Definition of Class Details Before Trademark Registration Application in Turkey
When we file for trademark registration in Turkey, we use a list of goods and services which is prepared by Turk Patent and Trademark Office. Turkey is a party to the Nice Agreement. Therefore, the international trademark classification known as the Nice classification system is also valid in Turkey.
In accordance with the Nice classification system, the Turkish trademark classification system is organized as the first 34 classes are for goods and the 35-45 classes are for services. Trademark applicants have the right to apply for goods and services at the same time in a single application.
While the trademark classification list is divided into sections from 1 to 45, moreover, each class is also divided into sentences ending with “.” . Applicants do not have to use the exact class details determined by the official listing, but this method is generally prefered because of easiness. It is simple as to tick a box when applying.
Sample:
Class 39 is listed as a separate class. On the other hand, the class is also internally divided as follows:
- Land, water and air transport services; rental of land, water or air vehicles; arranging of tours; travel reservation; issuing of tickets for travel; courier services (messages or merchandise).
- Car parking; garage rental.
- Boat storage.
- Transport by pipeline.
- Electricity distribution.
- Water supplying.
- Rescue services for vehicles and goods.
- Storage, wrapping and packaging of goods.
- Transport and storage of trash; transport and storage of waste.
According to this listing while an applicant files an application for the following
- Land, water and air transport services; rental of land, water or air vehicles; arranging of tours; travel reservation; issuing of tickets for travel; courier services (messages or merchandise).
And another applicant can file for
- Storage, wrapping and packaging of goods.
The fact that when a classification listing sentence ending with a “.” does not prevent the registration of another sentence on behalf of another person, provided that other factors of trademark registration regulation are excluded.
What we should pay attention to here are the relatively different classification details defined in the same sentence. To exemplify this; Again, within the scope of the definition of class 39,
- Land, water and air transport services; rental of land, water or air vehicles; arranging of tours; travel reservation; issuing of tickets for travel; courier services (messages or merchandise).
which is the first sentence in class 39, a company operating in the field of “arranging of tours ” may have made an application in the form of
- Tour arranging services
and its trademark may be registered or registration procedures are still in progress. In such a situation, if another party files an application for
- Courier services
for an identical or indistinguishably similar trademark, its application will be refused due to the previous trademark. Although both applicants have specified different classification details in their applications, one will prevent the other as the definitions are defined together in a sentence in the official trademark classification listing determined by TürkPatent.
Looking at this, would it be appropriate and sufficient to simply use the published official class list when applying for a trademark?
A new first-instance court decision necessitated a reassessment. After a trademark application for
- Games and toys, Battery powered toy cars.
filed before The Turkish Patent and Trademark Office was refused by the decision of the Re-examination and Evaluation Board, the refusal decision was brought to the court for annulment. The court affirmed the refusal in terms of “Games and toys” and canceled Re-examination and Evaluation Board decision in terms of “Battery-powered toy cars”.
“Battery-powered toy cars”, which are “toys” by official classification definition, were evaluated separately from games, considering the possibility(or impossibility) of confusion caused by goods and services. Even though it is included in the same sentence in the class definition, since there is no unfair situation that the trademarks will cause if they are on the market at the same time, it has been decided that the registration request made later is justified.
By this decision Turkish Court come closer to EUIPO point of view. In 001795437 filing numbered oposition the Opposition Division stated that:
“Regarding the earlier services in class 39 which concern information services in relation to transport of persons and goods, they are of a different nature than the contested rental services, despite both relating to the transport sector.”
Should We use the defined class detail in trademark registration applications or should We go for a special class definition?
It seems that it is best to describe in detail what the trademark will be used for in order to successfully get out of the cancellation c
ases due to non-use that will be encountered later or the claim of real rightful ownership. For example, in 9th class the phrase that is,
Apparatus for recording, transmission or reproduction of sound or images, cameras, photographic cameras, television apparatus, video recorders, CD and DVD players and recorders, MP3 players, computers, desktop computers, tablet computers, wearable technological devices (smart watches, wristbands, head-mounted devices) microphones, loudspeakers, earphones, telecommunications apparatus, apparatus for the reproduction of sound or images, computer peripheral devices, cell phones, covers for cell phones, telephone apparatus, computer printers, scanners [data processing equipment], photocopiers.
encompasses a wide array of occupations and markets. Again, for example; For many of the products listed here, many different relevant consumer groups can be defined. Applications to be made by taking only the relevant part of the class definition unfortunately do not affect the Turkish Patent decisions in the current situation, but if the issue comes to the court stage, the court will not display the same attitude.
An application that has a correct class definition and includes “headphones” will at least be able to defend itself more easily against a registered trademark for “copiers”.
On the other hand, if an applicant requesting a trademark registration for headphones includes the entire class definition above in the application, and may be objected to by a registrant who has also included the entire class definition in the application at the time he requested registration for “copiers”. An unnecessary objection procedure may be applied, since both parties cannot predict what the other will actually do.
Get the help of a local trademark attorney
Although the application for a trademark registration in Turkey will be made via the Madrid Protocol, it is certain that consultation with a local trademark agent will be beneficial in the long run.
Contact us for more detailed information about trademark registration in Turkey.