Provisional refusals of international trademarks in Turkey

If you have received a refusal for your Turkey designation under Madrid Protocol, you should first check WIPO's notification date. The notification date is the date for calculating the deadline. You should add two months to the WIPO's notification date to calculate the deadline to file appeal against the provisional refusal. 

The provisional refusal letter also covers notification date but this date is not taken into account in calculating the deadlines. The base date is always the WIPO's notification date.

The deadline cannot be extended and there is no way to recover the deadline if the response is not filed in due time. This means that the deadline is absolute and all the facts and observations should be submitted within the deadline.

You might receive the provisional refusals upon examination at the first instance. The most known reasons are the followings:

• Availability of an earlier identical trademark or trademarks
• Lack of distinctiveness
• Conflict on applicant name or address

The first two reasons above should be substantively handled when replying to the provisional refusal. The third one is a formality issue though, it would be still necessary to file response to the provisional refusal correcting any discrepancy regarding the applicant's name and address. It is advisable to check the applicant name and address in the Turkish trademark database to avoid such provisional refusals caused by formal discrepancies in the trademark registry.

You might also receive a provisional refusal if others file opposition, which may be mostly based on one or more of the following arguments:

• The applied-for trademark is confusingly similar with the opponent’s earlier registered and/or used trademark or trademarks.
• The bad-faith claim of the application due to earlier business relations.
• The applied-for trademark is intended to copy a well-known trademark in the Turkish jurisdiction.
• The applied-for trademark is violating the trade name of the opponent.

There is one crucial point regarding the oppositions: Turkish Patent and Trademark Office (TURKPATENT) issues notice of opposition as a general practice. However, you may late receive the notice of opposition and you can be unable to file observations against possible oppositions within due date as you are unaware of that. Just to be on the safe side, it is advisable to note down the publication date after TURKPATENT's publication notification to International Bureau and follow the application status during 2-months publication period to see if there has been filed any opposition. If any opposition stands there, best action is to contact your Turkish trademark agent to obtain the details of the opposition and learn the deadline to file observations against.

For replying the provisional refusals whether they are first-instance or opposition-based refusals, you need to contact a Turkish trademark attorney or agent if you are a foreign resident. The foreign residents are not allowed to file appeals against the provisional refusals directly before TURKPATENT. They should appoint a Turkish trademark attorney with a simply signed Power of Attorney.

In the case of confusingly similarity with earlier trademarks, if you or your Turkish trademark attorney do not predict a good chance of success to overcome the provisional refusals, you can search for a letter of consent from the holder of the earlier trademark 

After you file the appeal against a provisional refusal, you can anticipate the decision within 6-8 months.