Absolute Grounds of Provisional Refusals
In this article, we would like to draw your attention to the partial or total provisional refusals of Turkish designations of the international trademark registrations issued by Türkpatent, which are seen often and dealt with delicately by IP agents in Turkey.
Suppose the trademark holder is notified of such refusal; in that case, the holder will be given two months to respond to the decision, once they are notified regarding the partial or total provisional refusal through WIPO. But in fact, the official notifications are known to be delayed most of the time, so before receiving the official notification, the holder must be provided with the following provided information.
Turkish Patent and Trademark Office (Türkpatent) issues provisional refusals according to Art. 5/1 of IP Code No. 6769. According to the Art. 5/1, the following signs set out below shall not be registered as a trademark:
* Signs that are not capable of distinguishing the goods or services: which are devoid of any distinctive character; which consist of the kind, type, characteristics, geographical origin of goods or rendering of the services; which signs consist of indications used by everyone in the trade area of a particular professional or commercial group; which consist of the shape or another characteristic that results from the nature of the goods; which consist of a registered geographical sign (Art 5/1 a, b, c, d, e, f, i)
* Signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or goods and services of the identical type (Art 5/1 ç)
* Signs containing religious values or symbols and are contrary to public policy or accepted principles of morality (Art 5/1 h, ı)
* Signs which shall be refused according to Article 6ter of the Paris Convention or signs other than those covered by Article 6ter of the Paris Convention but which are of public interest (Art 5/1 g, ğ)
If an international trademark registration designated to Turkey contains a sign which conflicts with at least one of the absolute grounds for refusal above is deemed to be refused by Türkpatent provisionally.
To take action against the refusal decision, the holder must respond to the refusal decision concerning the grounds of provisional refusal in the light of the IP Code No. 6769 of Turkish Law, with a solid response petition.
If the trademark application is refused based on earlier trademarks, preparing a negotiation letter and offering a negotiation with the trademark holder(s) of earlier trademark(s) to claim a letter of consent from them can also be considered as an option in many cases.
Last but not least, if conceivable, after evaluation of assessments and comments, preparing and filing an invalidation action against the earlier trademarks can also be considered as an option, but if this action must be chosen, an attorney at law must evaluate the circumstances.
If no action is taken against a refusal decision, the trademark holder will be deemed to accept the objection of the examiner and abandon the trademark for the refused part.
Article by: Hande Tasan, IP Consultant