Trademark frustrations 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.
Applicants whose trademarks are provisionally refused based on a prior registration in Turkey might consider the following approaches:
