On February 18 2016, the Turkish Patent Institute (TPI) announced that the Official Trademark Bulletin will now be published twice a month. The bulletin was previously published on the 12th of each month but will now be published on the 12th and 27th of each month or the next working day if either of those days falls at the weekend. This change is expected to require a much stricter follow-up of the bulletin and the legal opposition deadlines in order to avoid the possible loss of rights due to the increased frequency of publication.
Summary
Under Decree Law 556 on the Protection of Trademarks, when a trademark application is filed before the TPI it is first examined ex officio in respect of its compliance with formalities and its eligibility in terms of absolute grounds for refusal, which are laid down in Article 7 of the decree law. Trademark applications which are found eligible for registration in terms of absolute grounds for refusal as a result of the TPI’s ex officio review are published partially or entirely in the bulletin. Once published, interested parties can file oppositions on the basis of relative and absolute grounds for refusal pursuant to Articles 7 and 8 of the decree law within a three-month timeframe commencing on the date of publication.
This three-month timeframe for filing oppositions against published trademark applications is expressly regulated under Article 35 of the decree law, which states that:
oppositions to the registration of a claimed trademark on the grounds that it may not be registered under the provisions of Articles 7 and 8, and the oppositions on the ground that there exists bad faith in the application, shall be submitted within three months as of the publication of the application.
From the wording of the article, it is clear that this three-month opposition period is inextensible in that it is not possible to request from the TPI an extension and any opposition filed after the timeframe has expired is inadmissible. This is in contrast with the systems adopted in countries such as the United States, the United Kingdom and Australia, which allow for extension of the opposition deadline through a request made before the expiration of the initial opposition period. Furthermore, in Turkey, power of attorney must be submitted to the TPI within the timeframe, along with the official opposition fees. Therefore, it is important for practitioners and trademark owners to keep track of publication dates to ensure that any action against potentially infringing trademarks is made in good time.
In recent years, several changes have been made to the bulletin. It was once available in print but in 2014 the TPI announced that it would be available only in CD format. This change was followed by another in 2015, when the TPI discontinued the CD format and the bulletin was made available on the TPI official website. These changes concerned the medium of the publication; but the TPI has now for the first time made a change in the frequency of publication.
Review
This increased frequency of the bulletin will require trademark owners and practitioners to adapt their processes to keep track of the new publication dates and the corresponding legal opposition deadlines. Not only will the bulletin have to be reviewed more frequently to identify any potentially infringing trademarks, the legal deadlines will have to be followed up more closely. Although this will not affect the three-month timeframe for filing oppositions against trademark applications, there will no longer be one opposition deadline per one month, but two opposition deadlines, corresponding to the first and second half of the month depending on the date of publication of the respective bulletin. This will require a more attentive follow-up of the deadlines in order to avoid confusion.
The inextensibility of the legal opposition timeframe under Turkish trademark law also makes it more important to keep track of the new opposition deadlines, since the right to oppose potentially infringing trademark applications is lost three months after the date of publication. After this period, interested parties which wish to take action against a trademark should file an invalidation action before the competent IP court once the trademark has been registered, which may involve lengthy and costly proceedings. However, by adopting a tracking system suitable for the requirements of the new publication period, the trademark owners and practitioners can avoid such loss of rights.
First published by WTR in Mar 18, 2016.
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