FAQs on Trademark Oppositions in Turkey

FAQs on Trademarks in Turkey

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:

  • Similarity and likelihood of confusion,
  • Unauthorized application by commericial representative (abusing bussiness cooperation, e.g. distrubition rights),
  • Prior use rights (earlier rights due to the use in the commerce),
  • Well-known marks under Article 6 bis of the Paris Convention,
  • Well-known marks,
  • Other IP rights and personal rights (a person’s name, trade name, photography, copyright),
  • Non-renewal of a collective/guarantee mark,
  • Non-renewal of a registered mark (provided that the mark has been used within last 2 years following the non-renewal),
  • Bad faith,
  • Other grounds, where applicable, e.g. unfair competition.

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 evidence before the non-extendable deadline.

Is there any fee to be paid for opposition?

Yes, there is an opposition fee to be paid. The opposition fee should be paid before the deadline and the payment info should be sent to the 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 (TÜRKPATENT) sends a notice of opposition to the applicant and asks his/her opinion within 1 month from the date of notice. If no observation is filed within the due date, the opposition is handled in view of all the arguments and evidence 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 there any hearing or oral proceedings during the opposition and appeal proceedings?

No. Oppositions are handled through written communications and no hearing is held during either the opposition proceedings at the first instance or the appeal proceedings.

Is there any cooling-off period during the opposition?

No, there is no specific cooling-off period, neither by ex-officio nor upon request of parties, which allows the parties to negotiate for a settlement.

However, the parties can negotiate and come to an agreement before the issuance of the opposition decision. In the case of an agreement, the opponent should withdraw his/her opposition before the issuance of the decision regarding the opposition.

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 sends a notification to the opponent and asks 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 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 evidence should be submitted to prove genuine use?

The evidence 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, catalogs, invoices, photographs, newspaper advertisements.

A guideline for proving the use of the registered trademarks in Turkey has been provided by TÜRKPATENT on this link.

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 a 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 an appeal with all the arguments and evidence 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.

How long the opposition and appeal proceedings take?

Opposition proceedings take 4-6 months at the first instance. In the case of appeal, the appeal proceedings take 4-6 months.

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 the Ankara IP Court within 2 months from the notification of the appeal decision. All the arguments and evidence are limited to what have been submitted during the opposition and appeal proceedings before the Turkish Patent and Trademark Office.

Do you need advice?

We will be pleased to assist you and provide the necessary advice in response to your inquiries. Please feel free to contact us!

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