Your strategic advisor recommended it, or your musings on what is best for your client led you to file an international trademark application via designating Turkey the Madrid System .
After a couple of months, however, a new message from WIPO in your inbox informs you with the standardized response template of the Turkish (Patent and) Trademark Office that your trademark is -wholly or in part- refused because of an earlier registered or applied-for trademark ("Cited Trademark" or "Citation") in the Turkish registry. The information is followed by a couple of articles from the Turkish IP Code, translated into English for your ready reference.
It should be admitted, such refusal may have not been the case if a trademark availability search for registration (and use availability in addition, for the better) had been conducted and solid green light was obtained from a local agent. However, you might also have decided to go straight with the application, assuming the risk of ex-officio refusal or third-party opposition after a cost-benefit analysis.
Ex-officio refusals on absolute grounds of the Turkish extensions of international trademark registrations are not rare, in such a case, one might wonder what options they have for overcoming the refusal other than filing an objection claiming that the trademarks in question are not identical or indistinguishably similar. There are several ways of addressing it. Here is a summary of the possible approaches:
Taking over the Citation and appealing before the Higher Council
You may negotiate with the Citation Owner. A takeover of the Citation will ensure that you then hold the earlier registration or application subject to the Citation. But this will still need to be explained to the Turkish Trademark Office in the form of an appeal to the Trademarks Department decision.
You will need to look for and observe how frequent and on which goods or services the Citation's owner uses the Cited Trademark if at all. This may give an idea of how much investment the owner put to its marketing/branding activities with the use of the Cited Trademark, i.e. how valuable the Citation is to its owner, how receptive the owner will be against an offer of takeover. It will matter if the Citation is used in accordance with its goods/services coverage as well. The aim is to define the best strategy to approach all the while keeping to the deadlines for appealing before the Higher Council.
Negotiating with Citation's owner for obtainment of a Letter of Consent and, again, appealing before the Higher Council
The new IP Code that applies to trademark applications filed after January 10, 2017, brought the possibility of overcoming ex-officio refusal decisions due to citation of (an) earlier trademark/s by submitting a Letter of Consent obtained from Citation Owner.. In this respect, it is possible to contact the Citation's owner.
An important consideration in this option may be whether or not you wish to coexist with the Citation's owner who will also continue to have full-fledged rights and benefits of owning their prior trademark — a compromise you will not be giving in case you take over the Citation. Needless to say, you still need to keep an eye on the Higher Council appeal deadline and be willing to refile if no Letter of Consent is obtained before the due date.
Instituting a non-use cancellation action against the Citation
As hinted at above, your search may reveal that the Citation is not put to any genuine use at all, and this, for the 5 years counting back from the date of your international registration — if the Citation is registered for more than 5 years at the time you take action...
To be relatively confident that they have not been using this trademark, it is within reason to conduct an onsite in-use investigation at the premises of the Citation owner, or wherever you suspect they may be using the Cited Trademark and choose this option only if the investigation results in favour of the non-use for the last 5 years. Filing a non-use cancellation action may go hand-in-hand with a request for takeover. Chances are, the Cited Trademarks owner will prefer to transfer the trademark or grant a Letter of Consent instead of incurring legal defence costs, a possibility to instrumentalize the non-use cancellation action to leverage your position in negotiations.
Last but not least, since TURKPATENT is not bound to await the outcome of the cancellation action that needs to be filed before the competent court, it may be necessary to make periodical filings throughout the proceedings lest a third party or the Citation's owner interfere chronologically between your trademark application and the Citation — for third parties, that is possible if they have obtained a letter of consent from the Citation owner.
The above is by no means intended to be an exhaustive list of ways or strategies in dealing with refusals.
The best strategy will need to be catered according to the exact circumstances of a given case, however, the above represent what would be agile, versatile, value-added and business minded approach to respond against refusals, for trademarks to be used in the Turkish market.
Originally Published 06 December 2020
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.
