TR012: Marks, Regulations (Consolidation), 05/11/1995 (20/04/1999)

The Implementing Regulations under the Decree-Law No. 556
Pertaining to the Protection of Trademarks

TABLE OF CONTENTS

Article

Part One: General Provisions

Object 1

Scope 2

Legal Foundation 3

Definitions 4

Place and Time of Application 5

Part Two: Characteristics of Marks and Persons Entitled to Protection

Section One: Characteristics of Marks

Collective Mark 6

Guarantee Marks 7

Trade Marks 8

Service Marks 9

Section Two: Protection

Persons Entitled to Protection 10

Part Three: Application

Section One: The Application Petition and the Annexes

The Application Petition 11

Documents to be Annexed to the Petition 12

Section Two: Examination of an Application

Examination 13

Classification 14

Duration 15

Section Three: Publication of the Application and the Registration

Publication of the Application 16

Publication of the Registration 17

Section Four: Renewal

Renewal 18

Documents Necessary for Renewal Application 19

Section Five: Changes After Registration

Changes Concerning the Address, the Title, the Firm Characteristics and the Cancellation of the Registration 20

Transfer by Inheritance 21

Assignment of the Mark and Merger 22

License 23

Placing the Trademark as Security 24

Changes 25

Levy of Execution 26

Changes 27

Section Six: Fees, Copies, Register and Priority

Fees 28

Registry 29

The Information Contained in the Register 30

Priority 31

Part Four: Oppositions

Opposition to the Publication of an Application 32

Appeals Against the Decisions of the Institute 33

Form of Appeal 34

Rectifying a Decision 35

Examination of Appeals 36

Opposition Fee 37

Part Five: Last Provisions

Provisions Repealed 38

Entry into Force 39

Execution 40

1. The object of this Regulation is to specify the procedures and the rules to be followed concerning the time and place of filing and the preparation of the application documents for registering a trademark and other matters related with trademarks as provisioned in The Decree-Law No. 556 Pertaining to the Protection of Trademarks.

2. This Regulation encompasses the principles, the rules and the conditions for the protection of trademarks by registering such marks for appropriate goods and services.

3. This regulation has been prepared based on the provisions of The Decree-Law No. 556 pertaining to the Protection of Trademarks, Paris Convention, TRIPS Agreement, Nice Agreement and Vienna Agreement.

4. For the purposes of this Regulation;

(a) "Institute" means the Turkish Patent Institute,

(b) "The Decree-Law" means The Decree-Law No. 556 Pertaining to Protection of Trademarks dated 24.6.1995.

(c) "Trademark" means trademarks or service marks including guarantee marks and collective marks.

(d) "Official Trademark Gazette" means the Gazette in which the registered trademarks are published.

(e) "Official Trademark Bulletin" means the Bulletin in which the trademark applications are published.

(f) "Class" means the international classification of goods and services for the purposes of the registration of marks.

(g) "Sign" means two dimensional signs or three dimensional signs that can be used as the packaging of the goods but that do not reveal the good which has the attributes of the mark and comply with the other provisions of the Decree-Law.

(h) "Circular" means the Circular on the Schedule of Fees to be administered by the Turkish Patent Institute in accordance with Articles 6/f and 25 of the Decree-Law No. 544.

(i) "Paris Convention" means the agreement concerning the establishment of an international convention related with the protectiton of industrial property dated 20 March 1883 and the amendments approved by Turkey.

(j) "TRIPS Agreement" means the Trade-Related Aspects of Intellectual Property Rights Agreement annexed World Trade Organisation Establishment Agreement" ratified with the law number 4067 dated 26 January 1995.

(k) "Nice Agreement" means the agreement establishing the international classification of goods and services for the purposes of registration of marks, which is approved by the decision number 95/7094 of the Board of Ministers dated 12 July 1995 and published in the Official Gazette number 22373 dated 13 August 1995.

(l) "Vienna Agreement means the agreement establishing the international classification of the figurative element of marks, which is approved by the decision number 95/7094 of the Board of Ministers dated 12 July 1995 and published in the Official Gazette number 22373 dated 13 August 1995.

5. The natural or legal persons desiring to register a trademark shall file an application at the Institute or at the body it may authorize as such.

The filing date of the application is the date, hour and minute as accorded by the Institute or by the body authorized as such by the Institute.

An application filed by post shall have effect as of the date of arrival at the Institute or at the body as authorized within the terms of the second paragraph above.

A separate application has to be filed for registering each trademark.

The same trademark shall be registered only once for the same goods or services.

Trademark applications which are submitted by telefacsimile or electronic means shall not be examined.

6. Collective mark serves the purpose of distinguishing the goods and services of the undertakings belonging to a group from the goods and services of the other undertakings.

7. A guarantee mark, under the control of the proprietor of the mark, serves the purpose of guaranteeing the common characteristics of the undertakings, production methods, geographical origin and the quality of those undertakings.

8. A trade mark is a sign which serves the purpose of distinguishing the goods produced or traded by an undertaking from the goods of other undertakings.

9. A service mark is a sign which serves the purpose of distinguishing the services of one undertaking from the services of other undertakings.

10. The protection as conferred by the Article 3 of The Decree-Law No. 556 Pertaining to the Protection of Trademarks shall be available to:

(a) natural and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Turkish Republic, or to the persons who have application rights resulting from the terms of the Paris or Bern Conventions or the Agreement Establishing World Trade Organization.

(b) natural or legal persons other than those referred in paragraph (a) above, who are nationals of states which accord legal and de facto protection to the nationals of the Turkish Republic shall enjoy according to the reciprocity principle trademark protection in Turkey.

The principle of reciprocity shall be accepted to exist where countries have registered the marks of Turkish nationals or have declared by writing that registrations shall be available.

11. A petition, conforming to the sample form attached to this Regulation as Annex-1, shall be prepared on an A4 size plain white paper using a typewriter or a computer printer and all of the questions shall be answered.

The goods or services on which the mark will be used shall be written on the application form in accordance with the international classification without using general expressions. If a general expression is used in the list of the goods or services, Institute shall request the explanation of the general expression. The examination of the application shall start after the explanation of the general expression.

12. The following documents have to be annexed to the application petition:

(a) 20 copies of the representation of the trademark suitable for publication and reproduction by printing means, in minimum 5X5cm and maximum 8X8 cm size,

(b) the original receipt for the payment of the application, search, examination and evaluation fee,

(c) the original receipt for the payment of the class fees,

(d) an appropriate power of attorney if an agent is appointed.

(e) a notarized signature circular where the applicant is a legal person,

(f) a document verifying that the applicant is engaged in trade, production or a service activity. This document shall be obtained from either the Chamber of Industry, or the Chamber of Commerce, or the Chamber of Small Business and Craftsman, or the Trade Registry Office or from the Tax Office,

(g) where the application concerns a guarantee or a collective mark, a notarized copy of the technical regulation.

(h) if a priority right is claimed, the original priority right document and the translation of the data relating to the application into Turkish, within the time limit mentioned in Article 28 of the Decree-Law.

(i) where the priority claim concerns an exhibition priority, a certified copy of a document obtained from the officials of the country in which the exhibition was held which would specify the name of the product and evidence the first display date of the product with the mark clearly and visibly affixed on the product, and indicate the official opening date of the exhibition,

(i) original receipt showing that the trademark registration fee, and the Trademark Certificate of Registration and registry fees have been paid,

(j) for applications with an existing registration in a foreign country, Turkish translation of the document concerning the commercial activity or service or the original or certified copy of the registration certificate obtained from the country of registration.

Any person or legal entity who doesn't have a domicile in Turkey has to be represented by an agent, who is registered in the Institute's agent registry for the purposes of registering marks and other procedures after registration. The trademark applications and the requests for other trademark procedures which are made by agents who are not authorized before the Institute shall be refused. The refusal shall be notified to the applicant or holder.

In the technical regulation indicated in item (g), the following shall be mentioned:

(1) where the applicants are natural persons their first names and surnames, where the applicants are legal entities the full official designations of the legal entities,

(2) addresses of the applicants,

(3) trademark reproduction,

(4) address for communication,

(5) forms and conditions of using the mark,

(6) form of using the mark on certain goods and services,

(7) in guarantee mark technical regulation; the common characteristics of the goods and services guaranteed by the mark, the way of controlling the usage of the mark and the sanctions that will be applied when necessary; in the collective mark technical regulation, the enterprises which are authorized to use the mark.

In the case of withdrawal of the application the power of attorney must be notarized and the authority to withdraw the application must be clearly mentioned in the power of attorney. Where the applicant changes the agent during the procedures, the notification shall be made to the new agent.

13. In order for an application to be examined the following documents have to be submitted at the time of filing:

(a) a signed petition, conforming to the form attached to the Regulation as Annex-1,

(b) the original receipt documenting the payment of the application, search, examination and evaluation fee,

(c) 5 copies of the representation of the trademark

(d) transliteration into Latin characters where the application form or the mark contains characters other than Latin characters.

(e) the original receipt documenting the payment of the priority right request fee where priority right is claimed.

(f) technical regulation prepared by the firms where the application is for collective mark or guarantee mark.

Where any one the above referred documents are missing at the time of filing, the application shall be rejected.

14. The goods and services indicated in the petition in accordance with the Article 24 of the Decree-Law shall be classified in conformity with the international classification of goods and services.

The goods or services for which registration is sought shall be mentioned by grouping the goods or services of the same class with the class number. If the application contains more than three classes but the additional class fee is not paid in the prescribed time, the application shall be examined for the first three classes in the list of goods or services.

The Institute reserves the right to make the necessary alterations on the goods, services and classes indicated in the petition.

Where the list of goods or services is not arranged according to the second subparagraph, a list arrangement fee which is equal to the application fee shall be requested from the applicant for the arrangements done by the Institute according to the third subparagraph.

15. Of the documents provisioned in Article 12, those which have not been submitted at the time of filing the application, except for those specified in Article 12(h) and Article 13, a period of four months shall be allowed for the submission of the missing documents. For submission of receipt for the payment of additional class or classes' fee, receipt for the payment of fee of the arragement of the list of goods or services by the Institute according to Article 14 subparagraph four; and the explanation of general expressions exist in the petition.

For submission of missing documents concerning the procedures under the Articles 20, 21, 22, 23, 24, 25, 26, 27 of this regulation and for the completion of change of the reproduction according to the Article 22, a period of two months shall be allowed. The procedures which are regulated under this Article shall not be made where deficiencies are not completed within the prescribed time and the payment recorded revenue to the Institute.

Where the requested documents have not been submitted within the prescribed time, application or request shall be cancelled.

16. An application for registration of a trademark which has complied with the conditions of application and which has not been refused according to Articles 29, 30, 31 and 32 shall be published in the monthly Official Trademark Bulletin with the following information.

(a) the application date and number,

(b) the name and address of the applicant,

(c) a representation of the mark,

(d) the list of the goods or services and the class numbers,

(e) the goods or services deleted in accordance with the relevant articles of the Decree-Law.

Institute may publish supplementary Bulletins in addition to the prescribed publication periods.

Where an application is refused after the publication of the application in accordance with the provisions of the Articles referred to in the first paragraph, the decision of refusal shall also be published.

17. A trademark registered in accordance with Article 39 of the Decree-Law shall be published in the bi-monthly Official Trademark Gazette. The publication shall contain all the information contained in the Register except those concerning the agent.

18. At the request of the proprietor of the mark or of the person authorized by him, registration of the registered trademark shall be renewed, upon the payment of the renewal fee prescribed in the Circular.

The request for renewal shall be submitted within a period of six months before the last day of the month in which the protection ends. In failing this deadline, the request may be submitted within a further period of six months from the day referred to in the previous sentence upon payment of an additional fee as prescribed in the Circular.

19. When applying for a renewal, the original receipt for payment of the trademark renewal fee, power of attorney (if appointed) fee must be submitted along with the petition. The Institute may request other documents which might be missing in the file. Deficiencies concerning a renewal have to be completed within a period of two months. Registration shall not be renewed where deficiencies is not completed and the payment for renewal shall be recorded revenue to the Institute.

20. The proprietor of a trademark has to inform the Institute any changes with respect to a trademark. If after the registration of a trademark changes have occurred with respect to the address, the title and the characteristics of the firm, such changes shall be recorded in the Register upon the request of the proprietor or if such changes are identified at the time of a new application of the proprietor of the mark, corrections shall be requested on the other marks registered or applied for in the name of the proprietor.

Following documents have to be submitted for recording the changes concerning the address, the title, the characteristics of the firm and the cancellation of the registration:

(a) For changes of address:

(1) a petition,

(2) the Trademark Certificate of Registration,

(3) the original receipt of payment of fees,

(4) power of attorney (if appointed) for the agent, signature circular for the legal entity.

(b) For changes concerning the title:

(1) a petition,

(2) the copy of the Trade Registry Gazette showing the change of title or other document evidencing such change,

(3) the original Trademark Certificate of Registration,

(4) the original receipt of payment of fees,

(5) power of attorney (if appointed) for the agent, signature circular for the legal entity.

(c) For changes concerning the characteristics of the firm:

(1) a petition,

(2) a document evidencing the change,

(3) the Trademark Certificate of Registration,

(4) the original receipt of payment of fees,

(5) power of attorney (if appointed) for the agent, signature circular for the legal entity.

(d) For the cancellation of the registration:

(1) a petition,

(2) the original or notarized copy of power of attorney which shows the auothorization for the cancellation where cancellation is requested by an agent,

(3) the original or a notarized copy of signature circular where the proprietor of the mark is a legal entitiy,

(4) the original or a notarized copy of signature declaration where the proprietor of the mark is a natural person

(5) the original receipt for the payment of fees.

21. The following documents have to be submitted in order to record in the Register changes resulting from the transfer of trademarks by way of an inheritance.

(a) a petition,

(b) the court decision,

(c) the original receipt for the payment of fees,

(d) the original Trademark Certificate of Registration,

(e) power of attorney (if appointed) for the agent, signature circular for the legal entity.

22. Trademark, in accordance with Article 16 of the Decree-Law can be subject to assignment with respect to all or part of the goods or services for which it is registered. Assignment is permissible only with the assignment of the existing other similar marks and applications.

Division of a trademark is possible as a result of a partial transfer. In the partial transfer procedures, a registration certificate containing the partial transferred goods or services is issued with a new registration number. This new registration shall be recorded to the register with an indication of the new registration number and the date of the initial registration and shall be published in the Official Trademark Gazette.

Following documents have to be submitted in case of an assignment:

(a) a notarized assignment certificate describing the mark and containing the signatures and declarations of both the assignee and the assignor. In case of partial assignment the full list of the goods of services assigned have to be specified,

(b) a certificate of commercial activity for the assignee,

(c) the original Trademark Certificate of Registration,

(d) the original receipt for the payment of fees,

(e) signature circular if the assignee is a legal entity,

(f) power of attorney if an agent is appointed.

If the assignment procedures fall within the provisions of paragraph four of Article 16 of the Decree-Law, the changes to be effected are transmitted to the assignee. Unless the assignee submits his acceptance of the changes in writing to the Institute within the period prescribed in Article 15 of this Regulation the registration of the assignment shall not be effected.

Following documents have to be submitted in case of a merger.

(a) a petition,

(b) the documents evidencing the merger,

(c) certificate of commercial activity,

(d) the original Trademark Certificate of Registration,

(e) signature circular for the legal entity,

(f) power of attorney for the agent,

(g) the original receipt for the payment of fees.

After the recording of the changes concerning the title, the characteristics or the merger of the firms and transfer of the trademark, a renewal document or a registration certificate containing the latest information about the proprietor can be given at the request of the proprietor, provided that the relevant fees are paid.

23. The proprietor of a trademark can license his rights over a trademark with respect to some or all of the goods and services for which it is registered. A licensing contract cannot contain provisions contrary to the Decree-Law and the other related laws, decrees and regulations.

Following documents have to be submitted for licenses:

(a) notarized license contract containing the declarations and the signatures of the licensee and the licenser, the registration number of the trademark, the duration and the fees of the contract,

(b) certificate of commercial activity of the licensee,

(c) the original Trademark Certificate of Registration,

(d) the original receipt for the payment of fees,

(e) signature circular if the licensee is a legal entity,

(f) if appointed power of attorney for the agent.

Trademark renewal and all other changes with respect to a trademark which are recorded in the Register shall be published in the Official Trademark Gazette. The fees prescribed in the Circular of Fees shall be paid for this purpose.

24. A registered trademark may be charged as security independently of the undertaking.

Upon the request of one of the parties, the placing of security shall be entered in the Register and published.

25. Except for the change of address or renewal of the mark, other changes or licensing shall not be allowed with respect to the trademark placed as security.

Changes with respect to such a trademark can only be allowed with the permission of the holder of the security.

Following documents have to be submitted for recording of the security.

(a) a petition,

(b) the original documents evidencing the placing of the security or its notarized copy,

(c) the original Trademark Certificate of Registration,

(d) the original receipt for the payment of fees,

(e) power of attorney for the agent or signature circular for the legal entity.

In order to cancel the recording of security in the Register, the original document evidencing the cancellation or a notarized declaration by the holder of the security is required.

26. A registered trademark may be levied in execution independently of the undertaking.

Levy of execution shall be entered in the Register and published upon the request of one of the parties concerned.

27. Except for the change of address or renewal of the mark, all other changes and licensing shall be allowed only with the permission of the executor.

The execution shall be considered terminated,

(a) when the creditor has relinquished his due,

(b) upon the termination of the period if the contract has specified a time period for the duration of the execution,

(c) upon the sale of the trademark under execution.

Following documents have to be submitted for recording of the execution:

(a) a petition,

(b) the contract for the levy of execution,

(c) the original Trademark Certificate of Registration,

(d) the original receipt for the payment of fees.

In order to cancel the recording of security in the Register, the original document evidencing the cancellation or a notarized declaration by the holder of the security is required.

28. The fees payable with respect to a trademark registration and operations shall be published as a Circular of Fees to be Administered by The Turkish Patent Institute in accordance with the provisions of Articles 6/f and 25 of the Decree-Law No. 544.

The fees are payable by the party requesting the service.

The applications are rejected when their fees are not paid.

The fee concerning the procedures relating to trademarks shall not be returned.

A copy of the Trademark Certificate of Registration shall be supplied upon the request of the trademark proprietor or of the agent.

Following documents have to be submitted for obtaining a copy:

(a) a petition,

(b) the original receipt for the payment of the relevant fee for obtaining a copy of the Trademark Certificate of Registration.

29. Trademark registry is open to the public. Upon request and payment of the prescribed fee a copy of the Register shall be available to the any requesting party.

30. The following information shall be recorded in the Register:

(a) the registration number of the trademark, the application and the registration dates,

(b) a representation of the trademark,

(c) the name, if a legal entity the title, nationality and address of the proprietor of the trademark, and agent's name and address if applicable,

(d) the list of the goods or services in respect of the trademark,

(e) class codes.

31. Where a priority claim is accepted, the following observations are recorded in the Register and on the Trademark Certificate of Registration.

It has hereby been recognized that the first application for the registration of this trademark has been filed at the administration of..................................... on the day of ................... with filing No. ...................., and therefore is entitled to the priority right as of this date.

32. Notices of opposition to the registration of a trademark on grounds that it may not be registered under the provisions of Articles 7 and 8 of the Decree-Law, and notices of opposition on grounds that there exists bad faith in the application shall be submitted within three months of the publication. Apposition is filed in writing conforming to the form attached to this Regulation as Annex II. Institute may request further facts, evidences and documents which have to be complied within one month.

Where further facts, evidences and documents is not submitted to the Institute a decision shall be made with respect to the documents present in the file.

Where the opposition is found to be valid, the application for the registration of the trademark is rejected.

33. A person whose interests are damaged by a decision of the Institute can appeal against this decision within two months after the date of notification of this decision and can file an opposition to the publication of an application within three months after the date of publication before the Institute. The third parties who have interests relating with a decision of the Institute have the direct right of opposition.

34. Notice of appeal and opposition must be submitted to the Institute within a time period as indicated in Article 33 with a signed petition containing justifications of appeal or opposition, the original receipt for the payment of fee as explained at the Circular and the power of attorney (if appointed). The agent who files the opposition must be recorded at the registry of agents. In the case of an opposition if all necessary documents is not submitted to the Institute, the missing documents may be completed within the time period for opposition without any notification. In the case of appeals against the decision of the Institute, the application can be examined before the expiration of two months if all necessary documents are submitted. Where the requested documents have not been submitted to the Institute within these periods, the opposition shall be deemed to have not been filed.

35. The related department of the Institute upon deciding that the appeal is true and right may rectify its decision. This shall not apply where the appellant is opposed by another party to the proceedings.

If the appeal is not found acceptable by the related department, the appeal shall be forwarded to the Re-examination and Evaluation Board by the department without comment as to its merits.

36. The Re-examination and Evaluation Board shall consider the appeal if the appeal is admissible.

The Re-examination and Evaluation Board shall invite the parties to submit within one month their own observations on the observations of the other parties or those of the administration.

37. The fee paid for filing an opposition to the Institute's decision with respect to a trademark application shall be deducted from the trademark registration fee if the appeal is accepted.

38. The Implementing Regulations of the Trademark Law published in the Official Gazette No. 22262 dated 18.4.1995 have hereby been repealed.

Transitional Article 1. Those trademarks having the renewal right of a three year period under the repealed Trademark Law No. 551, irrespective of their remaining periods shall be renewed within six months of the publication of this Regulation. A trademark which is not renewed within this period is to be deleted from the registry.

Transitional Article 2. The fees payable for applications filed as of 27.6.1996 shall be paid within two months of the coming into force of the Circular of Fees to be Administered by The Turkish Patent Institute in accordance with the provisions of Articles 6/f and 25 of the Decree-Law No. 544.

Transitional Article 3. The provisions of this Regulation which are in favor of the applicant or the holder shall be applied for the previous applications.

39. This Regulation shall enter into force on the day of publication.

40. This Regulation shall be executed by the President of the Turkish Patent Institute.