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.
While 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 an IR.
If an 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.
The problem 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.
Under these 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.
Within this context, we are offering a complimentary monitoring service to our clients.
You may contact us at firstname.lastname@example.org for further information.