There are two ways to file a trademark application in Turkey. One is the application made through national way and the other one is the application is made through international ways.
Due to the shorter durations, national applications are may sometimes be more preferable than international applications. The duration of the national procedure is shorter than the duration of international. This difference will be understood better if we examine the processes which are related to national and international applications.
National Application Process;
The following processes are valid for applications made on or after January 10th 2017, when the new IP Code No. 6769 was officially adopted. Examination may take several months.
In brief: After filing a trademark application, Turkish Trademark and Patent Office (TPTO) examines the application according to absolute grounds of refusal for 4-6 months. If no grounds for refusal is found then the trademark is published for two months for third parties to oppose on relative grounds. If there is no opposition within two months, the registration decision for the trademark is published. The registration fee should be paid within 2 months from the date of the Office's notification. Thereinafter, the registration certificate should be received within a two-week or two-month period. The entire procedure of trademark registration takes from 6 to 8 months.
In detail: The application can be refused due to the existence of prior similar trademark(s) as well as other absolute grounds of refusal as cited in Article 5 of the IP Code No. 6769. When the Turkish Patent and Trademark Office (the Office) ex-officio examines and then partially or totally refuses the trademark application based on absolute grounds, the applicant has a right to appeal this refusal decision within 2 months from the notification date. The appeal is examined by the Re-Examination and Evaluation Board (REEB), and its decision is final before the Office. If the trademark is refused due to the existence of a prior similar trademark(s), the applicant has the right to obtain a notarized and apostilled LoC (Letter of Consent) from the owner(s) of the prior trademark(s). In case the LoC is obtained and filed until the decision on the appeal is given, then the reason for the refusal will be deemed to be invalid, and the trademark will proceed to publication. If the decision is against the applicant, then 2 months will be given as of the notification date to initiate a court action for the cancellation of this decision before the Civil Court of Intellectual and Industrial Rights.
After the ex-officio examination of the application by the Office, opposition can be filed within 2 months following the date of publication of the application in the Official Trademark Bulletin. The applicant has a right to file a counterstatement within one month following the date of opposition notification. During this one-month-period, the applicant may request the opponent to prove use of the trademark(s) for the goods and services used as a grounds to opposition on the condition that those trademarks were registered for more than five years starting from the application/priority date. If the opponent can prove the use, then the opposition will be accepted. If the opponent cannot prove the use, then the opposition will be rejected for those goods/services. However, for 7 years starting from January 10, 2017, the Office will not have the authority to cancel the Trademark(s) due to non-use. For the non-use cancellation action, the claimant is required to start a court action. Starting from January 10, 2024, the Office will be authorized to oversee cancellation claims due to non-use. After the opponent files the proofs of use, the Office sends these documents to the applicant. Upon receipt, the applicant has a right to file comments regarding these proofs within 1 month. The opponent may submit the proof of use before the applicant demands it. In that case, the Office examines these proofs ex-officio. The Office may encourage parties to reconcile within the framework of Arbitration Law on Legal Disputes. If the opposition is refused by the Office, the adverse party has a right to file an appeal against the decision within 2 months following the notification of this decision. If the opposition is totally or partially accepted by the Office, then the applicant and/or the adverse party [depending on the situation] may file an appeal within 2 months from the date of notification against the Office's decision. The applicant and/or the adverse party has the right to file a counterstatement against this appeal within 1 month from the date of notification. Possible appeals and/or counterstatements of both parties are examined by the REEB, and its decision is final before the Office. In light of this decision, the applicant or the adverse party has the right to initiate a court action for the cancellation of this decision within two months from the notification date before the Civil Court of Intellectual and Industrial Rights.
The opposition and appeal proceedings may take 8-10 months or more depending on the specific matter.
International Application Process;
In the framework of the WIPO (World Intellectual Property Organization) the trademark application in Turkey can also be made via Madrid Protocol.
After the applicant filed the application to the patent office in his home country (in other words, Office of origin), that patent office must report the application to WIPO within specific time period. (For example, it takes two months in Turkey)
After receiving applications, WIPO examines the applications for formalities (for example; in terms of Nice classification, in terms of applicant information, logo quality etc.). In addition, the International Office examines whether the fees to be paid to WIPO or not. Applications that filed to WIPO are usually assessed in 6-8 months.
After WIPO assess the trademark application, it may publish irregularity notification or may also publish the trademark application and the sent it to the designated countries.
If there is a formal deficiency which is related to the trademark application, it is generally expected to eliminate the deficiency within usually 3 months.
If there is no formal deficiency in the trademark application, WIPO will publish the application in its own Gazette and notifies the Office of each member designated in international application. After all these stages are completed, trademark registration number and pre-registration certificate is given to applicant by WIPO. This pre-registration certificate indicates that formal examinations are completed but this certificates should never be confused with the real registration certificate which is sent by designated countries. In the next phase, WIPO sends the application to the designated countries. Each country examines the application according to its own rules which usually takes 12 to 18 months.
Turkey is among the countries that generally reviews the applications for 18 months. The 18-month period starts from the day the application is submitted to Turkish Trademark and Patent Office (TPTO) by WIPO.
Consequently, considering all these stages, making a national application significantly shortens the trademark registration process. If there is an intention to get registration as soon as possible and minimizing formalities, making national applications seems to be the best option.
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.