On 17 May 2012, the Turkish Trademark Office has issued a notice with respect to the change of practice concerning retail services of class 35.

1) A trademark can no longer be registered for the services of “the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods”. The specific goods on which the service will be offered have to be identified.

2) If a registration or an application filed prior to 19 October 2011 covers the services mentioned above, a later application for an identical or confusingly similar trademark covering these services for any specific goods will not be allowed. Example; a prior registration “the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods”. A new application for a confusingly similar mark covering “the bringing together, for the benefit of others, of electronics, enabling customers to conveniently view and purchase those goods” will not be allowed.

3) As to how the Trademark Office will conduct its examination on absolute grounds, please see the below examples provided by the Trademark Office:

a) Prior application / registration covers : “the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods”.

The new application covers : “the bringing together, for the benefit of others, clothing, footwear, headgear, enabling customers to conveniently view and purchase these goods”.

Outcome : Services are identical and the new application will not be allowed registration.

b) Prior application / registration covers : “the bringing together, for the benefit of others, of perfumery and cosmetics, enabling customers to conveniently view and purchase these goods”.

The new application covers : “the bringing together, for the benefit of others, deodorants, skin-care, make-up, enabling customers to conveniently view and purchase these goods”.

Outcome : Services are identical and the new application will not be allowed publication.

c) Prior application / registration covers : “the bringing together, for the benefit of others, of perfumery, cosmetics, clothing, enabling customers to conveniently view and purchase these goods”.

The new application covers : “the bringing together, for the benefit of others, deodorants, clothing, footwear, headgear, enabling customers to conveniently view and purchase these goods”.

Outcome : Services are identical as far as deodorants and clothing are concerned and the new application will not be allowed publication for these goods. Services are not identical as far as footwear and headgear and concerned and the new application will be allowed for publication for these goods.

d) Prior application / registration covers : “the bringing together, for the benefit of others, of clothing, enabling customers to conveniently view and purchase these goods”.

The new application covers : “the bringing together, for the benefit of others, footwear enabling customers to conveniently view and purchase these goods”.

Outcome : Services are not identical and the new application will be allowed publication. However, it is uncertain as to how an opposition would be decided on the basis of confusing similarity between the goods and therefore the services.

If you have any questions about this change, please do not hesitate to let us know.