10.03.2023

Authors: Görkem Çetin,  Damla Nur Erbil

In a globalizing world, the value of branding has been increasing day by day. In the face of the increasing value of branding, trademark registration has been of great importance in order to prevent third parties from claiming rights about your brand and to prevent third parties from using a similar or identical trademark in a way that may confuse the name or offering similar goods and services as your brand. Within the scope of this study, the trademark registration process and stages have been examined.

The application process for trademark registration consists of the following stages, respectively:

1) Procedural review of the application,

2) Examination of the application within the framework of absolute grounds for refusal,

3) Appeal against the decision and the publication,

4) Examination of the opinions and objections of third parties,

5) Registration of the application

1. Procedural Examination of the Application:

The Turkish Patent and Trademark Office (hereinafter referred to as "The Office") shall formally examine the conformity of the application with Articles 3 and 11 of 6769 Industrial Property Code

If it is determined that there are no deficiencies, the application will be considered approved on the day, time, and minute that it was received.

The applicant will be given two months to correct any deficiencies in the application if there are any. Applications that still need to be corrected before the deadline will be rejected. After all, if an application is filed for goods or services that fall under more than one class and the fee-related classes are not paid within the allotted time, the application will be evaluated for the class or classes covered by the paid fee.

2. Examination of the application within the framework of absolute grounds for refusal:

The application, which is finalized after the procedural examination is completed, is subjected to an ex officio examination by the experts within the framework of the reasons as absolute grounds for refusal, taking into consideration the goods and services requested to be registered.

In the presence of one of the reasons listed as absolute grounds for refusal, the application is rejected for all or part of the goods and services for which registration is requested.

A trademark application that complies with the requirements for submission and is not denied for one of the absolute grounds for denial shall be published in the Official Trademark Bulletin (hereinafter referred to as “the Bulletin”).

3. Appeal against the decision and the publication:

Against the decisions of the institution, those who are harmed by the said decision may appeal in writing and with reasons within two months following the notification of the decision.

Appeals against the decision submitted to the Authority shall be examined by the Re-Examination and Evaluation Department (hereinafter referred to as "the Board").

As a result of the examination and evaluation, the Board shall make a final decision for the Office.

The decisions of the Board shall be the final decisions of the Authority, and these decisions cannot be appealed again before the Authority. But a legal proceeding may be filed against the final decisions of the Board at the Ankara Civil Court of Intellectual and Industrial Property Rights within two months following the notification of the decision.

4: Examination of the opinions and oppositions of third parties

Oppositions that the trademark applied for after the publication of the trademark application should not be registered within the framework of absolute and relative grounds for refusal shall be made by the relevant persons within two months from the publication of the trademark application.

In the absence of opposition within the aforementioned time limit, the application shall be registered in the Trademark Register and published in the Official Trademark Bulletin.

If the application is rejected entirely or partially during the first examination, the applicant has two months to file an appeal with the Office. The application in this instance needs to be reviewed in light of the appeal. If the appeal is upheld, the application will either be entirely or partially published in the Bulletin, which indicates that it may face further denial after an objection.

The applicant shall be asked by the Office to provide his comments regarding the opposition within the allotted time. Upon request from the applicant, the opponent must provide proof that he used his trademark on the goods and services related to the opposition during the five years before the date of application or the date of priority of the application for which the opposition is filed, provided that the trademark, which is the basis for the opposition, has been registered for at least five years at the date of application or the date of priority of the application for which the opposition is filed.

The opposition shall be rejected if the opponent is unable to substantiate the aforementioned. If it is established that the trademark, which is the basis for the opposition, has only been used for some of the goods or services that are covered by the registration,  the opposition shall be evaluated taking into account the goods or services whose use is proven.

5. Registration of the application

In the event that a complete or corrected trademark application is not objected to within the legal time limits or the objections made are definitively rejected and the required fee is paid, the application shall be registered, recorded in the registry, and published in the Bulletin.

The maximum protection for a registered trademark is ten years from the date of application. This term shall be renewed for periods of ten years.

 In conclusion,

 After a trademark application is filed, the Office examines the application in five stages.

ØThe procedural examination is an inspection to examine the conformity of the application.

ØIf no formal deficiencies result from this examination, the Office examines the  application

within the absolute grounds for refusal framework under Article 5 of 6769 Industrial Property

Code.

ØIf there are no absolute grounds for refusal, the application is published in the Bulletin

ØAfter the application is published in the Bulletin, third parties may appeal within two months

following the notification of the decision.

ØThe next stage is the examination of the opinions and oppositions of third parties.

ØIf the third parties do not  object within the legal time limits or the objections are rejected

definitively, the application is registered, recorded in the registry, and published in the Bulletin.