Loss of Rights through Silence in the Industrial Property Law
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?
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
With the transfer of the first authority to the Authority, it is expected that the cancellation proceedings based on non-use will be simplified and accelerated. The realization of this expectation will result in alleviation of the difficulties experienced in obtaining consent today, albeit a little, in the future.
Another handicap encountered in the application of the consent letter is the right to object to the publication of the trademark registration application, which the consenting trademark owner allows to be registered, within the scope of Article 18 of the SMK. Although a notarized signed consent letter can be considered as a peace document on its own, it may be a suitable solution to make an agreement regarding the coexistence of the brands while obtaining the consent in order to prevent such an objection.
It seems that the main fruits of this innovative regulation of the SMK and the application of the consent letter are to be prevented from the objections of the consenting parties against the announcement or registration of the consented applications and, as mentioned, the authority to decide on the trademark cancellation claims based on non-use is transferred to the Authority after the judicial process turns into an administrative process. will be started. Until then, it should come as no surprise that various challenges, including those mentioned in practice, will continue to appear.
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