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Overview of Turkish trademark system

Picture of 弁理士 杉浦健文

We will summarize key points regarding the Turkish trademark system from application to registration, maintenance management, and dispute resolution for our Japanese corporate clients. In Turkey, a new industrial property law (Industrial Property Law No. 6769) came into effect in 2017, and major changes have been made to trademark application procedures, opposition systems, cancellation procedures, etc. Below, we will explain what you need to know in practice for each topic.

Flow from application to registration

Application requirements and representation: In Turkey, foreign companies and non-residents, including Japanese companies, must be represented by a local patent attorney (trademark agent). Although there is no requirement to submit a power of attorney at the time of filing, the agent must have a signed power of attorney from the client (original or certified copies may be requested by the office). Turkey is a member of the Nice Classification, and multi-class applications are also possible. The application form should include applicant information, agent information, a depiction of the trademark (image file, etc. in the case of a figurative trademark), and a list of designated goods and services (based on the Nice International Classification). If necessary, priority can be claimed, and a priority certificate must be submitted within three months from the filing date. It also supports electronic online filing, and can be filed electronically from Japan.

Examination procedure: After filing, a formality examination is first conducted to check for deficiencies in documents, fee payment status, appropriateness of product classification, etc. You will be notified of any deficiencies and given the opportunity to correct them, usually within two months. If the formal requirements are met, the application will proceed to a substantive examination (examination of absolute registration requirements) by an examiner. The Turkish Patent and Trademark Office (TÜRKPATENT) examines absolute grounds for refusal such as the lack of distinctiveness of a trademark, descriptive indications, the risk of causing a misunderstanding of the quality of goods and services, and violations of public order and morals. In addition, in Turkish examination practice, the existence of identical or nearly identical earlier trademarks (related to identical or similar goods or services) can also be rejected as an absolute ground for refusal. This is similar to the relative grounds for refusal in Japan, but under Turkish law, trademarks that clearly conflict with each other at the examination stage are rejected ex officio. However, it should be noted that the risk of confusion due to similar earlier trademarks will not be determined ex officio, and will be registered unless an opposition is filed as described below.

If the reasons for refusal are notified as a result of the examination, the applicant can appeal against the refusal by submitting a written opinion within 2 days from the date of notification. If the rejection decision at the examination stage is overturned by the written opinion, the application will proceed directly to the publication procedure. In the case of partial rejection (rejection of only a part of the designated product, etc.), the part that is not rejected will be advertised once, but if the rejected part is overturned by a written opinion, the entire product will be advertised again. If the application passes the examination without any problems, it will also be published in the official gazette.

Publication/Registration Decision: Trademark applications that have cleared the examination will bepublished in the Trademark Bulletin for two months, and oppositions will be accepted. If this publication period passes without any objections, or if the applicant ultimately wins the case even if there are objections, the Office will send a notice of payment of the registration fee to the applicant (agent). The applicant is required to pay the prescribed registration feewithin two months from the notification. If you pay on time, your trademark will beregisteredand a certificate of registration will be issued. Please note that if you do not pay the registration fee by the deadline, your product will not be registered and your rights will not be acquired.

Period from application to registration: In cases where the procedure goes smoothly and there are no notices of reasons for refusal or opposition, it generally takes about 8 to 10 months from application to completion of registration. However, if an objection or appeal arises, the period will be longer. In addition, in the case of International applications via the Madrid Protocol, they are examined after receiving a notification from the International Bureau, so generally the processing period tends to be longer than that of pure domestic applications (details are provided below).

Objection system

Opposition Overview: In Turkey, interested parties can file an opposition withintwo months of the publication of a trademark application in the Official Gazette. *Before the new law went into effect in January 2017, the period was three months, but it has now been shortened to two months. By filing an opposition, you have a chance to have your application rejected before it is registered. Both absolute grounds for refusal and relative grounds for refusal can be asserted as grounds for opposition, and filing in bad faith can also be a ground for opposition. For example, an opposition can be filed on a variety of grounds, such as ``the applied trademark is descriptive,'' ``the applied trademark is similar to a registered well-known trademark and there is a risk of confusion,'' ``it harms the rights of another person's well-known unregistered trademark,'' or ``the applicant has malicious intent.'' It is stipulated that only interested parties can object, but in the case of absolute grounds, competitors in the market may also raise objections by asserting their interests. In the case of relative grounds (such as a conflict with a first-filed right), the trademark owner or user who holds the right before the trademark is usually the person filing the opposition.

Opposition procedure: Oppositions are filed with the Patent and Trademark Office (TPTO). If you are submitting an objection via a representative, please be careful if you do not attach a power of attorneyat the time of submission, as the objection will be rejected due to a lack of formality. Once the opposition is accepted,in the case of a national application, the Office will send a notice of the reasons for the opposition to the applicant. The applicant (applicant) will have an opportunity to submit a written opinion (written reply) and refute the grounds for objection within approximately one month after receiving the notification. The procedure will proceed even if you do not submit a written answer within this period, but even if you do not submit a written answer, the Office will consider the grounds for objection ex officio and make a decision. In the case of an international application (designated by MADPRO), please note that the office will not directly serve the applicant with a notice of opposition. The holder of the international registration will receive a notice of provisional refusal via WIPO, but it is important to manage it so that nothing is overlooked (points to note when applying for MadPro are described below).

The Office will conduct a written hearing regarding the grounds for objection, and may request additional information to be submitted as necessary. During the hearing of an opposition, if the registered trademark on which the opposition is based has been registered for more than five years, the applicant can request the opponent to submit evidence of use of the registered trademark. This is called thenon-use defense system, and is a mechanism for rejecting objections when the trademark cited in the objection has not been used for a long period of time. If the objector cannot prove that legitimate use has occurred within the past five years, the objection will be dismissed or considered only to the extent of the goods and services for which it can be proven. Therefore, when filing an opposition based on a trademark that has been registered in another country for more than five years, it is necessary to prepare in advance the history of use in Turkey, and conversely, the applicant may be able to invalidate the opposition by exploiting the other party's non-use.

As a result of the hearing, the Office will decide whether to accept the objection and reject the application in whole or in part, or to reject the objection and maintainthe application. The standard hearing period for a decision is approximately 6 to 8 months. Parties who are dissatisfied with the opposition decision (both the applicant and the opponent) can file an appeal (trial) requesting re-evaluation of the examination with the Re-examination and Evaluation Board within the Patent and Trademark Office within two months from the date of notification of the decision. Appeals are also held in written form, and both parties are given an opportunity to submit additional opinions for approximately one month. If you are still dissatisfied with the decision by the Board of Appeal, you can finally file an action to revoke the decision with theAnkara Intellectual Property Court. The deadline for filing a lawsuit is within two months from the notification of the trial decision. In a trial, the Patent and Trademark Office and the opposing party are named as defendants, and the court conducts the hearing. If you include the court's decision, it may take several years from the stage of objection to resolution, so if you receive an objection, it is important to consult with experts as soon as possible and take appropriate measures.

Invalidity/cancellation system

Even after trademark registration, there are means to invalidate or cancel the registration for certain reasons. Turkish law distinguishes between ``invalidity'' and ``cancellation,'' but we will provide an overview here.

Invalidation trial (invalidation of registration): If a registered trademark should not have been registered in the first place, it can be declared invalid. What can be asserted as grounds for invalidation are absolute grounds for refusal or relative grounds for refusal that existed retroactively at the time of filing. For example, grounds for invalidation include ``the trademark was descriptive and could not originally be registered,'' ``the trademark was confusingly similar to someone else's earlier filed trademark,'' and ``the applicant had malicious intent.'' Invalidity claims (invalidity actions) must be broughtwithin 5 years from the date of registration. However, invalidity claims based on bad faith of the applicant can be made without time limit. This five-year limit is intended to limit invalidity claims based on relative grounds after a long period of time has passed since registration in good faith, from the perspective of stabilizing rights. In addition, even if a trademark has been registered for more than five years, if the right holder is aware of the subsequent use of a similar trademark and does not raise an objection or injunction for five years, it will be considered non-exercise (implied acceptance), and there are provisions that prevent the trademark from being invalidated or injunctive. Therefore, if you become aware of the use of a similar trademark by another company, you are required to consider legal action in a timely manner, rather than leaving it unattended.

Procedures for invalidation are basically carried out by litigation in the intellectual property court. If the trademark registration is invalidated, it will become retroactively invalid and will be considered as if it had never been registered in the first place. Furthermore, the user of an unregistered well-known trademark may be able to invalidate another person's registration based on his or her own use (invalidation due to prior user rights/well-known trademarks). The burden of proving the reasons for invalidation lies with the requesting party, so it is necessary to prepare sufficient evidence (for example, materials showing the existence of a prior trademark or its well-known status).

Cancellation (cancellation of non-use/extinction of trademark rights): If a trademark is not used properly or has lost its function as a trademark after registration, you can request for cancellation (extinction of rights). A typical example is cancellation for non-use, in which interested parties can request cancellation if the trademark is not continuously used in Turkey after 5 years from registration. In the event of a request for cancellation, the trademark owner must submit evidence of use within one month of notification of the request (non-use unless there is a valid reason is fatal to maintaining the right). A one-time additional one-month extension may be granted. When calculating this period of non-use, last-minute use immediately before a cancellation request (use within 3 months before the request) is not taken into consideration. Without proof of legitimate use, the trademark will be cancelled. The current law that came into effect in 2017 originally stipulated that the Patent and Trademark Office (TPTO) had the authority to review non-use cancellations, but due to transitional measures, cancellation proceedings at the TPTO will begin from January 10, 2024. Previously, the procedure was time-consuming and costly because it was handled in court, but now it is possible to cancel non-use more quickly and at lower cost through Administrative cancellation trial procedures. Due to this legal reform, it is expected that the number of non-use cancellation requests will increase in the future. In practice, it is important for trademark owners to actively use their trademarks and to accumulate evidence of use in order to prevent cancellation. Particularly in Turkey, use by the licensee is also recognized as own use (see below), so the use history of the licensee also serves as evidence.

There are several reasons for cancellation other than non-use. As a typical example, if a trademark becomes a common name, or if the use of the trademark causes a misunderstanding about the quality of the registered goods or services, the registration is subject to cancellation. For example, if a trademark becomes a common name in a specific product field after being registered (e.g., a trademark becomes a common name, such as an escalator), or if a registered trademark is used inappropriately by the right holder or a third party with permission, the trademark misleads the public. Furthermore, in the case of collective trademarks and guarantee marks (certification marks), it is said that they can be revoked if their use violates the established regulations. From 2024, the TPTO will have primary authority to examine these grounds for cancellation. The effect of cancellation will be effected in the future after the date of the request in case of cancellation based on ex post facto circumstances such as cancellation of non-use or change to common name. However, if the circumstances exist before the request (e.g. the date of change to common name), it is possible to have retroactive effect. On the other hand, invalidity due to absolute or relative reasons will make the registration invalid retroactively to the time of registration, as mentioned above.

Practical points: When considering invalidation/cancellation, first determine which reason applies, and then check the jurisdiction of the proceedings (TPTO or court). Cancellation for non-use, renaming as a general name, etc. are now relatively easy by filing a petition with the TPTO, but invalidity (cancellation based on first-to-file rights, etc.) still requires filing a lawsuit in court. Additionally, if a Japanese company has not used a trademark locally for many years, there is an increased risk that a third party will request cancellation of the trademark without their knowledge. Anyone can file a request for cancellation if the patent has not been used for five years, so as a defense measure, re-filing a new application every five years is considered (in practice, there is also a strategy of refreshing the term of rights by filing a new application rather than renewing an old registration). Furthermore, if another company's registered trademark is left unused, it is possible to request cancellation and remove the registration from the market. In this way, it is important to note that in Turkey, the track record of trademark use is extremely important in maintaining rights and in litigation. In fact, even if a trademark right owner files an infringement suit, if his trademark has been registered for more than five years but has not been used, the defendant will assert the defense of non-use, and if this cannot be proven, the claim will be rejected. Therefore, it is recommended to continue using the trademark in the Turkish market, or at least to secure and document its sales record, rather than leaving it unattended after acquiring trademark rights.

Trademark usage requirements, renewal system, license registration system

Trademark usage requirements

In Turkey, there is no need to submit an oath of use at the time of application or registration. Unlike the United States, there is no oath of use or a system for submitting evidence of use to maintain registration, and there is no obligation to report usage status at the time of renewal. However, as mentioned above,If the trademark is not used authentically in Turkey within five years after registration, it will be subject to cancellation for non-use. This "use" includes not only use by the trademark owner himself, but also use by a licensed licensee (use with the licensee's consent is considered use by the right holder). In practice, it is desirable to save sales records, advertising materials, transaction documents, etc. with date stamps so that in case of an emergency, you can prove that the product has been used within five years. In addition, in opposition and invalidation/infringement lawsuits, there are cases where the enforcement of rights is rejected by pointing out the non-use of another's old registered trademark, so it is important not only to use your own trademark, but also to understand the status of use of other companies' trademarks.

Registration renewal system

The term of trademark rights in Türkiye is 10 years from the filing date. Please note that this is calculated based on the filing date, which is different from Japan's registration date basis (for example, if it takes one year from application to registration, the remaining term will be 9 years at the time of registration). Trademark rights can be renewed any number of timesevery 10 years and there is no upper limit on the number of renewals. Renewal procedures can be accepted from 6 months before the expiration date, and even after the expiry date, you can renew by paying an additional fee within the 6-month grace period. Basically, you can apply for renewal from 6 months before the expiration date, and you can apply for renewal within 6 months after expiration with a late fee. Once the grace period has passed, the rights will expire and cannot be reinstated. Renewal requires payment of the prescribed renewal fee and submission of a renewal application. Although there is no obligation to submit usage history at the time of renewal, unused rights are always at risk of cancellation as mentioned above, so you should avoid inertia and consider renewing only the rights you need.

License registration system

In Turkey, you can sign a trademark license agreement and allow third parties to use your trademark. Although the license agreement itself islegally valid even without registration with the Patent and Trademark Office, it isnecessary to register the contract with the Office in order to have the power to defend against third parties. In other words, if you do not register your license agreement, you may not be able to assert the license against a bona fide third party (such as a trademark assignee). Therefore, it is recommended in practice that important license agreements be promptly registered with the Agency. To apply for license registration, a contract must be notarized and submitted. In particular, contracts concluded outsideneed to be notarized in Turkey and additionally undergo consular authentication (apostille, etc.). The contract must specify the trademark registration number and name, the scope of the licensed goods and services, the type of license (regular or exclusive), and the period, and must be signed by both parties.

Licenses include exclusive licenses and non-exclusive licenses, which are considered non-exclusive unless otherwise specified in the contract. In the case of an exclusive license, the licensee (licensee) can, in principle, claim injunctions and damages for infringement by a third party in the same way as the rights holder (unless otherwise provided in the contract). On the other hand, in non-exclusive licenses, the licensor usually exercises the rights. Even if licensed, use by the licensee is considered to be the right holder's own use as stated above. However, if the contract is not registered, the licensee's usage history may be at a disadvantage when competing with a third party, so it is always better to register the contract.

Remedies for infringement of rights

If a competitor appears in Turkey that infringes on your company's trademark rights, it is possible to take legal remedies from civil, criminal, and administrative (customs) aspects. Below, we will explain the key points for each method.

Civil remedies (injunctions, claims for damages, etc.)

If a third party infringes on a trademark right, the trademark right holder can file a civil lawsuit (suit for injunction and damages). In specialized intellectual property courts (located in major cities), the existence of infringement and the amount of damages are disputed. The main civil remedies that can be claimed include injunction (to stop or prevent infringing acts), seizure or destruction of infringing goods, removal of trademark notices, removal of infringing content on the Internet, publication of judgment, and compensation for damages. Regarding injunctions, it is also possible to obtain a provisional disposition (temporary injunction) from the court before a lawsuit is filed or while the lawsuit is pending. When prompt action is required, such as stopping the distribution of counterfeit products, there is a practice of filing a motion for a provisional injunction before filing a lawsuit in order to preserve evidence. Please note that even if a provisional disposition order is obtained, there is a provision that it will become invalid if the main suit is not filed within two weeks.

With regard to damages, Turkish law does not have any legal upper or lower limits on the amount of damages. The court will calculate the damages individually based on the actual damages (reduced sales due to infringement, etc.), the amount equivalent to license royalties, and the profits earned by the infringer. Mental damages (damage to brand image, etc.) may also be awarded, and the amount will be determined at the judge's discretion. However, since 2019 in Turkey, it has been mandatory for damages claims in civil cases to undergo mediation before filing a lawsuit, and claims for damages will be dismissed unless they go through public mediation first. Therefore, if you wish to claim damages from the infringer, you must first apply for mediation through a lawyer. This is the process of proceeding to trial only if mediation is unsuccessful.

It is also necessary to pay attention to the statute of limitations period for infringement lawsuits. In general, a civil lawsuit must be filed within two years after the rights holder becomes aware of the infringement and the infringer, and the right to claim will expire after up to ten years from the time the infringement occurred. Once the statute of limitations has passed, redress becomes difficult, so it is important to take legal action as soon as you discover infringement.

Criminal penalties/criminal procedures (counterfeit products countermeasures)

In Turkey, trademark infringement can be subject to criminal penalties. In particular, acts that cause confusion by using a mark that is the same or similar to a registered trademark on goods or services without permission, or acts that free ride on or dilute the trust of a well-known trademark are considered crimes under the criminal law. If malicious trademark infringement is suspected (e.g. manufacturing or selling counterfeit products), the right holder can file a criminal complaint and request action from the investigative authorities. Specifically, a public prosecutor who receives a complaint from a trademark owner conducts an investigation and, if necessary, applies for a search and seizure warrant to the criminal court (magistrate court). Once a warrant is issued, the police will raid a warehouse or store and seize (confiscate) the infringing products. The seized items are then evaluated to determine whether they are genuine or counterfeit items, and if evidence of infringement is confirmed, prosecutors will proceed with criminal prosecution.

In criminal proceedings, the first step is an opportunity for reconciliation between the parties. This is a system that allows the case to be concluded without starting a trial if the infringer offers compensation for damages and a settlement is reached. If no settlement is reached, the case will proceed to trial and, if found guilty, the infringer will be subject toa fine or imprisonment (or both). The maximum prison sentence is set at 4 years, and in serious cases, a prison sentence is possible. The seized infringing goods will ultimately be confiscated and destroyed at the discretion of the court. Please note that criminal proceedings do not provide compensation for damages to the trademark right holder who is the victim (damages must be claimed separately in a civil lawsuit).

Administrative measures (customs injunction, etc.)

Administrative remedies include import suspension system at customs. Companies with trademark rights in Turkey can take advantage of the system in which customs authorities can stop counterfeit goods from being imported or exported by registering their trademarks with the customs authorities. Once you register your trademark with customs, the authorities will strengthen their surveillance and if suspicious cargo is found, they will suspend customs clearance and notify the right holder. Rights holders must apply for an injunction or take judicial proceedings within a certain period of time, but this allows them to stop domestic distribution of counterfeit products at the border. In particular, Turkey is a logistics hub connecting Europe and the Middle East, and there is a risk of it becoming a transit point for counterfeit goods, so major brands should consider customs registration.

Also, if the sale of malicious counterfeit products is widespread, it is possible to cooperate with government authorities (e.g., market supervisory bodies or local enforcement agencies) to conduct unannounced inspections of stores and markets. However, these measures cannot be completed by the government alone, as the courts will ultimately need to be involved in matters such as disposing of seized items. However, pressure and guidance at the administrative level are effective in deterring violations. It is recommended that rights holders themselves conduct market research and consult the authorities as soon as possible if there are any signs of infringement.

Relationship with the Madrid Protocol

One way for Japanese companies to obtain trademark rights in Turkey is to use an international trademark application (international registration) based on the Madrid Protocol (so-called Madrid Protocol). Turkey became a Madpro member country in 1999, and by filing an international application based on a Japanese trademark and adding Turkey to the designated countries, you can obtain the same effect as filing within Turkey. In the case of an international application, the application procedure itself can be completed without directly appointing a local agent, but the subsequent examination and opposition handling are basically the same as for domestic applications.

Points to keep in mind when applying for MadPro:

  • Examination/Opposition handling: Even if Turkey is designated through an international application, the Turkish Patent and Trademark Office will examine it using the same standards as a domestic application, and if there are grounds for refusal or opposition, it will issue a Notice of Provisional Refusal. This notification will be sent to the applicant in Japan via WIPO (International Bureau). Therefore,even if an opposition is filed within the opposition period (two months after publication), the applicant will not be notified directlyand will be notified via WIPO in the form of a provisional refusal by Opposition. If you overlook the notice, you will miss the deadline for rebuttal, and in the worst case scenario, you will not be able to obtain rights in Turkey. In practice, when you designate Turkey in your MadPro application, it is desirable to appoint a local representative to monitor and respond. In particular, it is necessary to respond to an opposition and submit a written opinion regarding the reasons for refusal in Turkey, and it is essential that a local representative respond. In that case, you will need to submit a power of attorney to the agent, just as in the case of domestic applications.

  • Processing period: When using Madpro, the Turkish Agency is supposed to notify the examination results within 18 months in principle. However, if an objection is raised, this period may be extended, and processing tends to take longer than for domestic direct applications. This time lag should be taken into account if you want to obtain rights early or if you want to take advantage of the time in your application strategy.

  • Designated goods/classification: In an international application, even if the designated goods are written in Japanese, the application will ultimately be translated into English, etc. and sent to the Turkish Office. Turkey uses the Nice classification, so if the application is in the same category and product as the application in Japan, it will basically be accepted without any problem. However, there are nolocal classes (unique similar group codes, etc.), and the interpretation of the designated product range is left to Turkish law. Even if the designation is extensive in Japan, if the Turkish examiner deems it unclear, an amendment order may be issued. It is advisable to make the product description as clear as possible.

  • Language/Indication: If the trademark is expressed in non-Latin characters such as Japanese, it is recommended to attach Romanization (transliteration) or an English translation of the meaning to the international application. The Turkish Office may also require transliteration data into Latin characters for trademarks in non-Latin characters. There is usually no problem if you are submitting via WIPO, but it is a good idea to decide on the appropriate alphabetic notation before filing.

  • Fees: For MadPro applications, in addition to the basic fee to WIPO, you will pay an individual fee specified by Türkiye. This fee is equivalent to the application fee and registration fee for a domestic application, and is paid in one lump sum at the time of international registration. If there are no additional costs, there is no need to pay a separate fee in Turkey at the time of registration (if you were applying domestically, you would have had to pay the registration fee, but with Madpro you can pay that amount in advance). However, if a local agent is appointed later, agent fees will be incurred separately.

  • Right maintenance: Turkish trademark rights obtained through Madpro have the same validity and duration as domestic registrations. The validity period is 10 years from the filing date (international registration date), and renewals can be done via WIPO. The same goes for the fact that if you forget to pay the renewal fee, your protection will be interrupted. In addition, the usage requirements are exactly the same, and if it is not used within Turkey within 5 years, there is a risk of non-use cancellation (even international registrations are treated the same as domestic registrations). You also need to be careful about Central attack if the registration in the home country (Japan) disappears within 5 years. If the underlying Japanese trademark is canceled within 5 years of issuance, the Turkish designated portion will also expire. However, in that case, to maintain protection in Turkey, you can complete the conversion procedure from MadPro to a national application within three months. It is a good idea to keep this in mind as a remedy in case of an emergency.

The above is an overview and practical points to keep in mind regarding the Turkish trademark system for Japanese companies. Turkey is an important base for the European and Middle Eastern markets, and although its trademark system is similar to the EU, it also operates independently. Please refer to this guide to obtain appropriate rights and take protective measures.