needed.
As to the new applicants, they should always follow the new applications since the protection on the absolute grounds has been obviously weakened by the new system for the new trademarks.
c) Results of the Amendment Regarding the Opposition Procedure
As mentioned above, one of the trademark protection ways for the previous "general" registered rightowners is following all of the new applications and filing oppositions against them.
By the 3rd party oppositions, the previous right owners may claim the similarity between the services. During the opposition process, examiners of the TPI will be checking whether there exists confusion or ambiguity. However according to the new approach of the TPI, they will be evaluating the similarity by comparing the usage area of the previous trademarks. Therefore, hereinafter, in case of doubt they may ask for the information, documents or any kind of evidences which shows the earlier usage of the prior trademark owner. Therefore a "genuine use" problem may arise in this point. In other words, the protection area will be narrowed even in the "opposition examination procedure".
On the other hand, for the new applicants maybe one of the most important results which may occur during the opposition process is that TPI will refuse whole service even though some of the products or product groups found similar to a previous trademark/application. More clearly, if the new trademark application contains textile, furniture and electronic sectors, and if the TPI will found the application similar to a previous trademark because of the textile sector; it will totally refuse the application, i.e. it will not reject the application only for the presentation services of the textile products. TPI does not consider the products or product groups separately but even they belong to different sectors, it considers the products under the Class 35 as a sole product or product group. Thus, the service definition regarding the sale will not be separated further to an opposition. Therefore, the trademark owners who hold a registration or application have been directed to file new applications for specific products or product groups separately.
As it is explained above, from the application of this Communiqué and practice, the Turkish IP practitioners wait too many problems. There exist too many solution recommendations within the sector but most of them are announced to be impossible by the TPI.
First of all, TPI has announced that the "demands in relation to the changes of the service lists of the previous trademarks by specifying them by way of mentioning certain products or products groups" will not be accepted. Also, the TPI has stated that any amendments or limitations on the service list on the purpose of specifying the general term will not be accepted as well.
Then another solution has been recommended to the TPI which was accepted. Currently, the earlier dated trademarks and application will be protected by the ex-officio refusal grounds as previously. However now, all the applications shall be made by paying much more attention and all the new applications shall be followed by the trademark owners.
In conclusion, it is obvious that the new practice of TPI is not settled yet, and there will be more discussions on the issues mentioned above.
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.