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MATTERS TO BE CONSIDERED IN CASE OF TRADEMARK OBJECTION

After registering your trademark, there are several steps you can take to protect your trademark. One of them is to do  “similarity search’’ regularly about your trademark. Similarity search is the detection of trademarks similar to yours by scanning the trademark bulletins that are published periodically by the Turkish Patent and Trademark Office (TPMO). It should be noted here that it would be useful to carry out this similarity search through trademark attorneys. Because finding similar trademarks among thousands of them published every month and making an objection by an professional both increases the chance of success and saves your time.

According to Article 6[1], titled ‘’Relative grounds for refusal in trademark registration’’of Industrial Property Code No. 6769 (SMK- IPC); ‘’An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered.’’ The important point here is that the inspection of whether a trademark contains one of the reasons for rejection listed in Article 6 can only be possible upon an objection.

If there is no objection within 2 months after its publication in the trademark bulletin, the trademark will continue its application without being subject to an inspection in terms of Article 6 of the ILC. Objection; It will be made to the Turkish Patent and Trademark Office and the inspection will be carried out by TPMO. While appealing, the objection reasons, evidences must be presented with the objection fee (160 TL for 2020). In this article, we have compiled the issues to be considered while objecting to the publication of a trademark in accordance with Article 6 of ILC.

  1. Reasons for objection should be well determined.

While objecting to the publication of a trademark, one of the most important issues will undoubtedly be the reasons for objection. At this point, the scope of the objection must be well established. The scope of Article 6 of IPC is quite wide. That’s why, it is important to determine according to which paragraph of Article 6 is subject to the objection. For example, in an objection to a trademark that was registered 1 year ago, using the . Paragraph 7 of the Article 6  “The trademark application made within three years from the end of the period of protection due to the non-renewal of the co-brand or warranty brand is rejected upon the objection of the previous right holder, which is the same or similar with the co-brand or warranty brand and contains the same or similar goods or services. "  will not be correct to rely on the provision and that this objection will not be accepted. Besides, as mentioned above, since the inspection is carried in case of an objection, no evaluation will be made in terms of issues not specified. For this reason, it is necessary to determine carefully the reasons for objection based on which or under which the conditions listed under Article 6 will be challenged.

  1. The language of the objection must be specific and clear.

One of the other issues to be considered while appealing an objection is the language of the petitioner. In your appeal petition, your reasons for objection and evidences must be clearly and openly listed. At this point, complex sentences, offensive expressions, unnecessary long explanations will lower the chances of success of the objection. Explaining the claims in the simplest form without confusion will make it easier to understand and prevent your important arguments from disappearing in the verbosity. Your petition does not need to last for pages. Instead of creating verbosity, writing a short and effective petition that will reveal your objection grounds and evidence will increase your chances of success.

  1. Doing research about the objected trademark is essential.

Before starting to write the trademark appeal petition, it is necessary to investigate whether the holder of the trademark to be objected has other registered trademarks, the usage area of the trademark in question, the duration of use, the market volume, and the objection should be placed on a solid basis.

  1. Fields of activity should be determined well

According to ILC 6/1, " An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered’’ the areas of activity of the contested trademark should be determined carefully and the areas where your trademark is effected should be stated in the petition.

For example, when you search the “x coffee” trademark that requests registration in the 30th class that includes coffee, you can strengthen your petition by realizing that the same trademark has activities in the 29th class, which includes milk and dairy products, and include this argument in your petition.

  1. Submitting proof:

It is very important that you support the other reasons such as recognition and use based on similarity in your petition and rely on proofs. At this point, the issues we mentioned in the language part of the petition are valid in the proof as well. If you provide too much and unnecessary proof, it may be possible that your proof may be confusing among others. So, it will be more correct to present the proof showing your rightness clearly and to draw attention to this proof.

If you pay attention to these issues we have explained above, the probability of accepting your objections will increase significantly. In addition to this, we would like to state that the trademark objections made by trademark attorneys will increase the chance of success thanks to their experience and knowledge.

 

[1] Relative grounds for refusal in trademark registration

ARTICLE 6 - (1) An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered.

(2) A trademark application for the registration of an identical or indistinguishably similar trademark filed by a commercial agent or representative in his own name without the trademark proprietor’s consent and without any justifiable ground shall be refused upon the trademark proprietor’s opposition.

(3) If a right to a non-registered trademark or to another sign used in the course of trade was acquired prior to the date of application or the date of the priority claimed for the application for registration of a trademark, the trademark application shall be refused upon opposition of the proprietor of that prior sign.

(4) Trademark applications which are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of the identical and similar goods or services.

(5) A trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark due to the reputation the earlier trademark has in Turkey; shall be refused upon

opposition of the proprietor of that earlier trademark.

(6) An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright or any other intellectual property right of another.

(7) An application for registration of a trademark identical to or similar to a collective mark or a guarantee mark with identical or similar goods or services, that is filed within three years following the expiration of the protection of the collective mark or guarantee mark due to non-renewal shall be refused upon opposition of the previous right holder.

(8) An application for registration of a trademark identical to or similar to a registered trademark with identical or similar goods or services, that is filed within two years following the expiration of the protection of the registered trademark due to non-renewal shall be refused upon opposition of previous trademark proprietor provided that the trademark has been used during this period.

(9) Trademark applications filed in bad faith shall be refused upon opposition.