Madrid Protocol vs. National Trademark Application in Turkey

Foreign applicants seeking trademark protection in Turkey generally have two main filing routes: designating Turkey through the Madrid Protocol or filing a national trademark application directly before the Turkish Patent and Trademark Office (TÜRKPATENT).

The two routes ultimately provide trademark protection in Turkey, but they differ in filing procedure, costs, representation, management of the registration and dependency on a basic application or registration.

This article compares the Madrid Protocol and direct national filing routes from the perspective of a foreign trademark applicant. For a general explanation of the filing, examination, opposition and registration procedure, see our Trademark Registration in Turkey page.

Madrid Protocol

Turkey has been a member of the Madrid Protocol since January 1, 1999. Foreign trademark owners may therefore designate Turkey through an international registration under the Madrid System, subject to the applicable WIPO and Turkish trademark procedures.

Benefits of using the Madrid Protocol are generally known, but let’s repeat briefly here:

1- Cost-effectiveness: The Madrid Protocol can be cost-effective when trademark protection is sought in several countries, including Turkey. A single international application can designate multiple Madrid System members, avoiding the need to initiate separate national filing procedures in each country. The actual cost advantage depends on the number of designated countries, classes and the circumstances of the particular application.

2- Centralized management: The Madrid System provides a centralized mechanism for managing an international trademark registration. Changes concerning the holder’s name or address, changes in ownership and renewals can generally be recorded centrally through WIPO rather than separately before each designated trademark office.

3- Flexibility for future expansion: The holder of an international registration may subsequently extend protection to additional Madrid System members through a subsequent designation. This can be useful where the geographical scope of trademark protection needs to expand as the business enters new markets.

4- Simplified international filing: The Madrid System allows the applicant to manage the international filing process through a centralized system rather than filing separate applications directly with each national office. Local representation may nevertheless become necessary in a designated country if an objection, provisional refusal, opposition or other local proceeding arises.

5- Language advantage: The international application is filed in one of the languages accepted under the Madrid System. This can reduce the need to prepare separate applications in the national language of every designated country, although translations or locally adapted information may still be required in particular proceedings.

Disadvantages of Madrid Protocol

1- Dependency on the basic mark: An international registration under the Madrid System remains dependent on the basic application or registration for five years from the date of the international registration. Certain changes affecting the basic mark during this dependency period may therefore affect the international registration and its protection in designated countries, including Turkey.

2- Limitation by the basic mark: The goods and services covered by an international application cannot extend beyond the scope of the goods and services in the basic application or registration. This may limit flexibility if broader or differently formulated protection is required for particular designated countries.

3- Delays and complexities: The Madrid Protocol relies on a two-stage examination process. First, the application is examined by the World Intellectual Property Organization (WIPO), and then it is transmitted to the Turkish Patent and Trademark Office (TÜRKPATENT) for examination. This can lead to delays and potential complications if the TÜRKPATENT raises objections or requirements specific to Turkish trademark law.

The overall duration may vary depending on the examination process, provisional refusals, oppositions, appeals and other circumstances affecting the application.

4- Higher possibility of a refusal: Since the applicants, for example, do not have full knowledge of the legislation in Turkey and the regulation applied in WIPO does not fully match with Turkey, some details that are not a problem until they enter Turkey may cause the refusal of the trademark in Turkey.

For example, minor differences in the applicant’s name or address may not be problematic initially. However, these differences can lead to trademark refusal if there is a previous trademark by the same applicant in Turkey.

In another case, while the class detail is accepted by WIPO or in the country of first application, in Turkey the definition may seem vague and therefore the trademark may have to be refused.

Disadvantages of National Application

1- Obligation to appoint an attorney: Foreign applicants must make their trademark registration application in Turkey with an authorized trademark attorney in Turkey. Tasks such as appointing a representative, communicating the details of the application and additional communication regarding the progress of the application create a workload and loss of time when it is considered that applications are made in more than one country.

2- Cost: While only the official costs are paid during the Madrid Protocol application, additional attorney fees must be paid in the national application. In this case, the cost of trademark registration will increase.

Advantages of National Application

1- Cost: We wrote above that Madrid Protocol applications have a cost advantage compared to the national application, but this is a bit complicated. If an application is made in several countries at a time and there is Turkey among them, the average cost per country decreases, so the application in Turkey seems to be low-cost. On the other hand, if an application is to be made only in Turkey, using the Madrid Protocol may create higher costs. The relative cost therefore depends on the number of countries designated, the number of classes and the circumstances of the particular filing strategy.

2- Registration success: We frequently encounter refusal decisions for technical reasons in applications made through the Madrid Protocol. Avoidable deficiencies such as irregularities in class identification, errors in address and title determination can increase the registration period to several years. When making a national application, this possibility can be determined in advance and it can be prevented from causing delays during the procedures.

3- Direct processing: A national application is filed directly with TÜRKPATENT without the additional international processing stage before WIPO. This can simplify communication and may reduce procedural delays, particularly where issues concerning classification, applicant details or examination arise.

4- Direct control and customization: Filing a national application grants you direct control over Turkey’s trademark registration process. This enables you to oversee every aspect and make informed decisions. Thus, you can customize your application to meet TÜRKPATENT requirements, ensuring local regulation compliance.

5- Independent validity: A national trademark application in Turkey is independent of any basic application or registration in the applicant’s country of origin. Its validity is therefore not affected if a trademark application or registration in another country is subsequently refused, cancelled, withdrawn or allowed to lapse.

Madrid Protocol or National Application?

There is no single filing route that is preferable in every case. The Madrid Protocol can be particularly efficient where protection is sought simultaneously in several countries and centralized portfolio management is important. A direct national application may be preferable where Turkey is an important individual market, where the applicant wants the application to be prepared specifically for Turkish practice, or where independence from a basic application or registration is important.

The appropriate route should therefore be determined according to the applicant’s countries of interest, existing trademark portfolio, goods and services, filing strategy and expected future expansion.

For further information about direct filing and the trademark registration procedure before TÜRKPATENT, see our Trademark Registration in Turkey page.

Contact us for more information about trademark registration in Turkey.