Ipek Esiner - Omer Dundar
The Industrial Property Law numbered
6769 (the “Law”) introduced significant changes to the protection and
enforcement of industrial property rights in Turkey.
One of the
significant changes brought by the Law is the requirement to prove genuine use
(or justification for non-use) of the trademark cited for opposition, if so
requested by the applicant, provided that such trademark is registered for five
years or more.
As far as the
national trademark applications are concerned, the Turkish Patent and Trademark
Office (the “Office”) reports the oppositions to the applicants and grants them
a non-extendible deadline of one month to file their counterviews and/or raise
a non-use defense. If the non-use defense is not raised before the Office
within the deadline, it is deemed not filed and the opposition is examined in
the absence of the subject non-use claim.
applicants of national trademarks enjoy this new opportunity to challenge third
party oppositions based on trademarks that are not in use, applicants who
follow the Madrid Protocol miss the same opportunity, because the Office does
not report oppositions filed against the Turkish designations of International
Registrations (“IR”) to the applicant or its representative. This is
true even if a local Turkish representative is appointed before the Office for
opposition is accepted, the Office then notifies WIPO by issuing a provisional
refusal. As such, by the time an applicant becomes aware of an opposition, the
applicant has already missed the opportunity to respond to the opposition or to
file a non-use defense, if applicable.
also presents itself in cases where failed oppositions are followed by
successful appeals. In such cases, the administrative steps are exhausted and
IR holders find themselves in a situation where the only way to challenge the
decision is to file a lawsuit before Courts.
circumstances, we recommend that clients who prefer to use the Madrid Protocol
to seek protection of their trademarks in Turkey monitor the Turkish
designations so that they can take the necessary action in a timely manner in
case the application was opposed.
context, we are offering a complimentary monitoring service to our clients.
You may contact
us at email@example.com for