Article by: Uğur Aktekin, Partner and İrem Girenes, Senior Associate of Gün + Partners
- Service by publication has come into effect
- Turkish Patent and Trademark Office put discussions over well-known trade mark registry on its agenda
- Turkish Patent and Trademark Office’s official website was updated
Service by publication has come into effect
Notification procedure was a significant issue at the Turkish Patent and Trademark Office (Office) since it not only causes delays in the application processes but also affects the IP right holders using their rights. Most importantly, when the applicants’ recorded addresses changed for some reason and they did not inform the Office of the address change, notifications that must be made officially such as opposition notifications could not be made. This was causing opposition proceedings to remain pending since the applicants’ legal periods for filing a counter-opinion and alleging a non-use plea could not start. Moreover, lack of notification was also causing delays in the registration process since the notifications regarding the payments for registrations could not be made and thereby trade mark holders seeking to file an invalidation action upon registration of the relevant trade mark application had to wait and keep following up on the status of the registrations.
Important steps on this issue have already started to take place both legally and from a digital infrastructure perspective. First, a provision was included in the Industrial Property Code no. 6769 setting forth that ‘notifications under this law made in the form of announcements shall be published in the respective bulletin. In this context, the Institute is not bound by the form requirements of article 29, law No 7201. Such notifications are considered served seven days after their publication in the Bulletin’. The ETEBS (electronic notification system) has also been in operation since 2020 which has allowed applicants registered with the ETEBS system to receive online notifications. However, for applicants not registered with the ETEBS system and who changed their addresses without informing the Office, the same problems stemming from lack of notification have been ongoing.
The Office has started implementing the above-mentioned provision of the IP Code as of April 7, 2022. With the implementation of this provision, all documents that could not be notified due to an applicant’s address change have started to be served via publication through an Official Bulletin.
Turkish Patent and Trademark Office puts discussions over well-known trade mark registry on its agenda
The Turkish Court of Cassation recently rendered a decision ruling that the Turkish Patent and Trademark Office has no authority to create and maintain a registry for well-known trade marks and discussed the possible repercussions of this decision for trade mark owners (See previous article: Well-known Trademark Registry Is Again Open for Debate).
The Turkish Court of Cassation’s decision (No. 2019/2980 E-2020/991 K dated February 5 2020) had been finalised without the review of the General Assembly of the Court of Cassation, which could unify the jurisprudence in the event of resistance against the decision. But the court of first instance did not resist in its decision. The plaintiff appealed the decision of the first instance court but since the same chamber of the Court of Cassation examined it, the appeal was dismissed. Therefore, the decision of the court of first instance rendered in accordance with the Court of Cassation’s decision has become final.
While the first instance IP courts and regional courts have adopted the decision of the Court of Cassation in a very short time and reflected it in their decisions, the Turkish Patent and Trademark Office has remained silent for a long time and still keeps the well-known trade mark registry alive. However, with the finalisation of the decision, the Office has recently started to consider its practice of maintaining a well-known trade mark registry and a change is expected in the Office’s practice by the end of 2022.
Turkish Patent and Trademark Office’s official website was updated
The Office has totally changed the appearance of its website and also made it more user-friendly. With the new changes, there is no longer a need to enter a verification code on the trade mark research page. Moreover, along with the new changes, some information on the applications such as refusal grounds have become visible on the trade mark research page.
These changes provide more information in a short time and bring the website in line with international standards.
FICPI’s view and involvement
FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.
Next steps
- Connect with FICPI member IP attorneys in Turkey – search the FICPI member directory
- Find out more about FICPI-Türkiye
- Consider getting involved with the work of FICPI’s Study & Work Committee on International Trade Marks (CET 1)
- Put these dates in your diary for FICPI's 21st Open Forum in London, UK (4-7 October 2023)