The Industrial Property Law Numbered 6769 (the " Law"), published in the Official Gazette on January 10, 2017 and entered into force as of the same date, started a new era in the field of trademarks, patents, industrial designs and geographical indications.
As a result of the effectivity of the Law, Turkish regulations have become more harmonized with recent developments in EU IP Law. The fundamental changes were explained in our previous article. In this article, "letter of consent", which is one of the most important novelty within the scope of trademark law, will be examined in detail. Basically, this new provision will make registrations of trademark applications which are identical or indistinguishably similar with an earlier dated trademark registration/application possible.
The issues of concern regarding this new provision's application are clarified with the Regulation on the Implementation of the Industrial Property Law published in the Official Gazette dated 24 April 2017 ("Regulation") and explained in this article with all details.
Registration applications of "trademarks identical or confusingly similar to a trademark registered or filed for registration earlier in respect of an identical or confusingly similar type of product or service" are regulated under the title "Absolute Grounds for Refusal of Trademark Registration", as it was in the Decree-Law No. 556 Pertaining to the Protection of Trademarks.
However, the Law enables this registration when a notarized letter of consent from the senior trademark owner to the registration of the application is submitted to the Turkish Patent and Trademark Authority ("TPTA").
This provision is written based on EU IP Regulations. Directive (EU) 2008/95 of the European Parliament and of the Council stipulates that this kind of applications, which there is a likelihood of confusion with an existent trademark, can be registered in member states if the senior trademark owner gives her/his consent. This implementation, which is known as the co-existence principle and has being implemented in EU IP Law, now has brought to the Turkish Trademark Law by the Law. In this way, even confusingly similar trade mark applications for the same good or services can be registered by the TPTA with the notarized consent letter of the previous trademark owner.
According to the general preamble of the Law, it is intended to protect the applicants' wills to be co-existence in the market together, especially those who are dependent on each other financially or in other means.
It should be emphasized that the content of letter should be clearly specified to indicate which goods and services are covered by the letter of consent. Since, article 10 of the Regulation specifies that the letter of consent cannot be taken back once it is submitted.
What are formal requirements for the letter of consent ("The letter")?
- The letter should be prepared in a signed form which is accepted by TPTA and should be approved by the notary.
- In cases where there are exclusive right owners who are not registered, their written consents should be submitted as well.
- The letter must be given unconditionally.
- Every letter should be submitted separately for each of trade mark application; a single letter of consent cannot cover more than one trademark registration.
What are the particulars that should be specified in the letter?
It is obligatory that the following issues, listed below and held in article 10 of the Regulation, should be in the signed form to be provided to TPTA.
- Identifications and communications information of Applicant/Applicants should be written.
- If the consent form is presented at the application stage, the trademark's sample which is subject of the consent letter; if it is presented during the appeal against decision, application number of the application that is subject of the consent letter should be written.
- Identifications and communications information of a consenting person/people and registration or application number of the previous trademark or previous application should be written.
- The classification of the goods or services that are the subject of the letter and their classification number should be written.
- If the consent form is signed by the representative on behalf of the right owner or the applicant, a notarized proxy statement that includes authorization of consent or a notarized copy of it should be submitted.
In the event that the consent form does not contain the above mentioned elements, a period of two months shall be provided the applicant to complete the said shortcomings. If the deficiencies are not completed within this given period, the request is deemed not to have been made.
The consent form may be submitted to TPTA together with the application form or until the decision about appeal against decision is adopted in case of an opposition. In cases where the consent form is not submitted to TPTA although the consent letter is requested, no deficiency shall be reported to be completed and the request shall be deemed not to have been made.
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.