FAQ - Trademarks | TURKLEGAL | Turkish Patent and Trademark Attorneys

FILING & REGISTRATION

How long does it take to register a trademark application straightforwardly?

A typical trademark application takes 6-8 months from filing till registration (2 months examination stage, 2 months publication stage, 2 months decision phase if no opposition is filed, 1-2 months registration and certification stage). In case of an opposition or ex-officio rejection, each may take 6-8 months plus the same for the appeals.

Which documents and information should be submitted to obtain filing date?

The followings should be submitted to obtain filing date.

- Applicant’s identity details (name or title and address)
- Trademark representation
- List of goods and services
- Payment of the official fee for the application

If any of the above requirements are not met, the formalities officer issues and sends a deficiency letter requesting to complete the missing item within 2 months of the notification of the deficiency letter. The filing date will be amended to the date on which all obligatory information is complete, including the payment.

Is it possible to file trademark applications in more than one class (multi-class application)?

Yes, the applicants can file and claim goods and services in more than one class (multi-class trademark application).
There is no limitation for the classes to be claimed, i.e. the applicants can claim all the classes (45 classes) within the scope of the same trademark application. In that case, the applicants are required to pay official fee for each claimed class.

How are the official fees for filing trademark application calculated?

The official fees are calculated based on the number of the classes. The applicants should pay the same amount for each claimed class.The number of items or headings claimed within each class or the type of the trademark application (color, device, word, 3-D etc.), or type of the entity, legal or natural, does not affect the amount of the filing fee.

Is there any advantage in registering a trademark conventionally (through national route) instead of international registration?

National registration does not prevail on international registration, namely the protection provided by an international registration is the same as the one provided by the national registration.However, Madrid designations have the following disadvantages compared to the local applications.

However, Madrid designations have the following disadvantages compared to the local applications.

- The registration proceedings through Madrid designation takes up to 18 months, whereas it is possible to obtain Turkish trademark registration within 4-6 months (if no opposition is filed) in the case of local applications.
- TURKPATENT does not notify the oppositions in the case of the Madrid designations, which make the applicants devoid of responding to the oppositions.
- As TURKPATENT is not notifying the oppositions, the applicants can be deprived of filing non-use defense against the opposing trademarks, if they are registered for more than 5 years. (please see the section “Oppositions”

Is it obligatory to translate/transliterate a trademark into a Turkish language for the purposes of use and trademark registration?

Turkey is using Latin alphabets in the written language. Therefore, the trademarks of foreign origin expressed in the Latin alphabets are registered as they appear in the language of origin.

Turkish Trademark Law does not require the disclosure of the meaning of the trademark, therefore, no translation of the trademark into Turkish in foreign language, whether such trademark is written in Latin characters or not, is required.

Whereas, if a trademark is expressed in the alphabets other than that in Latin alphabets, e.g. in Cyrillic, Japanese or Chinese characters etc., the transliteration of the trademark into Latin characters are required by Turkish Patent and Trademark Office (TURKPATENT).

What is the definition of the trademark in the Turkish Industrial Property Code?

Trademark is defined in Turkish Industrial Property Code as follows:

Trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor (Article 4 (1) IPC).

Is it possible to register non-traditional trademarks (3-D, odor, sound or motion) in Turkey?

Yes, it is possible to register non-traditional trademarks (3-D, odor, sound or motion) in Turkey according to Turkish Industrial Property Code. Whereas the Code makes it possible, the registration proceedings are extremely challenging.

It should be expected that the application be refused at the first place and the applicants should file an appeal against the refusal and prove that the applied-for non-traditional mark has acquired distinctiveness in the Turkish market.

Does Turkey accept the color marks?

Whereas color can be registered in Turkey per se in view of the definition of the trademark in the Law; in practice, it is extremely difficult to register a color as a trademark. Therefore, when filing a mark of a single color, it is most likely that the application would be refused and it would be necessary for the applicants to prove that the color has acquired distinctiveness in the market in respect of the goods or services for which registration is requested.

It is not possible to obtain protection for a color if the color is registered with a combination of words or figurative elements or images. In other words, for obtaining a registration, color should be claimed per se without any further components within the trade mark.

As the color is registered in Turkey, the relevant public in Turkey should be considered and the public should be able to distinguish that the color is originated from the applicant.

When filing a trademark application claiming “color” only, it should be expressly indicated in the application form and the color code (pantone code) should be provided.

Should I add description of a trademark when filing application?

No, it is not required to describe a trademark when filing.

What are the advantages and disadvantages to register a trademark in color or black & white in Turkey?

It makes sense especially in terms of thegenuine use of a trademark. Turkey has accepted the Common Practice issued by the European Trade Mark and Design Network EUIPO with regards to black and white (B&W) or grayscale marks as compared with colored versions of the same mark.

The said practice especially brings clarification how the genuine use of a trademark is handled with the following evaluation criteria:

A change only in color does not alter the distinctive character of the trademark, as long as the following requirements are met:

-the word/figurative elements coincide and are the main distinctive elements,
-the contrast of shades is respected,
-color or combination of colors does not possess distinctive character in itself and,
-color is not one of the main contributors to the overall distinctiveness of the mark.

For establishing genuine use, the principles applicable to trade marks in B&W also apply to grayscale trademarks.

What is the publication term in Turkey?

The trademark applications are published for 2 months for the oppositions of the third parties in the Turkish Trademark Bulletin.

Should I appoint Turkish trademark agent for trademark proceedings in Turkey?

Anyone, natural or legal entity, who is resident in Turkey, can take any actions (filing, opposition, appeal etc.) before Turkish Patent and Trademark Office without having to appoint trademark agent.

Natural or legal entities who are not resident in Turkey should be represented by a Turkish trademark agent for all the proceedings before Turkish Patent and Trademark Office.

How is the priority claim handled under the Turkish Jurisdiction?

Priority may be claimed of one or more previous trade mark applications filed by the natural or legal entities, who are national or resident of the States party to the Paris Convention or WTO agreement or have established business in those States. The priority may be claimed during the 6 months following the first filing.

The priority claim (including the number, date and country of the previous application) should be filed together with Turkish trademark application and the specific fee for priority claim should be paid. The original priority certificate with its translation into Turkish approved by a sworn translator should be submitted within 3 months from the date of filing of the Turkish trademark application.

Which classification system is used by Turkish Patent and Trademark Office?

Nice Agreement Concerning the International Classification of Goods and Services is used for the classification of the goods and services of the trademark applications.

How do the applicants select and designate the goods and services when filing the trademark application with Turkish Patent and Trademark Office?

There are two different ways to designate the goods and services for the trademark applications.

The applicants can designate the goods and services under the standard heading of each class specified by Turkish Patent and Trademark Office in accordance with the Nice Agreement. Please click here to find the list of goods and services announced by Turkish Patent and Trademark Office.

The applicants can also specify their own list of goods and services without depending on the standard headings. In the case of the specific list of goods and services created by the applicants, the goods and services should be very specific and clear and not cover any general terms in respect of the claimed goods and services. Otherwise, it should be expected to receive office action asking the applicants to specify the goods and services by specific terms or remove any lack of clarity regarding the specific goods and services, which will substantively prolong the registration process. In the formation of the specific list of goods and services, it is advisable to use the TMclass tool or Madrid MSG tool.

In the practice, the applications of standard headings proceed to faster than the applications of specific list of goods and services.

Is there any specific requirement for retail services under Class 35?

Yes, it is not accepted to use broad terms in respect of the goods or the expressions such as “variety of goods” under Class 35. The goods should be specified. Take the following:

Inappropriate: The bringing together, for the benefit of others, a variety of goods enabling customers to conveniently view and purchase those goods (said services provided with retail, wholesale stores, electronic medias, catalogues and other similar methods).

Appropriate: The bringing together, for the benefit of others, of the goods “…” enabling customers to conveniently view and purchase those goods (said services provided with retail, wholesale stores, electronic medias, catalogues and other similar methods).

Is there any possibility to correct errors in the trademark applications?

Spelling errors and obvious errors can be corrected upon request. The corrections such as to change the trademark specie, the trademark or list of goods and services are not allowed.

Do Turkish Patent and Trademark Office perform ex-officio examination upon filing a trademark application?

Yes, Turkish Patent and Trademark Office perform ex-officio examination based on the absolute grounds.

The examination based on the absolute grounds also covers identicalness or similarity examination. If Turkish Patent and Trademark Office find earlier identical and confusingly similar trademark, it refuses the applied-for trademark.

In the practice, the similarity examination is loosely performed unless the trademarks in conflict are highly similar. In other words, the examiner in charge allows the applied-for trademark to be published if the similarity is highly contestable. The strict similarity examination is performed during the examination based on relative grounds if any opposition is filed by third parties.

Which signs are not allowed within the scope of the absolute grounds set out in Turkish Industrial Property Code (Law No. 6769)?

The following signs are not allowed for registration under the absolute grounds:

a) Signs which may not be trademark according to Article 4;
b) Signs which are devoid of any distinctive character;
c) Signs which consist exclusively or includes as an essential element of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of rendering of the services or other characteristics of goods or services,
ç) Signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type,
d) Signs which consist exclusively or includes as an essential element of signs or indications used by everyone in the trade area or which serves to distinguish members of a particular professional, vocational or commercial group from others.
e) Signs which 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;
f) Signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;
g) Signs which shall be refused pursuant to Article 6ter of the Paris Convention;
ğ) Signs 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,
h) Signs that contain religious values or symbols;
ı) Signs which are contrary to public policy or to accepted principles of morality;
i) Signs which consist of a registered geographical sign or which contain a registered geographical sign.

Are there any exceptions in respect of possible refusals under the absolute grounds?

Yes, if a trademark has been used before the application, and through this use, has acquired distinctive character in respect of the goods and services subject to the application, the registration of this trademark may not be refused in accordance with subparagraphs (b), (c) and (d) of the first paragraph of the clause regarding the absolute grounds in Turkish Industrial Property Code (see absolute grounds).

Is it possible to overcome a refusal under the absolute grounds due to earlier identical or confusingly similar trademark/s by filing Letter of Consent?

Yes, it is possible to overcome the said refusal by filing a letter of consent granted by the holder of the earlier trademark or trademarks.

Is there any specific procedure to submit the Letter of Consent?

Yes, the consent should be provided by a special form issued by Turkish Patent and Trademark Office. The form should be notarized (legalized by apostil in the case of the non-residents in Turkey).

The consent should be provided without any conditions or reservations. The form should be filed together with the application. If the form is not submitted with the application and the application is refused due to earlier identical or confusingly similar trademark, the applicant can file an appeal against the decision and file consent form with the appeal to overcome the refusal.

Letter of Consent should be submitted for each trademark application separately.

Is there any appeal proceedings if a trademark application is refused based on absolute grounds by Turkish Patent and Trademark Office?

Yes, if the trademark application is refused ex-officio based on the absolute grounds, the applicant can file appeal with all the arguments and evidences within 2 months (non-extendable) from the notification of the decision of refusal. The fee for appeal should be paid within the same time limit. After filing appeal, no further arguments or evidences are allowed to file.

What is the requirement for registering the trademark application if the application successfully passes all the stages (formal and substantive examinations, opposition proceedings, publication stages etc.)?

The registration fee should be paid within 2 months from the decision for registration.

The registration certificate should be expected within approx. 2 months from the payment of the registration fee. The certificate is issued electronically only and no printed copy is provided.

What is the protection term for registration for a trademark in Turkey?

The term of protection for registered trademark is ten years from the date of application. This term may be renewed for periods of ten years (see FAQs on the renewals).

OPPOSITION

Which signs are not allowed upon opposition within the scope of the relative grounds in Turkish Industrial Property Code?

The following signs are not allowed for registration under the relative grounds upon opposition:

(1) An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered.
(2) A trademark application for the registration of an identical or indistinguishably similar trademark filed by a commercial agent or representative in his own name without the trademark proprietor’s consent and without any justifiable ground shall be refused upon the trademark proprietor’s opposition.
(3) 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 for registration of a trademark, the trademark application shall be refused upon opposition of the proprietor of that prior sign.
(4) Trademark applications which are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of the identical and similar goods or services.
(5) A trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark due to the reputation the earlier trademark has in Turkey; shall be refused upon opposition of the proprietor of that earlier trademark.
(6) An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright or any other intellectual property right of another.
(7) An application for registration of a trademark identical to or similar to a collective mark or a guarantee mark with identical or similar goods or services, that is filed within three years following the expiration of the protection of the collective mark or guarantee mark due to non-renewal shall be refused upon opposition of the previous right holder.
(8) An application for registration of a trademark identical to or similar to a registered trademark with identical or similar goods or services, that is filed within two years following the expiration of the protection of the registered trademark due to non-renewal shall be refused upon opposition of previous trademark proprietor provided that the trademark has been used during this period.
(9) Trademark applications filed in bad faith shall be refused upon opposition.

What is the deadline for opposition?

The deadline for opposition is 2 months from the publication date of the trademark application.

Is the time limit to file the opposition extendable?

There is no possibility of time extension to file opposition.

Is it possible to lodge opposition without grounds and evidences to meet the deadline and submit the substantive arguments later than the deadline?

No, the opposition should be filed with all arguments and evidences before the non-extendable deadline.

Is there any fee to be paid for opposition?

Yes, there is opposition fee to be paid. The opposition fee should be paid before the deadline and the payment info should be sent to Turkish Patent and Trademark Office before the deadline. If the opposition fee is not paid within the deadline, the opposition is deemed not to have been filed and there is no possibility of recovery if the payment is not made in due time.

Is the applicant of the opposed trademark allowed to file observations against the opposition?

Yes, upon receipt of the opposition, Turkish Patent and Trademark Office send a notice of opposition to the applicant and ask his/her opinion within 2 months from the date of notice. If no observation is filed within due date, the opposition is performed in view of all the arguments and evidences on hand.

Is there any mediation practice during the opposition?

Yes, Turkish Patent and Trademark Office may, at its discretion, invite the parties to come to an agreement on the conflict. If the parties agree for mediation, the proceedings are performed in view of the Mediation Law (Law No. 6325).

Is any evidence of use regarding the opposing trademark(s) required by Turkish Patent and Trademark Office?

Yes but with the following conditions:

- The applicant of the opposed mark should ask the opponent to submit evidence of use regarding the trademark(s) indicated as ground for opposition.
- The trademark(s) indicated as ground for opposition has/have been registered at least 5 years on the filing date of the opposed trademark.

In view of the above, Turkish Patent and Trademark Office send a notification to the opponent and ask the opponent to submit evidence of use within 2 months from the notification date.

The opponent should prove that the trademark or trademarks indicated as ground for opposition were genuinely used in respect of the goods and/or services within 5 years before the filing date or priority date – if priority is claimed - of the opposed mark.

If the opponent fails to prove the subject use, the opposition is refused. If the opponent can partially prove the subject use for some of the goods and services, the opposition is handled in view of the goods and services in respect of which the use is proved.

The failure to prove the use does not necessarily cause to the loss of rights on the trademark(s) indicated as ground for opposition. However, it is a strong indication that the trademark(s) indicated as ground for opposition, for which the use has not been proved, are vulnerable to non-use attack if 5-years use period have already passed from the registration date/s.

What kind of evidences should be submitted to prove genuine use?

The evidences should indicate the place, time, extent and nature of use of the opposing trademark for the goods and services in respect of which it is registered and on which the opposition is based. For instance, evidence may be any supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements.

Is it possible to withdraw an opposition?

Yes, opposition can be withdrawn any time during any stages of the opposition (first instance or appeal). If the opposition proceedings are represented by Trademark Attorney, a Power of Attorney covering express authorization for withdrawal should be submitted.

Is there any appeal proceedings if a trademark application is refused upon opposition?

Yes, if the trademark application is refused upon opposition, the opponent can file appeal with all the arguments and evidences within 2 months (non-extendable) from the notification of the decision of refusal. The fee for appeal should be paid within the same time limit. After filing appeal, no further arguments or evidences are allowed to file.

Is the applicant allowed to file observations to the appeal filed due to the refusal of the opposition?

Yes, the applicant is asked to submit his/her observations within 2 months from the notice of appeal.

CANCELLATION & INVALIDATION

Is it possible to file revocation action against the decisions of Turkish Patent and Trademark Office?

Yes, after the appeal decision, any of the parties can take revocation action against the decision before Ankara IP Court within 2 months from the notification of the appeal decision. All the arguments and evidences are limited to what have been submitted during the opposition and appeal proceedings before Turkish Patent and Trademark Office.

On what reasons can the trademark rights be cancelled (revoked)?

The trademark rights can be cancelled (revoked) on the basis of one of the followings:

- In the absence of genuine use within 5 years following the registration of trademark rights or the genuine use has been interrupted for over 5 years.
- If the trademark has become the common name for a product or service for which it is registered due to the acts of the trademark holder and the holder has not taken sufficient measures to prevent that.
- If the trademark has become misleading the public concerning the nature, quality or geographic origin of the goods or services for which it is registered, due to the use by the trademark holder or with the trademark proprietor’s consent.

Is there any specific conditions regarding the non-use cancellation actions?

The 5 years use requirement is not absolute. If the trademark is used after the expiration of 5 years but no later than the date of cancellation request, non-use action is not accepted.

In other words, if a trademark has been put into use after the date of expiration of 5 year use period but before the date of non-use cancellation action, the trademark is deemed to have been used and cancellation action is refused. However, if a trademark is put into use within 3 months before the date of cancellation action with the considerations that a cancellation request would be filed, such use is not taken into account.

Which authority is responsible for handling the cancellation actions?

Turkish Patent and Trademark Office are authorized to handle and process the cancellation actions. However, pursuant to Turkish Industrial Property Code (issued on 10 January 2017), the cancellation actions will be handled by the Turkish IP Courts during the 7 years from the issuance of the Code, i.e. till 10 January 2024. Therefore, the cancellation actions will and should be filed with the Turkish IP Courts till 10 January 2024.

On what reasons is the invalidation actions handled?

Invalidation actions can be taken before the Turkish IP Courts any time based on any conditions mentioned under the relative and absolute grounds.

Is there any specific time limit to file invalidation action?

There is no specific time limit. However, in the cases of invalidation actions based on the identicalness or confusingly similarity, if the holder of an earlier right acquiesces in the use of a later Turkish trade mark for a period of five successive years, he or she will no longer have the right to file an application for invalidity, unless the later trademark is registered in bad faith.

Are there any specific instances in respect of the invalidation actions?

When an invalidation action is filed against a registered trademark based on identicalness or confusingly similarity of an earlier trademark registration (s), the defendant can ask the claimant to prove the use of the trademark registration (s) within 5 years before the filing date of the invalidation action. Furthermore, the claimant should prove that he or she has genuinely used his/her trademark(s) indicated as ground for invalidation (provided that 5 years passed over from it/their registration(s)) within 5 years before the filing date or priority date – if priority is claimed – of the trademark registration subject to the invalidation action.

How can I learn if there has been taken any cancellation or invalidation action against my trademark?

If any cancellation action or invalidation action is filed against a trademark registration, the Court notifies the trademark holder of the cancellation or invalidation action directly without notifying the trademark agent in the trademark registry.

In case that the trademark holder is non-resident in Turkey, the notice of court action (with all the translations of the court petition) is served through Turkish Ministry of Justice on the trademark holder by the diplomatic means, and the 2-weeks time limit to submit instrument for representation and file response to the claims starts as from the receipt of the notice of court action.

The time limit to submit counter arguments can be extended at the discretion of the Judge provided that the request for extension is submitted with the 2-weeks due date from the receipt of notice of court action.

What is the difference between cancellation and invalidation in terms of their ensuing effects?

The difference is that cancellation applies as from the date of the request, whereas a declaration of invalidation removes the registration from Turkish trademark registry with retroactive effect, namely from the very beginning.

Is the losing party required to pay the expenses during a cancellation or invalidation action?

Yes, the losing party bears the court expenses, expert fees (if any) as well as the attorney fees. The attorney fees are limited to the standard representation fees announced by the Bar.

Can the trademark agents be involved in the cancellation or invalidation proceedings before the Court?

The Lawyers can only get involved in the cancellation or invalidation proceedings before the Courts. The trademark agents who do not hold law degree are not allowed to represent the clients before the Courts.

The trademark agents, who do not hold law degree, will be allowed to represent the clients in the cancellation proceedings to be held before Turkish Patent and Trademark Office after 10 January 2024.

How long do the cancellation or invalidation proceedings take?

It is hard to estimate the time. In general, it takes approx. 18-24 months at the first instance.

RENEWALS

When is renewal fee for a trademark registration due for payment?

Until January 09, 2018, renewal fee for a Turkish trademark registration falls due every ten years on the last day of the month containing the anniversary of the date of filing and is payable up to 6 months before the renewal due date.
From January 10, 2018 on, renewal fee for a Turkish trademark registration falls due every ten years on the anniversary day of the date of filing and is payable up to 6 months before the renewal due date.

Is there any grace period for payment of a renewal fee?

Yes, if payment of a renewal fee is not made in due time, it may still be validly paid within 6 months of the due date, provided that a surcharge (typically 50% of the renewal fee) is paid.

Is there any possibility for restoring the rights in case of failure to renew a trademark registration in the prescribed time limits?

No, if renewal fee for a trademark registration is not paid in due time and within six-month grace period following the due date, trademark rights will be irrevocably terminated.

Is it possible for the entities whose place of business are located abroad to request for renewal of a trademark registration directly, without using a Trademark Agent?

No, renewal of a trademark registration should be paid by a Turkish Trademark Agent?

Is Power of Attorney required for renewing a trademark registration?

If a trademark registration will be renewed for all the goods and services, Power of Attorney (PoA) is not required for renewal. If a trademark registration will be partially renewed for some of the goods and services, Power of Attorney (PoA) clearly covering the authorization for partial renewal is required.

Where a trademark registration is renewed by a Trademark Agent other than the Trademark Agent in the trademark registry, is the Trademark Agent requesting the renewal is recorded as agent for service?

Not actually unless otherwise requested specifically, i.e. the trademark agent in the registry still remains as agent for service even if the renewal is made by another trademark agent.

Is it possible to partially renew a trademark registration?

Yes, a trademark registration can be renewed partially for some of the goods or services only.

Upon payment of renewal fee, does TURKPATENT issue any official communication or certificate confirming renewal of trademark registration?

Yes, TURKPATENT electronically issue a renewal certificate. No printed certificate is provided.

When is renewal certificate expected to be issued and sent by TURKPATENT?

Renewal certificate is typically issued and sent by TURKPATENT within one month following the request for renewal.

When a trademark registration is deemed to be renewed duly?

Upon payment of renewal fee, formalities officer examine the request for renewal and record the renewal request if there is not found any deficiency in respect of the request for renewal.

Is simply payment of renewal fee sufficient for renewing a trademark registration?

No, request for renewal should be submitted within the prescribed time limits; otherwise, trademark is deemed not to have been renewed in due course and loss of rights occurs.

When will be renewal effective?

Renewal will be effective from the day following the date on which the previous protection period ends.

Is renewal published in Turkish Trademark Bulletin?

Yes, renewal is published in the Turkish Trademark Bulletin.

Is it possible to renew multiple trademark registrations at once?

No, each trademark registration should be individually renewed.

Does number of classes or number of items of goods and services affect the amount of official fee?

No, official fee is fixed without regarding number of classes or number of items of goods and services.

Which documents and/or information are required for renewing a trademark registration?

If a trademark registration will be renewed for all the goods and services, a request form for renewal and information regarding the payment of the renewal fee is sufficient for performing renewal.
If a trademark registration will be partially renewed for some of goods and services only, a request form for renewal including a list of goods and service for which renewal is requested, information regarding the payment of the renewal fee, a Power of Attorney clearly covering the authorization of Trademark Agent for partial renewal, a declaration confirming the partial renewal by the right holders in the registry should be submitted. If the required documents and information for partial renewal are not duly submitted, the trademark registration is renewed for all the goods and services by TURKPATENT without further notification of deficiency.

In the case of a collective trademark registration, is the renewal request of one of the right holders sufficient for completing the renewal?

If a collective trademark registration will be renewed for all the goods and services, renewal request of one of the right holders will be sufficient. If a collective trademark registration will be partially renewed for some of the goods and services, all of the right holders should take action together for renewal.

If there is any possibility to oppose same or confusingly similar trademark application based on the trademark registration lapsed due to lack of renewal?

Yes, it is possible but only trademark applications filed within two years from the end of the protection period and provided that the lapsed trademark has been genuinely used during those two years.

Does the entity status decrease official fee?

No, legal and real entities should pay the same amount of official fees. Furthermore, any reduction is not allowed in terms of the size of a legal entity.

Where schedule of the official fees for trademarks can be reached?

TURKPATENT shows the schedule of official fees in its official website www.turkpatent.gov.tr. Please click here to see the official fees.

RECORDALS

ASSIGNMENTS

Is there any requirement for disclosing or declaring a consideration in Assignment Agreements?

No, declaration or disclosure of consideration is not necessary in order to validly assign the rights.

Can an assignment be done unilaterally?

No, assignment should be done mutually and the express acceptance of the assignee is required for a valid assignment of the rights. In other words, both Assignee and Assignor should sign Assignment Agreement and their signatures should be notarized and legalized by Apostille.

Is there any requirement for legalization or notarization for recording an assignment?

Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If Apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.

If there are more than one trademark owner, is there any requirement for co-owner consent if only one of the co-owners will assign its rights? If yes, how is it processed?

As a rule, each co-owner has the right over their trademark rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over the trademark rights.
In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or Assignee should notify the non-assigning co-owner(s) of assignment of the rights. Pre-emption right ceases within 3 months from the notification of assignment or within 2 years in any case from the assignment date of the rights. If parties cannot agree, pre-emption right can be used only by filing court action against Assignee.

Is it necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights)?

No, it is not obligatory or necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights). TURKPATENT does not investigate the consent of the remaining co-owner(s) when assignment is requested for recordal at the trademark registry.

Is the recordal of an assignment obligatory? If not, are there any negative consequences where assignment is not recorded duly in the registry?

Recordal of an assignment is not obligatory. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the trademark registry. In other words, it is not possible to put forward the rights on the trademark against third parties acting in good faith unless and until they are duly entered in the trademark Register.

Is a confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry?

Yes, confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry

Is the original of Assignment Agreement required?

Not actually, a copy of Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.

Is the translation of Assignment Agreement required to record an assignment in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording assignment.

Is it possible to record Assignment Agreement comprising multiple trademark cases by one request for assignment at TURKPATENT ?

Assignments should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at the trademark Office.

Is Power of Attorney required for recording an assignment in the trademark registry?

Power of Attorney is not required for recording an assignment.

Is there any deadline to record an assignment?

There is no deadline and requirement to record assignment of the rights in the trademark registry to keep the trademark in force. The trademark remains effective independently from the assignment.

Are official fees payable in order to record a Trademark Assignment?

Yes, official fees are payable for recordal of an assignment. If there are more than one trademark within Assignment, official fees should be paid for each case separately.

Are two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recordal of the assignment?

Yes, two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recording Assignment.

Is a worldwide Deed of Assignment acceptable?

Yes, it is acceptable provided that Assignment refers to Turkish trademark application or registration numbers therewithin.

Is Change of Ownership due to Assignment published?

Yes, change of ownership due to Assignment is published in Turkish Trademark Bulletin.

Can a pending trademark application be assigned?

Yes, a pending trademark application can be assigned; there is no requirement for grant or registration of application for assignment.

If a change of ownership takes place due to mergers, demergers, capital investments or transfer of businesses, how assignment of trademark should be handled and by which documents?

In such case, Assignment Agreement is not required. Instead, an official document duly approved by a governmental or judicial authority of the country, i.e. Courts, chambers of commerce or industry, finance or tax authority etc., should be submitted. There is no further requirement for notarization or legalization of these kinds of documents. Furthermore, a translation of the document approved by a sworn translator should be provided if the document is not in Turkish.

If a trademark registration or trademark application seized, is it still possible to assign the rights thereon?

Seizure is not an obstacle to assign the rights of a trademark.

If a trademark or trademark application pledged, is it still possible to assign the rights thereon?

Pledge is not an obstacle to assign the rights of a trademark.

Is there any statutory requirement for the scope or content of an Assignment Agreement?

There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by assignee will be sufficient. Furthermore, trademark application or registration number or numbers subject to Assignment should be listed in Assignment Agreement for validity.

Can a registered or applied-for trademark be assigned partially?

Yes, a registered or applied-for trademark can be partially assigned for some of goods or services.

In the case of a partial assignment, is there any specific requirement for Assignment Agreement?

Yes, it is obligatory to indicate class numbers and goods and services subject to the transfer in Assignment Agreement. Otherwise, recordal of assignment will not be allowed.

In the case of a partial assignment, how does TURKPATENT handle recordal of the assigned part of trademark registration or application?

TURKPATENT assign a new application and registration number, open a new registry and issue a new trademark certificate for the assigned part of the trademark. It is not required to pay registration fee for issuing trademark certificate.

In the case of a partial assignment, is it obligatory to assign same or confusingly similar goods and services?

No, it is not obligatory to assign same or confusingly similar goods and services.

If a trademark was applied for or registered in Turkey through Madrid Protocol, how the assignment is handled?

Trademarks applied for or registered under Madrid Protocol should be assigned before International Bureau of WIPO by use of MM5 Form. TURKPATENT does not accept requests for recordal of assignment regarding trademarks applied for or registered under Madrid Protocol if they are not filed by means of International Bureau of WIPO .

LICENSES

Which types of licenses are available for recording?

There are two types of license, exclusive and non-exclusive. A license is not exclusive if it is not agreed so in License Agreement. In the case of non-exclusive License Agreements, licensor can use trademark too and Licensor can grant sub-licenses for the same trademark. In the case of exclusive License Agreements, licensor cannot grant further licences to third parties, and cannot use trademark unless it reserves its rights obviously.

Can licensees assign their license rights to third parties?

No, licensees cannot assign their license rights to third parties unless any clause is available for right to assign in License Agreement.

What is the scope of rights for licensee in using licensed trademark?

Licensee can take any action, unless otherwise agreed, in respect of the use of trademark. If licensee does not act in compliance with the terms and conditions of License Agreement, licensor can put forward its rights of trademark against Licensee.

Should a trademark application have been granted for granting and recording a License?

No, License can be granted and recorded for a pending trademark application.

Is there any requirement for disclosing or declaring consideration in a License Agreement?

There is no requirement to disclose or declare consideration in order to validly license the rights.

Should term of license be indicated in License Agreement for recording a license?

Yes, term of license should be clearly indicated in License Agreement. Otherwise, it will not be possible to record license in the registry.

Can license be granted unilaterally?

No, License should be done mutually and the express acceptance and declaration of licensee is required. In other words, both licensee and licensor should simply sign License Agreement.

Is there any requirement for legalization or notarization for recording license?

There is no requirement for notarization or legalization of a License Agreement. Simple signatures of licensor and licensee on License Agreement are sufficient to record License in the trademark registry.

Is it possible to partially grant a license for only some of goods and/or services?

Yes, license can be granted for only some of goods and/or services

Is the recordal of a license obligatory? If not, are there any negative consequences where License is not recorded duly in the trademark registry?

Recordal of license is not obligatory. Licenses can only have effect against third parties, who are acting in good faith, as from the date of their entry in the trademark registry. In other words, it is not possible to put forward the rights on trademark against third parties acting in good faith unless and until they are duly entered in the trademark registry.

Is the original of License Agreement required?

No actually, a copy of License Agreement is sufficient provided that Trademark Attorney declares that the copy is same as the original.

Is the translation of the License Agreement required to record a License in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording License.

Is it possible to record a License Agreement comprising multiple trademark cases by one License request at TURKPATENT ?

License should be individually handled for each case (case by case).

Is Power of Attorney required for recording a license in the trademark registry?

Power of Attorney is not required for recording a license.

Is there any deadline to record license?

There is no deadline and requirement to record License Agreement in the trademark registry.

Are official fees payable in order to record a trademark license?

Yes, official fees are payable for recordal of a license. If there are more than one trademark within the scope of license, official fees should be paid for each case separately.

Is two separate license documents of the same content signed and legalized in two different countries are acceptable for recordal of license?

Yes, two separate license documents of the same content signed and legalized in two different countries are acceptable for recording license.

Is a worldwide License Agreement acceptable?

Yes, it is acceptable provided that License refers to Turkish trademark application or registration number(s) therewithin.

Is recordal of license published?

Yes, change of ownership due to license is published in Turkish Trademark Bulletin.

Can a pending trademark application be licensed?

Yes, a pending trademark application can be licensed; there is no requirement for grant or registration of application for license.

If a trademark application or trademark registration seized, is it still possible to license the rights thereon?

Seizure is not an obstacle to license the rights of a trademark.

If a trademark application or trademark registration pledged, is it still possible to license the rights thereon?

Pledge is not an obstacle to license the rights of a trademark.

Is there any regulatory requirement for the scope or content of an License Agreement?

In a License Agreement, trademark application or trademark registration number and list of goods and services subject to License, term of license are required; otherwise, recording the license will not be allowed in the trademark registry.

CHANGE OF NAME

Is evidence is required for recording a change of name?

Yes, an official document, i.e. an extract from Chamber of Commerce or Industry, Court or any officially authorized institution, should be submitted for recording change of name. The document should expressly mention the change of name and both old and new names of the applicant/registered owner.

Should official document be notarized or legalized by Apostille?

No notarization or legalization by Apostille is required.

Is a copy of official document sufficient for recording change of name?

Yes, a copy is sufficient for recordal, no original is required.

Are company minutes or proceedings of similar decision for a change of name acceptable?

No, company minutes or proceedings of similar decision for change of name is not acceptable.

Is official certification of notary public regarding change of name is sufficient to record change of name?

Official certification of notary public is not sufficient to recording a change of name.

Is it possible to request name change for an entity in respect of specific cases only while excluding the others?

No, it is not possible to record change of name for some cases only while excluding some other cases registered in the name of same applicant or registered owner.

Is a translation of official document for recording change of name required?

Yes, Turkish translation of official document approved by a sworn translator is required for recording change of name.

Does request for a change of name affect all registries of industrial property rights or just the specific registry of patent, trademark or design?

A request for change of name affects all industrial property rights of same applicant or registered owner in all registries, namely patent, trademark and design registries. Specifically, request for change of name changes name of same applicant or registered owner in respect of all the patent, trademark and design applications and registrations.

Is Power of Attorney required for recording change of name?

No, Power of Attorney (PoA) is not required for recording change of name.

Is it possible to record this change whilst patent application is pending but not yet granted?

Yes, it is possible to record a change of name without awaiting for grant or registration.

Does TURKPATENT provide a certificate of change?

Yes, a certificate of change of name is provided within 1 month approx. following request of change of name.

Is there any official fee required for change of name?

For change of name, there is no required official fee.

If a request for change of name for a trademark or trademarks registered under Madrid Protocol designating Turkey is made at the International Bureau of WIPO, will such request affect all the patent, trademark and design registrations in Turkey?

Yes, any request for change of name before WIPO will also change name of same applicant or recorded owner for all its patents, trademarks, and designs registered in Turkey. Therefore, before any request for change, it is advisable to perform a verification for all the patent, trademark and design cases in Turkey.

CHANGE OF address

Is evidence is required for recording a change of address?

No evidence is required for recording change of address.

Is it possible to request address change for an entity in respect of specific cases only while excluding the others?

No, it is not possible to record change of address for some cases only while excluding some other cases registered in the address of same applicant or registered owner.

Does request for a change of address affect all registries of industrial property rights or just the specific registry of patent, trademark or design?

A request for change of address affects all industrial property rights of same applicant or registered owner in all registries, namely patent, trademark and design registries. Specifically, request for change of address changes address of same applicant or registered owner in respect of all the patent, trademark and design applications and registrations.

Is Power of Attorney required for recording change of address?

No, Power of Attorney (PoA) is not required for recording change of address.

Does TURKPATENT provide a certificate of change?

No, a certificate of change of address is not provided. Recordal of change of address can be easily confirmed through the online system of TURKPATENT

Is there any official fee required for change of address?

For change of address, there is no required official fee.

In what aspect is updating address in the registry important?

Change of address is not mandatory issue. In one aspect, it is important for the right holder or applicant whose residence of business is abroad, which is that in the case of any court action against the right, the court will directly serve notice of court action to the address of right holder registered in TURKPATENT's registry without serving the same to Turkish Patent or Trademark Attorney of the related right.

MERGER AND ACQUISITION

Is evidence is required for recording a merger and acquisition?

Yes, an official document, i.e. an extract from Chamber of Commerce or Industry, Court or any officially authorized institution, should be submitted for recording merger and acquisition. The document should expressly mention the merger and acquisition and both old and new entities.

Should official document be notarized or legalized by Apostille?

No notarization or legalization by Apostille is required.

Is a copy of official document sufficient for recording merger and acquisition?

Yes, a copy is sufficient for recordal, no original is required.

Are company minutes or proceedings of similar decision for a merger and acquisition acceptable?

No, company minutes or proceedings of similar decision for merger and acquisition are not acceptable.

Is official certification of notary public regarding merger and acquisition is sufficient to record merger and acquisition?

Official certification of notary public is not sufficient to record a merger and acquisition.

Is a translation of official document for recording merger and acquisition required?

Yes, Turkish translation of official document approved by a sworn translator is required for recording merger and acquisition.

Is Power of Attorney required for recording merger and acquisition?

No, Power of Attorney (PoA) is not required for recording merger and acquisition.

Are official fees payable in order to record a trademark Assignment?

Yes, official fees are payable for recordal of merger and acquisition. If there are more than one trademark, official fees should be paid for each case separately.

Is it possible to record merger and acquisition whilst trademark application is pending but not yet granted?

Yes, it is possible to record merger and acquisition without waiting for grant or registration.

Is recordal of a merger and acquisition obligatory? If not, are there any negative consequences where the merger and acquisition is not recorded duly in the registry?

Recordal of a merger or acquisition is not obligatory. Mergers or acquisitions can only have effect against third parties, who are acting in good faith, as from the date of their entry in the trademark registry. In other words, it is not possible to put forward the rights on the trademark against third parties acting in good faith unless and until they are duly entered in the trademark registry.

Is it possible to record merger or acquisition comprising multiple trademark cases by for request for recording merger or acquisition at TURKPATENT ?

Merger or acquisition should be individually handled for each case (case by case) and number of changes in the ownership affects the costs of the recordal of merger or acquisition even if requests for recordal of merger or acquisition are simultaneously filed at TURKPATENT .

Is there any deadline to record merger or acquisition?

There is no deadline and requirement to record merger or acquisition in the trademark registry to keep the trademark in force. The trademark remains effective independently from merger or acquisition.

If a trademark or trademark application seized, is it still possible to record merger and acquisition?

Seizure is not an obstacle to to record merger and acquisition.

Is Change of Ownership due to merger or acquisition published?

Yes, change of ownership due to merger or acquisition is published in Turkish Trademark Bulletin.

Does TURKPATENT provide a certificate of change?

Yes, a certificate of merger and acquisition is provided within 1 month approx. following request of merger and acquisition.

PLEDGES (SECURITY INTEREST)

Can trademarks be subject of a pledge?

Yes, trademarks can be pledged.

What kinds of documents are required for recording a pledge?

Pledge Agreement is required for recording a pledge.

If there are more than one pledgee, should pledge be recorded for each pledgee separately?

Yes, pledge should be recorded for each pledgee and official fee for each pledgee should be paid.

Should a trademark application have been granted for granting and recording a pledge?

No, pledge can be registered for a pending trademark application.

Should term of pledge be indicated in a Pledge Agreement for recording a pledge?

No, it is not necessarily required to be indicated in the Pledge Agreement.

Is there any requirement for legalization or notarization for recording pledge?

There is no requirement for notarization or legalization of Pledge Agreement. Simple signatures of pledgor and pedgee on Pledge Agreement are sufficient to record Pledge in the registry.

Is recordal of a pledge obligatory? If not, are there any negative consequences where the pledge is not recorded duly in the registry?

Recordal of a pledge is not obligatory. Pledges can only have effect against third parties, who are acting in good faith, as from the date of their entry in the trademark registry. In other words, it is not possible to put forward the rights on trademark against third parties acting in good faith unless and until they are duly entered in the trademark registry.

Is the original of Pledge Agreement required?

No actually, a copy of the Pledge Agreement is sufficient provided that trademark Attorney declares that the copy is same as the original.

Is the translation of Pledge Agreement required to record a pledge in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording pledge.

Is it possible to record a Pledge Agreement comprising multiple trademark cases by one pledge request at the Turkish trademark and Trademark Office?

Pledge should be individually handled for each case (case by case).

Is Power of Attorney required for recording a pledge in the registry?

Power of Attorney is not required for recording a pledge.

Is there any deadline to record a pledge?

There is no deadline and requirement to record the pledge.

Are official fees payable in order to record a trademark pledge?

Yes, official fees are payable for recordal of a pledge. If there are more than one trademark within pledge, official fees should be paid for each case separately. Furthermore, if there are more than one pledgees, official fee should be paid for each pledgee.

Is a worldwide Pledge Agreement acceptable?

Yes, it is acceptable provided that pledge refers to Turkish trademark application or registration number(s) therewithin.

Is recordal of pledge published?

Yes, pledge is published in Turkish trademark Bulletin.

Can a pending trademark application be pledged?

Yes, a pending trademark application can be pledged; there is no requirement for grant or registration of application for the pledge.

Is there any regulatory requirement for the scope or content of Pledge Agreement?

In a Pledge Agreement, trademark or trademark application number subject to pledge are required; otherwise, recording pledge will not be allowed in the trademark registry.

In which conditions does a pledge cease?

Pledge ceases in the following conditions:

Extinction or termination of the debt due to any reasons,
If pledge is bound by a condition or a term, when that condition is realized or not realized or its possibility of realization of that condition disappear, and that term is lapsed,
Sales of trademark by compulsory execution.

In the case of cease of pledge, is it necessary to take any action for removal of pledge in the Registry?

Yes, cancellation of a pledge in the registry is only possible if pledgee or pledgees request the removal of pledge from the registry. If pledgee or pledgees refrain from removing pledge, pledgor can file a court action in respect of cancellation of pledge and can file request for removal of pledge based on the court decision.

Is pledge of rights obstacle to assign those rights?

No, pledge of rights is not an obstacle to assign those rights.

Does TURKPATENT issue a certificate or letter of pledge?

Yes, a certificate or confirmation letter of pledge is issued.

FAQs - Trademarks in Turkey