The acceptability of consent letters, co-existence agreements and sister company arrangements are often explored by the applicants whose trademarks are provisionally refused based on a prior registration in Turkey.
Contrary to all expectations, consent letters, co-existence agreements and sister company arrangements do not overcome a provisional refusal in Turkey. In other words, even if the prior registration holder consents to the later trademark, the Turkish Patent Institute (TPI) will still not cancel the provisional refusal decision.
Once a trademark application is filed, the TPI examines the application according to article 7 of Decree Law no. 556. According to article 1 (b) of the law, trademarks that are identical or confusingly similar to an earlier trademark for the same or similar goods or services are ex officio refused. In this case, the only option is to appeal against the provisional refusal decision and demonstrate the dissimilarity of the trademarks or of the relevant goods or services.
Until 2004, alleging distinctiveness acquired by usage before the registration date could also overcome the provisional refusal. However, this is no longer an option since the law was amended, because, according to the TPI, a phrase can only be registered in the name of one holder for given goods or services.
To continue reading, you need a subscription to WIPR. Start a subscription to WIPR for £455.
In-house feature articles, the archive and expert comment require a paid subscription. Subscribe now.
Want to give it a try? We are offering a two week free trial to the WIPR website – register and select “Free Trial” to begin access to the full WIPR archive and read the latest news, features and expert comment. Begin your free trial here.
Is your 2 week free trial about to end? Upgrade to a 12 month subscription for £455 now.
If you have already subscribed please login.
If you have any technical issues please email tech support.
registering trademarks, TPI