Monitoring Madrid Protocol Applications in Turkey is an absolute necessity for an applicant specially if there is a possibility of an opposition against publication. Turkey has been accepting applications through the Madrid Protocol since 2000. To date, tens of thousands of applications have been made using the Madrid System. Over time, the process has changed and developed on the Turkish side as well. For a long time, when there was an objection in the applications where Turkey was chosen, the applicant was not notified.
Since the applicant was not aware of the objections made to him/her application, she could not defend himself/herself in time, and perhaps he/she was faced with the loss of a trademark that he/she would have won.
This situation changed a few years ago. The Turkish Patent and Trademark Office (TPTO) has started to notify Those who apply through the Madrid Protocol about the objections. Notification is a positive development, but it has had some effects.
Notification of Objections Against Applications Via WIPO and Effects
Before the TPTO started to make notifications of objections, it was accepting the applicants’ counterviews against objections until the oppositions unit made a decision on the objection, if the applicant realized it in due time. This procedure changed when the Annunciation application started.
After notifying the applicant about oppositions monitoring Madrid Protocol Applications in Turkey become more important. Based on notification the regulation of oppositions against trademarks applied for national applications in Turkey is now valid for app
lications made via Madrid Protocol. Accordingly, if there is an objection to the application, the applicant is notified that the objection has been made, and the applicant has to submit his counterview, if any, against this objection within one (1) month.
There can be significant advantages in defending the application against an opposition. For example; If the registration date of the previous trademark objecting to a trademark is more than 5 years, there is a right to demand a proof of use.
Based on the 19th Article of IP LAW numbered 6769, the opposed trademark applicant asks the opposer to prove that he/she is using the trademark in the class or classes to which he/she objects. If the opposer cannot prove the genuine use of the trademark in the relevant class(es), the opposition made in accordance with the 1st paragraph of Article 6 will be rejected without being examined.
The applicant whose trademark application is opposed can only enjoy this right when defending against the opposition filed to the publication. If a defense is not made and the trademark is rejected, the applicant has the right to appeal against the decision, but ca
n no longer demand proof of use.
At this point, the benefit of monitoring the trademark in Turkey by an authorized trademark attorney emerges. The Turkish attorney can monitor the trademark and be notified when an opposition is filed against the trademark and inform the applicant before the one-month defense period begins. In this way, the applicant is spared the hassle of hastily preparing a defense in a narrow time frame.
TPTO Does Not Send Entire File When Notifying The Applicant About The Objection
What we must understand from the notification of the opposition to the applicant is only the notification that an opposition has been filed against the trademark publication. This notice does not explain who is opposing, what arguments are advanced in their opposition, or on what evidence they are based. There is a link for this in the notification, but it is not possible for the Foreign applicant to reach the details from here.
The applicant can access the details of the opposition filed against the trademark application only as a result of authorizing a trademark attorney in Turkey. Turkish Trademark Attorney can only enter the system and obtain the relevant files. Therefore;
- To be informed in a reasonable time of the oppositions made to your application within the scope of the Madrid Protocol in Turkey,
- Reaching the details of the opposition and
- In order to respond to the opposition in time
It is necessary and useful to appoint a trademark attorney in Turkey in advance.
The publication of your trademark was opposed to, and as a result of the examination, it was decided to reject the opposition and to continue the registration procedure of the trademark. In this case, the third party has the right to appeal against the decision. In case of such a secondary level appeal, the applicant has the right to defend the trademark with a secondary counterview.
The secondary level appeal we mentioned will be examined by the Re-examination and Evaluation Board and its decision will be the final decision of the TPTO. Here, too, it is necessary to contact a trademark attorney for the defense of the brand.
For further details of Madrid Protocol filings in Turkey reach us.
