Trade and Service Marks

– Act No. 6769. The law was enacted on December 22, 2016 under the title Industrial Property Law. The large majority of the provisions of the Act are enforceable as of January 10, 2017. The prosecution of an application filed prior to January 10, 2017 will be finalized in terms of the former legislation.
Chapter One of Act No. 6769 consists of the provisions of Articles 4-32. They deal with matters solely concerning trade and service mark rights, as well as rights concerning collective and association marks.
Chapter Five of Act No. 6769 comprises the provisions of Articles 146-193. They deal with matters applicable collectively in respect of rights concerning patents, utility models, marks, designs and geographical indications.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods.
– Convention Establishing the World Intellectual Property Organization (WIPO), since May 12, 1976.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since September 29, 1985.
– WTO’s TRIPS Agreement, since March 26, 1995.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since January 1, 1996.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since January 1, 1996.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since January 1, 1999.
– Trademark Law Treaty, since January 1, 2005.

Filing

Applicant: an individual or a corporate body. 

Applicants not living in the country: must appoint a local trademark agent. 

Types of marks: (a) trade or service marks; (b) guarantee marks; (c) collective marks.

Novelty: not required.

Not registrable on absolute grounds: (1) signs which (a) do not incorporate features imparting characteristics to allow their registration as a trade or service mark, i.e. which cannot be accepted as a trademark in accordance with Article 4 of Act No. 6769, (b) are devoid of any distinctive character, (c) either exclusively or as a main feature thereof, are descriptive as regards the kind, variety, qualification, quality, amount, purpose, value, geographical origin, or time of production of goods or of rendering of the services or other characteristics of goods or services, (d) are identical or indistinguishably similar to a trademark that has been registered or filed earlier for identical or same type of goods or services, (e) are commonly used in trade or comprise, either exclusively or as a main feature, designations that distinguish a particular group engaged in a specific professional or artistic or commercial activity, (f) consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or other characteristics which is mandatory to obtain a technical result or gives substantial value to the goods, (g) may confuse the public for instance, as regards the inherent qualification, quality, or geographical origin of goods or services, (h) would violate the provisions of Article 6ter of the Paris Convention, (i) are other than those covered by Article 6ter of the Paris Convention but which are of public interest, and which contain historical, cultural values, and emblems, badges or escutcheons for which the consent of the competent authority has not been given, (j) comprise religious values or symbols, (k) are contrary to public order or accepted principles of morality, (l) consist of a registered geographical indication or comprise a registered geographical indication; (2) marks that may have acquired distinctiveness as a result of their use prior to the filing of an application for their registration shall not be denied registration on account of circumstances defined in either (b), (c) and (d) above; (3) neither an application for a trade or service mark shall be denied registration in case of filing to demonstrate the consent of the owner in Turkey of an earlier mark to the registration of the mark of an application, a specimen of the consent form prepared for use by the Office for such matter and carrying the certification of a notary public.

Not registrable on relative grounds: a person entitled in terms of subparagraph (1) of Art. 3 of Act No. 6769 to be an opponent may oppose a published application in the course of a non-extendible two-month term following its publication due to any of the circumstances defined in subparagraphs (1) to (9) of Art. 6 of Act No. 6769. 

Colors: an application for the registration of one or more colors is to be filed by specifying such claim(s) to color(s) in writing in the application form filed; produce a specimen of a color mark and indicate the code(s) attributed to the color(s) comprised in a representation by the entity Pantone; provided a color mark is not illustrated/represented in combination with an object, figure, picture or word which otherwise would not be treated as a color mark. 

National flags: cannot be registered unless the government concerned specifically consents to such registration. 

Names or portraits: may be registered. 

Association marks: not provided for.

Priority: six months according to the Paris Convention.

Classification: international. Applications of different parties are accepted for goods/services falling in an identical international class if the goods/services that fall in a same class are comprised in different subgroups devised by the Turkish Patent and Trademark Office. A single multi-class application may be filed both for goods and services. 

Territory covered: Republic of Turkey.

Filing requirements for an application (to be sent to resident agent):
1. 1 specimen of the trade/service mark in .jpg format;
2. Priority document (if any) must be filed within three months of filing date.

Minimum requirements for filing: full name and address of an applicant; one specimen of the representation of a trade/service mark; specification of goods and/or services; particulars of corresponding foreign registration or application (if priority is claimed). Document (2) may be filed later. 

Electronic filing: possible. Scanned copies of original signed documents are accepted and the subsequent submission of the original is not required, however, it is advisable to keep the original in case the relevant authority requests it at a later date.

Examination Procedure

Examination: an official examination as to registrability is carried out. 

Disclaimers: not available.

Letters of consent: are accepted, provided the form used for submission of a consent document to enable the furtherance of an application’s prosecution is precisely a copy of the form drawn up by the Office for such matter. A letter of consent must carry notarization. If notarization is performed in a jurisdiction other than Turkey, additionally the document must carry legalization performed in the jurisdiction of notarization.

Amendment of application: is allowed for effecting a restriction in the specification of goods/services or for division of an application. 

Opposition: may be filed within a non-extendible term of two months after publication of an application in the Bulletin of Marks.

Disputes about ownership: the registration of an application is refused upon opposition of the proprietor of a prior sign, if a right to a non-registered trademark or to another sign used in the course of trade was acquired prior to the date of application or the date of the priority claimed for the application. Ultimately, it may be necessary to challenge the Office action before a civil court. 

Appeal: before the Board of Re-examination and Re-evaluation; and ultimately before a civil court. As of January 10, 2024, the Turkish Patent and Trademark Office will become the authorized body to consider and determine requests for cancellation actions based on account of the existence of any of the circumstances defined in terms of Art. 26 of Act No. 6769. Until 2024, the courts will continue to be the authorized body to handle the cancellation actions.

Urgent registration: not possible. 

Urgent examination: not possible. 

Provisional registration: not possible. 

Publication: following the acceptance of an application. 

Correction of registration: possible for clerical errors at the Trademark Office.

Granting

Delivery of document: a certificate of registration is delivered if no opposition is filed, or on settlement of the disputed opposition. 

Beginning of protection: the filing date of an application or priority date, if available. 

Duration: ten years.

Compulsory character of registration: is confirmed in Act No. 6769 in order to be entitled to seek relief against infringers.

User rights: are taken into consideration when an application is filed. 

Marking of registered goods: optional. 

Text of marking: if the goods are marked, an indication of the registration number is advisable. 

Renewal: possible, six months before the expiration of the term, for each further period of ten years. 

Grace period for renewal: six months with fine.

Modification of the mark: not possible. 

Changes in the list of goods: only limitation is permitted. 

Licenses: are not valid against bona fide third parties unless entered in the Register. An agreement must contain specific clauses as to the conditions of licensing, the licensed goods, the licensed mark(s), the duration and the amount of the consideration (if any) against which license is granted. 

Assignment: possible, both prior to or subsequent to the registration of a mark. Also, it is possible for an assignment to be effected either for the entire or in part assignment of the goods/services an application or a registration covers.

Modification of Protection after Registration

Opposition to registered marks: is possible after registration. This is possible by way of filing a civil court action against a registrant on account of the existence of any of the circumstances defined in Art. 5 of Act No. 6769 for reason of invalidity on absolute grounds or of circumstances defined in Art. 6 of Act No. 6769 for reason of invalidity on relative grounds of a registration.

Expropriation: not provided for.

Modification of the mark: third parties may introduce a legal action against a registrant on the grounds that a registered mark is used in a modified manner; that in such modified representation the registered mark is being used with elements no longer carrying characteristics which imparted distinctiveness to the registered mark. It will remain with a civil court or a Civil Court of Intellectual and Industrial Rights to assess in the course of cancellation proceedings whether or not the modified representation of a mark has retained the distinctive characteristics of the mark as originally registered. 

Nullification: a trademark registration may be subject to cancellation/nullification on account of the existence of any of the circumstances defined in terms of Art. 26 of Act No. 6769. An action for nullification requires the introduction of a civil law court proceeding. However, as of January 10, 2024, the Turkish Patent and Trademark Office will become the authorized body to consider and determine requests for cancellation/nullification actions based on account of the existence of any of the circumstances defined in terms of Art. 26 of Act No. 6769.

Obligation to use: should start sooner than the expiration of five years from a mark's registration date. A trademark is considered as validly used if it is used (a) in a form not diverging inherently from the form of the registered representation; (b) on products or their packaging for export trade alone; (c) on imported products or their packaging; (d) by a licensee. The recordal of a license agreement before the Trademark Office is not compulsory by law. The cancellation of a registration for non-use may not be obtained unless a legal proceeding is introduced and a court order for cancellation is issued following the conclusion of the court proceeding. 

Validation of invalidated marks: not provided for. 

Provision for restoration: possible through re-registration. 

Registration of invalidated marks: not provided for. 

Infringement: occurs as a result of a number of incidents.

Penalties: depend on the nature of the infringement and vary from monetary fines to cases of imprisonment.