Trademark Application Refusals in Turkey via the Madrid Protocol
The Madrid Protocol facilitates international trademark registration, allowing businesses to seek protection across multiple countries through a single application. Turkey, a member of this system, receives approximately 10,000 applications annually under the Madrid Protocol. This article examines the outcomes of such applications over a 52-week period, focusing on refusal decisions, their underlying reasons, and recommendations for applicants. By analyzing these refusals, we offer insights into the key areas for potential applicants to consider.
Statistical Overview of Refusal Decisions
Out of the applications received via the Madrid Protocol, 2,210 trademarks faced partial or total refusals, yielding an average refusal rate of approximately 22%. This rate highlights the procedural complexities and specific legal standards of trademark registration in Turkey. The data serves as an essential reference for applicants and their legal representatives when strategizing for trademark protection in Turkey.
To illustrate the breakdown of the reasons of trademark application refusals in Turkey, the following pie chart visualizes the proportion of various grounds for refusals based on Turkish IP Law provisions.
Common Grounds for Refusals
The Turkish IP Law, Law No. 6769, forms the basis for evaluating trademarks, regardless of the application route. Here’s a breakdown of the primary refusal reasons under Article 5 and Article 6:
Article 5 Grounds for Refusal
Article 5(1)(ç): Similarity to the previously filed or registered trademarks
Constituting 45% of refusals, this article prevents registration of marks identical or confusingly similar to previous trademarks.
“ARTICLE 5- (1) The following signs set out below shall not be registered as trademark: …
ç) 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 to goods and services of the identical type, …”
When the grounds for refusal are examined more carefully, it is seen that the refusals within the scope of 5/1 (ç) have interesting characteristics. Approximately 12% of the trademark application refusals in Turkey within this scope occur due to the previous application or registration of the same trademark owner. The reasons may be various:
- The trademark owner may have made a change in address or name and not notified WIPO about this.
- In some countries, the company name may be written in different ways. For example, while the applicant applied with the title “XXXX, SOCIETE PAR ACTION SIMPLIFEE” in the previous registration application, they apply only as “XXXX” in the next application. In Turkey, even the slightest difference in the applicant’s name or address causes the trademark to be refused due to the applicant’s own trademark.
- Another reason for refusal may arise from portfolio management problems. In some cases, especially in companies conducting international operations, since the enterprises in the countries are not fully aware of the industrial property portfolios of the enterprises in other countries, trademark applications may be made to the same country without each other’s knowledge.
When we look at the refusal decisions within the scope of 5/1 (ç), it can be said that most of them can be prevented with a simple preliminary study. In short;
- Do a preliminary search and see if there is an application that will cause a refusal
- If your company has changed its address or name, report the change to the relevant office without delay
- Pay attention to the spelling of the address and name in trademark applications and stick to this record once you have created one. Specially applicants of the countries using different alphabets from Turkish alphabet must be aware of the transliteration of their all data
- Manage your industrial property portfolio from a single center. Especially if you are operating in more than one country, have data that will allow you to easily know which IP rights you have in which country.
A preliminary examination by a Turkish Trademark Attorney before applying or at least before the application is examined by TürkPatent examiner can eliminate many problems before they arise.
Additional Article 5 Refusals
While Article 5(1)(ç) accounts for the majority, other subsections like Article 5(1)(b) (lacking distinctive character) and Article 5(1)(f) (deceptive marks) result in fewer refusals. The total counts are as follows:
| – 5/1 (b), (c) | – 218 |
| – 5/1 (b), (d) | – 1 |
| – 5/1 (f) | – 14 |
| – 5/1 (g) | – 2 |
| – 5/1 (ğ) | – 1 |
| – 5/1 (h) | – 1 |
| – 5/1 (ı) | – 1 |
| – 5/1 (i) | – 1 |
“ARTICLE 5- (1) The following signs set out below shall not be registered as trademark: ……
b) Signs which are devoid of any distinctive character;
c) Signs which consist exclusively or includes as an essential element of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of rendering of the services or other characteristics of goods or services,
……..
d) Signs which consist exclusively or includes as an essential element of signs or indications used by everyone in the trade area or which serves to distinguish members of a particular professional, vocational or commercial group from others.
………
f) Signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;
g) Signs which shall be refused pursuant to Article 6ter of the Paris Convention;
ğ) Signs other than those covered by Article 6ter of the Paris Convention but which are of public interest, and which contain historical, cultural values, and emblems, badges or escutcheons for which the consent of the competent authority has not been given,
h) Signs that contain religious values or symbols;
ı) Signs which are contrary to public policy or to accepted principles of morality;
i) Signs which consist of a registered geographical sign or which contain a registered geographical sign.”
Here, it is seen that the most of the trademark application refusals in Turkey are made due to the lack of distinctiveness of the trademark. At this point, it should be noted that; even if it is in another language, words that are used in Turkish or are familiar to the relevant consumer for the purpose of definition or qualification of a good or service can be subject to refusal.
Especially for trademarks that seem suspicious in terms of distinctiveness, getting an opinion from a Turkish trademark attorney before applying can make things easier.
Article 6 Grounds for Refusal – Opposition-Based Refusals
Once trademarks clear the initial examination, they are published for a two-month opposition period under Article 6. During this period, third parties can object if there is a likelihood of confusion with an existing mark. Roughly 26% of the trademark application refusals in Turkey stem from oppositions.
“Relative grounds for refusal in trademark registration
ARTICLE 6 – (1) An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered.
(2) A trademark application for the registration of an identical or indistinguishably similar trademark filed by a commercial agent or representative in his own name without the trademark proprietor’s consent and without any justifiable ground shall be refused upon the trademark proprietor’s opposition.
(3) If a right to a non-registered trademark or to another sign used in the course of trade was acquired prior to the date of application or the date of the priority claimed for the application for registration of a trademark, the trademark application shall be refused upon opposition of the proprietor of that prior sign.
(4) Trademark applications which are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of the identical and similar goods or services.
(5) A trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark due to the reputation the earlier trademark has in Turkey; shall be refused upon opposition of the proprietor of that earlier trademark.
(6) An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright or any other intellectual property right of another.
(7) An application for registration of a trademark identical to or similar to a collective mark or a guarantee mark with identical or similar goods or services, that is filed within three years following the expiration of the protection of the collective mark or guarantee mark due to non-renewal shall be refused upon opposition of the previous right holder. (8) An application for registration of a trademark identical to or similar to a registered trademark with identical or similar goods or services, that is filed within two years following the expiration of the protection of the registered trademark due to non-renewal shall be refused upon opposition of previous trademark proprietor provided that the trademark has been used during this period.
(9) Trademark applications filed in bad faith shall be refused upon opposition.”
When we look at the grounds for opposition, we see that almost all of them are the result of oppositions made based on previous applications or registrations.
In recent years, there has been an explosion in oppositions to trademark publications in Turkey. The number of oppositions made in 2023 was over 60 thousand, and for this reason, the examination periods of trademark oppositions can be lasted within 8-10 months this year. When we also consider the oppositions made against the decision, it can be seen that sometimes the trademark registration process is extended for several years due to oppositions.
Respectively, when we look at the refusals due to oppositions, it is seen that there are actually brands that can be saved. For example, simply requesting proof of use can be enough to prevent many refusals.
Technical Refusals under Article 11
The high number of such decisions, which we rarely encounter in national applications, is striking. 23% of the refusal decisions are made due to Article 11. As such, the number of refusal decisions made due to Article 11 is very close to the refusals made with oppositions.
“Application conditions, classification and division
ARTICLE 11- ….
(3) Goods or services for which application is filed shall be classified in accordance with Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, which was ratified pursuant to the decision of the Council of Ministers dated 12/7/1995 numbered 95/7094. The Office may perform necessary corrections on classes and class numbers belonging to goods and services in the application.”
The most common refused class definitions;
“machines”
“retail services; wholesale services; on-line sale services…”
If the application is a national application, such deficiencies are resolved through error notification, but since the deficiency notification procedure is not applied in Madrid Protocol applications, if a deficiency is found once, the only way to notify is to partially or completely refuse the trademark.
Considering the high number of oppositions, the mechanism of resolving the deficiency through refusal and appeal against refusal can extend the registration process for years.
As an example, the trademark refusal decision given in Turkey in July 2024 reaches the applicant in October 2024 and the applicant has to appeal within two months by making the necessary corrections. Considering that the examination period of the appeal is 8-10 months and that the trademark will be republished for the accepted goods or services if it is concluded positively, it will be understood how much a refusal decision and appeal procedure delays the registration. The situation of opposition against the publication of a trademark that was accepted with an appeal will turn the process into a real nightmare.
The way to protect against such a risk is to benefit from the expertise of a local trademark attorney, even if the application is made through the Madrid Protocol. Conducting a general review with a local trademark attorney before the application is examined by TürkPatent provides the advantage of solving many problems before they arise.
Refusals Related to Guarantee Marks – Article 32
Although rare, nine refusals were attributed to the lack of a technical specification, as required under Article 32 for guarantee marks. Guarantee mark applications require a detailed specification, outlining the procedures and rules for mark usage. Failure to include this specification in the initial application can lead to refusal, as observed in several cases.
Preventive Measures and Recommendations
- Pre-application Research and Local Representation
Collaborating with a local trademark attorney before application submission can provide valuable insights into Turkey’s specific requirements. Local attorneys can assist in classification, conduct conflict checks, and provide guidance on document completeness. - Monitoring and Managing Trademark Portfolios
For multinational firms, keeping a centralized database of trademark portfolios across countries is crucial. This helps prevent conflicts from internal trademark applications and ensures smooth international trademark filings. - Consistency in Corporate Details
Consistency is key. When applying, maintain the same spelling and format for company names, addresses, and other details. Minor discrepancies, especially in countries like Turkey, can trigger refusals even if the applicant is the legitimate rights holder. - Prepare for Opposition Delays
Due to high opposition volumes, applicants should prepare for extended timelines. Understanding this and building it into the trademark application strategy can help manage expectations and plan marketing timelines accordingly.
Trademark application refusals in Turkey under the Madrid Protocol predominantly stem from preventable causes. These include internal inconsistencies within applicant organizations, classification errors, and opposition proceedings. Applicants can mitigate these risks by conducting thorough pre-application research, ensuring consistent use of corporate details, and working with a local attorney familiar with the Turkish trademark landscape. Proper planning and proactive strategies will significantly improve the chances of a successful trademark registration in Turkey, fostering smoother market entry and brand protection.
