The acceptability of consent letters, co-existence agreements
and sister company arrangements are often explored by the
applicants whose trademarks are provisionally refused based on a
prior registration in Turkey. Contrary to all expectations, consent
letters, co-existence agreements and sister company arrangements do
not overcome a provisional refusal in Turkey. In other words, even
if the prior registration holder consents to the later trademark,
the Turkish Patent Institute (TPI) will still not cancel the
provisional refusal decision.
Once a trademark application is filed, the TPI examines the
application according to article 7 of Decree Law no. 556. According
to article 1 (b) of the law, trademarks that are identical or
confusingly similar to an earlier trademark for the same or similar
goods or services are ex officio refused. In this case,
the only option is to appeal against the provisional refusal
decision and demonstrate the dissimilarity of the trademarks or of
the relevant goods or services. Until 2004, alleging
distinctiveness acquired by usage before the registration date
could also overcome the provisional refusal. However, this is no
longer an option since the law was amended, because according to
the TPI, a phrase can only be registered in the name of one holder
for given goods or services.
Applicants whose trademarks are provisionally refused based on a
prior registration in Turkey might consider the following
Submitting a letter of consent or co-existence agreement:
Turkish Trademark Law does not mention the registration
holder's consent to a later trademark application. The
grounds of provisional refusal are considered to be a public policy
and therefore within the scope of consumer protection matters. For
this reason, even the registration holder's consent is not
enough to overcome provisional refusal.
Agreements between sister companies: In some cases, the later
trademark application is refused because of the applicant's
sister company's older registration. Even if the applicant
clearly explains and proves the companies' relationship,
the TPI will still not cancel the provisional refusal decision. In
this case, the only way to overcome the provisional refusal is to
gather the trademarks under the same roof. Therefore, the applicant
usually appeals the provisional refusal decision to gain time and
reassigns the older trademark.
Assignment of the provisionally refused trademark to the
existing holder until it is registered: This act can be invalid as
it can be considered as a fraud against the law. Additionally,
article 16/5 of the law prevents this. According to the article,
when a trademark registration is assigned, it is also necessary to
assign any identical or similar trademarks (for the same/similar
goods or services). In practice, when an application for recordal
of the trademark assignment is filed, the TPI gives two months for
the assignment of the remaining identical/similar trademarks to the
assignee. If these marks are not gathered under the same roof
within two months, the application for the recordal of the
assignment is refused. Therefore, assigning the provisionally
refused trademark to the older registration holder only serves to
have the trademark registered in the name of the older registration
In fact, it is not possible to overcome provisional refusal
using conventional means. Therefore, it seems that the only option
is to register the trademark of the older registration holder and
try to obtain a license from it.
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.
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