Turkey: Patent and Trademark Office publishes New Trademark Examination Guideline
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Turkey: Patent and Trademark Office publishes New Trademark Examination Guideline

The Turkish Patent and Trademark Office (the office) published the New Trademark Examination Guideline (guideline) on September 30 2019. The guideline defines the criteria for the examination of trademark applications on absolute grounds within the scope of the Industrial Property Code (IP Code) that came into force in 2017.

The guideline aims to update the previous guideline which was in force from 2011, clarify the principles of absolute grounds for refusal that are explained in the IP Code and provide consistency in office decisions.

The guideline consists of 379 pages and includes a great number of examples encompassing the decisions of the office and the courts, as well as recent developments in the EU. In particular, Article 5/1(c) regarding descriptiveness and Article 5/1(ç) regarding indistinguishable similarity to a senior trademark or trademark application are discussed in detail, providing various examples.

The key points of the guideline can be summarised as follows:

  • Since graphical representation is not required, it is enough to upload videos and voice recordings for applications for sound marks. For colour mark applications, the section for the colour example must be filled out fully and the "Pantone" colour code must be indicated.

  • When evaluating the trademark applications for "distinctiveness" and "descriptiveness", i) the trademark to be registered should be evaluated together with the goods and services that are the subject of the application; ii) the application should be evaluated as a whole; iii) the perception of the target consumers should be taken into consideration.

  • While the ex officio similarity evaluation is conducted by the office for the same or indistinguishable trademarks i) if there are two composite marks under evaluation, the overall impression that the marks leave should be taken into consideration, ii) if there is one composite and one non-composite mark under evaluation, the evaluation should be made upon the distinctive elements, iii) the distinctiveness level of the trademarks such as low-middle-high should be taken into consideration while the protection scope is determined.

The office, in its announcement, stated that this is a living document and should be updated occasionally according to changes in practice and evaluation. We believe that this detailed work will clarify the principles of absolute grounds for refusal and provide consistency in the office's decisions.

kose-mutlu-yildirim.jpg

Mutlu Yıldırım Köse


Gün + PartnersKore Şehitleri Cad. 17Zincirlikuyu 34394İstanbul, TurkeyTel: + (90) (212) 354 00 00Fax: + (90) (212) 274 20 95gun@gun.av.trgun.av.tr

more from across site and ros bottom lb

More from across our site

Each week Managing IP speaks to a different IP lawyer about their life and career
Ireland joining the UPC would offer plenty of opportunities to local attorneys but there are fears that upcoming referendum could get ‘lost in the noise’
Attorneys at four firms reveal the business opportunities that stem from patent licensing agreements in the life sciences sector
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Counsel at four firms explain their lateral hiring policies and how they retain existing lawyers
Lori Gordon, who has joined from Perkins Coie, says she hopes to turn Goodwin into a 'premier' destination for PTAB work
The LMG Life Sciences Awards is thrilled to present the shortlist for the 2024 EMEA Awards.
Partners at LeanWill Law Firm, a newly launched domestic firm in China, discuss IP opportunities and which clients they plan to target
Each week Managing IP speaks to a different IP lawyer about their life and career
A survey of more than 25,000 in-house lawyers reveals that embracing technology could help law firms win new business
Gift this article