Troubled times in Turkey

The World Intellectual Property Organization international registration system has created a fast and cost-effective system for trademark applicants. However, because of an increase in applications, it has also placed a greater burden on them, forcing them to follow up their applications carefully as the system may work slowly and links between some national offices and the WIPO have failed. Specific problems in Turkey are discussed below.

One of the problems with the system in Turkey concerns the date and number that should be given by the Turkish Patent Institute (TPI) once the registration process has been completed. Normally, after completion, the TPI places a registration number and the date of registration in its records; only after that can a mark be considered as registered. However, especially if the application is faced with refusal or is opposed, following the file becomes difficult. That is because, after overcoming these hurdles, the TPI unit responsible for concluding the process may archive the file instead of giving it a registration date and number. In other words, the file remains open.

Applicants, not having been notified to the contrary, may think the mark is registered in Turkey but the TPI normally has to send a final notice to the WIPO indicating that the process is completed. In practice, this may not happen as the department sending the notifications and the one updating the records and giving registration dates and numbers to the applications are different.

In the worst-case scenario, where the owners of the mark want to take legal action or file an opposition, they may find they have to wait for the mark to receive a registration number and a date of registration.

“Keep an eye on Turkey-designated applications and be sure the mark obtains a registration date and number. If that is not the case, contact a Turkish agent to fix it.”

What is the solution? Keep an eye on Turkey-designated applications and be sure the mark obtains a registration date and number. If that is not the case, contact a Turkish agent to fix it.

Subsequent designations

Something else to take care with is the ‘subsequent designation’, extending the scope of an international registration to another country. In part seven of WIPO’s MM4 form for subsequent designations, it says: “This subsequent designation shall take effect immediately after the renewal of the international registration.”

It is an advantageous system for applicants wanting to minimise renewal fees but it can cause issues such as:

a) The agent filing the application to the WIPO forgets to tick the box in part seven of the form and thinks the designation will cover Turkey after the date of renewal. Sometimes the WIPO catches this and takes the necessary measures.

b) Although the box is ticked, the WIPO omits to give a filing date after the renewal but records the date of filing as the date the subsequent designation form is submitted, thus indicating the mark as NOT renewed for Turkey. Consequently, the mark is either reported to the TPI as not having been renewed and the TPI closes its file without registering the mark, or the WIPO says nothing and, as the mark is based on a WIPO application, the TPI assumes it is not being renewed and closes its file ex officio.

In one case, a client with an international registration wanted to lodge an opposition against a Turkish application and assumed its mark was registered in Turkey. When the international registration was submitted, the WIPO noticed in part seven of the MM4 form that the required box had not been ticked so contacted the agent and that part of the problem was fixed. Despite that, by mistake, the WIPO indicated the date of the subsequent designation as a date before the renewal, meaning that for Turkey the mark was seen as not having been renewed and the TPI application lapsed.

After determining the problem, we contacted the WIPO and the TPI and opposed the Turkish application within the official time limit. Unfortunately, as the WIPO could not take the necessary steps in time, our opposition was refused and we were forced to appeal against the decision.

In a different case it took us days to understand what the problem was. There, the box had been ticked on the MM4 form, but the WIPO indicated that the mark had not been renewed for Turkey and—according to TPI online records—sent a letter to the TPI stating that the renewal fee had not been paid. As a result, the TPI closed its file, sent it to the archive and did not register the mark.

“The WIPO could not notify the applicant’s representative of the TPI’s refusal decision and then sent a second notification directly to the owner of the mark.”

After some years, when the client wanted to lodge an infringement action in Turkey, the issue came to light. To understand what happened we had to see the physical file at the TPI because, according to the online records there was no mistake at the TPI; conversely, the WIPO insisted it had not been sent a renewal notification.

The TPI has two archives: files before 2005 are kept in its old building in the centre of Ankara but files after 2005 are kept in its present building upstate from the city. It is relatively easy to get files after 2005 but obtaining files before 2005 can be tricky. It took us days to find the physical file and to look at it. At that point we discovered that the TPI was right; indeed, in the file there was the WIPO’s notification saying that the mark had not been renewed.

After learning that, my colleague in Europe and I moved on to the second stage of solving the problem: the cooperation, or lack of it, between the WIPO and the TPI. After some time, the TPI removed the non-renewal statement from its records and we moved to the last step of the registration process where we needed a registration date and a registration number for the mark. But then we faced the problem mentioned above, which we hope to solve very soon.

Different dates

According to TPI rules, the applicant has two months from the notification date to oppose a partial or entire refusal decision by it. In the case of an international registration, the two months are calculated from the date stated as the “date of notification by WIPO to the holder” on WIPO’s cover page despite the fact that this date may be fictitious and not the actual one. Even so, the WIPO informs the TPI of the date on the cover page for the calculation of the two months the applicant has to oppose a decision.

In our case, the WIPO could not notify the applicant’s representative of the TPI’s refusal decision and then sent a second notification directly to the owner of the mark. Not surprisingly, while all this was going on, the two-month opposition period expired.

We filed an opposition explaining that and submitted our arguments on the merit of the case. However, the examiner at the TPI who was checking that all the procedural requirements had been fulfilled took into account the date of notification on WIPO’s first cover page and refused the opposition automatically. The TPI’s approach is that unless the WIPO sends a second notification updating the date, the first notification date sent by the WIPO is valid. After several calls we overcame this procedural problem but there were still months of delay for the client.

The issues explained above tell us several things: