Trademark Registration in Six Steps: The Application Process and Trademark Protection

Any sign, letter, colour, logo, name, or other mark that serves to distinguish one product or service from others is regarded as a trademark. A trademark is a right that is the subject of industrial property, and the trademark right comes into being only upon registration.

Under Turkish law, trademarks and trademark registration are governed by the Industrial Property Law No. 6769 (the "SMK"). Under the SMK, those who wish to benefit from trademark protection must file an application for registration with the Turkish Patent and Trademark Office (the "Office"). In assessing the applications made to it, the Office observes certain criteria, and processes of publication and registration follow.

Ultimately, applications to the Office may result in acceptance or in refusal.

In this article, we look at the process for trademark applications made to the Office.

1. The Application Process

We take the view that anyone wishing to file a trademark application should carry out a similarity search before applying to the Office. A similarity search means checking whether the signs making up the trademark are already the subject of another trademark's registration. Although a similarity search is not mandatory, it can be carried out by completing the relevant preliminary-search form and submitting proof of payment of the fee to the Office. A similarity search can also be carried out free of charge via the Office's website.

While the preliminary search mentioned above is not mandatory, it is advisable. Once the preliminary search has been done, the trademark application may be filed by those entitled to apply, via the e-Government system and/or through trademark attorneys.

Under Article 3 of the SMK, the following may file a trademark application: (i) citizens of the Republic of Türkiye; (ii) natural or legal persons who are domiciled, or who carry on industrial or commercial activity, within the borders of the Republic of Türkiye; (iii) persons entitled to apply under the provisions of the Paris Convention or the Agreement Establishing the World Trade Organization; and (iv) under the principle of reciprocity, nationals of States that provide industrial-property protection to nationals of the Republic of Türkiye.

The application is processed together with the trademark name and, where applicable, its image (logo). A key issue is the class in which the trademark will be registered. For example, a company providing funeral services should apply for its "XYZ" trademark in Class 45, while it would be appropriate for a person or company engaging in e-commerce to apply in Class 35. The application will cover only the use of the trademark in the relevant class. In the example above, applying for the "XYZ" trademark in Class 35 would not protect the trademark owner in the fields of activity covered by Class 45.

The trademark classes mentioned above are determined under the Communiqué on the Classification of Goods and Services for Trademark Registration Applications (the "Communiqué"). Under the Communiqué there are 45 classes in total: 34 relating to goods and 11 relating to services.

The application date varies depending on how the application is filed. For applications made using the reservation system, it is the date and time on which the duly completed form is submitted to the Office, whereas for applications made with an electronic signature or mobile signature, it is the date and time on which the form is duly completed.

2. The Registration Process

In the registration process, the Office first carries out a formal examination. This examination checks whether there is any deficiency or error in the application. If there is a deficiency or error, the applicant is given two months to remedy it. Applications whose deficiency or error is not remedied within the time limit either lapse or become invalid only in respect of the requests concerned by the deficiency.

For applications accepted after the formal examination, an examination is carried out in terms of the absolute grounds for refusal set out in Article 5 of the SMK. If, as a result of this examination, the Office decides to register the trademark, the registration is published in the Official Trademark Bulletin. Otherwise — that is, where registration is refused — there are two possibilities: the Office may issue a refusal or a partial refusal.

By issuing a partial refusal, the Office may decide to register the trademark for certain classes only. For example, assuming that the "XYZ" trademark has been applied for in Classes 35 and 45, if there is already a registered "XYZ" trademark in Class 35, the application may be refused for Class 35 and accepted for Class 45.

Where a trademark application is refused for certain classes, it is possible to file a new application for another class covering the field of activity. In that case, however, none of the absolute and relative grounds for refusal set out in Articles 5 and 6 of the SMK — which would prevent registration in those classes — should be present. For this reason, an application for a new class must, as with the first application, again be examined against the conditions required for trademark registration.

3. The Letter of Consent

Under Article 7 of the SMK, the protection arising from a trademark right belongs to the trademark owner alone. The trademark owner can prevent the use, for goods or services within the scope of the registration, of any sign identical to its registered trademark, and can also prevent the use of any sign that is in the same class of goods or services as its registered trademark and that, for that reason, creates a likelihood of confusion on the part of the public, including a likelihood of association.

Although there is a "principle of uniqueness" in trademark registration, an exception has been introduced regarding the trademark owner's consent. The trademark owner may prevent such similarity, but may also consent to it. Accordingly, where a letter of consent is obtained from the earlier trademark that stands in the way of registration, registration will take place even if the trademarks are indistinguishably similar and relate to the same goods and services in the same class. The Office has no power to refuse a letter of consent. Under Article 5/3 of the SMK, the letter of consent must be notarised. This letter of consent must show that the existing trademark owner expressly consents to the registration of the new applicant's trademark application.

4. Objecting to Office Decisions

Once the Office decides to register the trademark, that trademark is published in the Official Trademark Bulletin within two months. Within two months of the publication date, persons harmed by the decision may object on the ground that the trademark should not be registered, relying on the absolute grounds for refusal set out in Article 5 of the SMK and the relative grounds for refusal set out in Article 6.

Where the registration request is refused or partially refused, the applicant, too, may object to the Office's decision within two months of the refusal decision.

As can be seen, a two-month period is provided for objections to Office decisions. If an objection is filed within this period and the documents are submitted in full, the Office begins its examination without waiting for the two-month period to expire. If the documents are incomplete, a two-month period is granted to complete them, and the objection awaits completion. After that period has ended, the assessment stage follows, at which the Office may make one of two kinds of decision:

(i) When assessing the objection, if the Office finds the grounds justified, it may correct its decision.

(ii) If the Office does not accept the objection, the Re-examination and Evaluation Board will decide on the objection under the relevant legislation. If the objection is capable of examination, the Board begins its examination. The Re-examination and Evaluation Board will, within one month, invite the parties to submit their views on the arguments raised by the other party or authority. After examining the objection, the Re-examination and Evaluation Board will decide on it.

The decision of the Re-examination and Evaluation Board is the Office's final decision, and so it cannot be challenged administratively. Objectors may, however, set out their reasons and request the correction of material errors. The Board decides on a request to correct material errors that are the subject of the objection within 15 days and notifies the decision to the person concerned.

There is a right to bring court proceedings against the decision of the Re-examination and Evaluation Board. Such actions must be brought before the competent court within two months of the notification of the finalised Board decision. Because this two-month period is treated as a limitation (forfeiture) period, an action not brought within it is liable to be dismissed.

5. The Term of Trademark Protection

Where the Office decides to register the trademark, the protection term of the registration is ten years from the application date. When the registration term expires, the Office does not renew the registration automatically. The Office notifies the trademark owner before the end of the period provided for renewal; however, no liability can be placed on the Office where the trademark owner is not notified. The renewal request must be made by the trademark owner within the six months before protection ends, and the relevant fee paid. If this period is missed, a renewal request can still be submitted within six months of the date protection ends, on payment of an additional fee.

6. The Protection Provided by the SMK — The Trademark Owner's Rights

Where a trademark is used without registration, it will not benefit from the protection of the SMK. If a trademark is used — whether in litigation or in the ordinary course of commercial life — in classes for which it is not registered, another registered trademark operating in that class may object to that use or bring proceedings. The Office does not monitor unregistered use of its own motion.

The following constitute acts infringing the trademark right under the SMK: imitating a trademark by using it, or a sign indistinguishably similar to it, without the trademark owner's consent; commercial use — by selling, distributing, entering into contracts, and so on — of a mark where the person is expected to know it is imitated; unauthorised use of the trademark; and unauthorised extension of the rights granted by way of licence. Trademark owners who benefit from trademark protection have rights they can exercise in the event of infringement.

If one or more of the acts constituting infringement of the trademark right occur, the trademark owner may bring proceedings and may also make certain requests of the court. The actions available to the trademark owner are civil actions and criminal actions.

In criminal actions, an investigation begins on the trademark owner's complaint, and if it is concluded that infringement has occurred, a judicial fine or a prison sentence is imposed according to the acts and sanctions listed in Article 30 of the SMK.

In civil actions, the trademark owner has the right to bring a claim for pecuniary damages, exercising its elective rights to claim the net profit obtained by the infringer, the estimated profit it would have earned had the infringement not occurred, or the licence fee that would have been payable had a licence been granted. A claim for moral (non-pecuniary) damages may also be brought where the trademark owner's image in commercial life is harmed. For example, where the goods sold by the imitator turn out to be defective or damaged, the image of the registered trademark will have been harmed.

In addition to all these actions, the trademark owner may make the following requests of the court:

• a finding that the trademark right has been infringed;

• an order stopping the infringement of the trademark right;

• prevention of the continuation of the infringement and destruction of the products that are the subject of the request;

• seizure of the products infringing the trademark right and of the devices, machines, and other tools used in producing them;

• where infringement is established, publication of the decision and its announcement to the public.

The SMK provides broad protection to the trademark owner, and in the event of any infringement one or more of these protection mechanisms may be used together.

In conclusion, the trademark registration process is of critical importance for placing a trademark under legal protection and thereby safeguarding its originality and commercial value. Preparing applications to the Turkish Patent and Trademark Office carefully, following each step of the application process fully, and managing objection procedures where necessary all play a vital role in enabling the trademark owner to protect its rights to the fullest. In addition, using its rights consciously throughout the protection term obtained after registration will create an effective defence mechanism against possible infringements. Obtaining legal advice in the process of trademark registration and protection is therefore of great importance for the long-term success and protection of the trademark.

This article provides general information on Turkish trademark law and does not constitute legal advice. For advice on a specific matter, please contact OKAB — Oğuz Kara Avukatlık Bürosu.