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An Innovation Coming with the Industrial Property Law: Consent for Trademark Registration

An Innovation Coming with the Industrial Property Law: Consent for Trademark Registration

An Innovation Coming with the Industrial Property Law: Consent for Trademark Registration
Prior to the Industrial Property Law (“SMK”), there was a question to which the trademark owners residing outside of Turkey, without exception, answered “No” from us attorneys: Our application was rejected ex officio for the same/similar goods/services due to an identical/similar trademark in Turkey. , can we request the consent or permission of the owner of the previous brand to overcome this rejection decision? The fact that the consent exception is available as an option, as a novelty that came with the SMK that came into effect on January 10, 2017, is a source of satisfaction for both us attorneys and right holders. So, have the fruits of this new regulation and implementation really been reaped in the intervening time?

Background

A well-discussed rule, which is established in Turkish Trademark Law and affects integration with the rest of the world, at least in principle, is that the same or indistinguishably similar to a trademark registration application, the goods and/or services within the scope of the application must be the same or similar. In case of ex officio rejection of the trademark registration application with the next date. Undoubtedly, an absolute refusal justification of the 5/1(ç) clause of the SMK, which is read as "signs that are the same or indistinguishably similar to the trademark registered in relation to the same or the same type of goods or services or for which a registration application has been made earlier" will be rejected. still valid, sometimes inconsistencies in the practices of the Turkish Patent and Trademark Office (“Türkpatent”), often the thin limits of the application of the rule itself, and the differences of opinion that arise due to the fact that those borders are available to be interpreted differently due to the human factor depending on the concrete case, and however, the concept of "indistinguishably similar" as a condition of absolute refusal grounds (as per art. 5/1(ç)) and "similar enough to be related" as a condition of relative refusal grounds (in accordance with art. 6/1) always The transitivity between However, SMK made an exception to the application of this rule, at least helping to alleviate some of the discussions. In other words, in accordance with paragraph 5/3 of the SMK, if the applicant submits a notarized consent letter to Türkpatent showing that the previous trademark owner gave consent for the registration of the trademark application, which was rejected ex officio because of his own trademark, the ex officio rejection of the new dated trademark application can be prevented or In addition, it is possible to reverse the ex officio refusal decision that has already been taken.

Detections Regarding the Application

The consent letter constitutes an exception to the rule of ex officio rejection of a new trademark registration application due to the same or indistinguishably similar trademarks with the previous date protected for the same/similar goods/services. It can also be considered as a realistic and reasonable solution that allows a reconciliation or agreement to be reached between the owner of the trademark and the owner of a later-dated trademark, which will perhaps serve the interests and expectations of both parties, and to reflect this in the registry.
It has been seen during the three-year period that the SMK was in effect, if the previous dated trademark is subject to a serious and rightful registration and use, and if the registration and use of the later dated trademark will not cause any loss or violation of rights, and if a common sense for reconciliation prevails, the provision must be operated in accordance with its purpose. possible. On the other hand, it can be seen that some trademark owners, whose consent is requested, prefer to turn this situation into an opportunity by demanding exorbitant fees from the applicants in return for giving consent for goods or services that they do not use their trademarks, or they refuse to give consent under any circumstances, taking the risk of their own trademark being canceled due to non-use. Although it is possible for the applicants, who are faced with such a no answer, to remove the obstacle in front of the registration of their trademark by filing an action for annulment with the grounds of non-use before the Intellectual and Industrial Property Rights Civil Courts (“FSHHM”), since this option requires both a costly and a relatively long process, the consent is not required. It cannot be compared with the fast and smooth solution it will provide.

It will be necessary to wait for January 10, 2024 in order to eliminate the above-mentioned deficiencies regarding the application of the consent letter or to remove some of the current difficulties and to bring the application of the consent letter to a more reasonable basis. Because, according to Articles 26 and 192 of the SMK, the decision authority for the cancellation of the registered trademarks due to non-use will pass from the FSHHMs to Türkpatent. With the introduction of the provisional article, the specific <p>Before the Industrial Property Law (“SMK”), brand owners residing outside of Turkey, without exception, say “No” without exception from us, the attorneys. There was a question for which they got an answer: Our application was rejected ex officio for the same/similar goods/services due to an identical/similar trademark in Turkey, in order to overcome this rejection decision. Can we request consent or permission from the owner of the trademark? The fact that the consent exception is available as an option, as a novelty that came with the SMK that came into effect on January 10, 2017, is a source of satisfaction for both us attorneys and right holders. Well, in the meantime, have the fruits of this new regulation and application really been reaped?<br /><br /><strong>Background</strong><br />It has settled in Turkish Trademark Law and A highly debated rule affecting integration, at least in principle, with the rest of the world, in particular, is that a trademark with the same or indistinguishably similarity with a trademark registration application is the same or similar to the goods and/or services within the scope of the application. if it is, the next-dated trademark registration requires ex officio rejection of the application. Undoubtedly, SMK's 5/1( The fact that the clause ") is still valid as an absolute rejection reason, sometimes the inconsistencies in the Turkish Patent and Trademark Office (Turkish patent) practices, and often the application of the rule is self-evident. The fine limits it contains and the human factor of those borders, depending on the concrete event. Differences of opinion arising due to the fact that they are susceptible to different interpretations due to the fact that they are open to different interpretations, and “too similar to distinguish” only as a condition of absolute rejection always (pursuant to art. 5/1()) similar enough to be confused/associated with the concept of “as a condition of relative refusal” (as per article 6/1); The fluctuation between the concept of However, SMK made an exception to the application of this rule, at least helping to alleviate some of the discussions. That is, in case the applicant submits a notarized consent for the registration of the trademark application, which was rejected ex officio because of the previous trademark owner's own trademark, pursuant to paragraph 5/3 of the SMK, The ex officio rejection of the newly dated trademark application can be prevented or it can be ensured that the ex officio refusal decision is reversed.<br /><br /><strong>Detections Regarding Implementation</strong><br />Consent, As it constitutes an exception to the rule of ex officio rejection of a new trademark registration application due to the same or indistinguishably similar trademarks with the same/similar goods/services protected, in a broader perspective, the conditions are also different from the parties. if appropriate, between the owner of a previous mark and the owner of a later dated mark, and perhaps both parties It can also be considered as a real and reasonable solution that allows a compromise or agreement that will serve its interests and expectations to be made and reflected in the registry.<br />SMK's face; in effect It has been seen in the annual period that if the trademark with the previous date is subject to a serious and justified registration and use, and if the registration and use of the trademark with the next date will not cause any loss or violation of rights, and a compromise is required. if common sense prevails, it is possible for the provision to be applied in accordance with its purpose. On the other hand, some brand owners, whose consent is requested from them, prefer to turn this situation into an opportunity by demanding low prices from the applicants in return for giving their consent for the goods or services whose brands they do not use, or they prefer to turn this situation into an opportunity or risk the cancellation of their own brands due to non-use. It can also be seen that they refuse to give consent under any circumstances. Although the applicants, who are faced with such a no answer, have to file an action for annulment before the Intellectual and Industrial Property Rights Civil Courts (FSHHM).