Unlock the Power of Trademark Registration in Turkey: Madrid Protocol vs. National Application

Madrid Protocol vs. National Application

Madrid Protocol is the most preferred method by Foreign applicants for trademark registration in Turkey. There are basically two ways for trademark registration in Turkey. These are:

– Madrid Protocol

– Regular National Application

In our opinion, if the country of application is Turkey, it may be meaningful to make a series of evaluations before the application. In fact, at this point, a mixed path can also be suggested.

Madrid Protocol application under the consultancy of an expert Turkish Trademark Attorney!

In this article, we will compare the two and try to identify their advantages and disadvantages against each other and evaluate the potential benefit of consulting a Turkish Trademark Attorney.

Madrid Protocol

Turkey has been a member of the Madrid Protocol since January 1, 1999 and has started to accept international applications since that date. The table shows the Madrid Protocol and national application selections in trademark applications of foreigners to Turkey by years.

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

1- Cost-effectiveness: Using the Madrid Protocol can be more cost-effective if you intend to register your trademark in multiple countries, including Turkey. By filing a single international application, you can designate Turkey as one of the countries where you seek trademark protection, saving time and money compared to filing individual national applications. It’s cost is even less than official fees of national application.

2- Streamlined process: The Madrid Protocol provides a centralized system for managing trademark registrations in multiple countries. You can do address, name changes or assignments, and Renewals via WIPO.

3- Flexibility and expansion: Registering via the Madrid Protocol offers flexibility for future expansion. If you decide to expand your business and seek trademark protection in other countries that are also members of the Madrid Protocol, you can easily extend your existing trademark registration to those countries without initiating new national applications.

4- Practical way: When you use the Madrid Protocol route, you do not need to appoint proxies in other countries and conduct independent communications with them. This saves you time and also saves you the cost of a proxy in other countries.

5- Language advantage: You make the application in a language accepted by the international office, and by writing in that language for your application in many countries, you will avoid additional costs such as translation into each country’s language.

Disadvantages of Madrid Protocol

1- Dependency on home country registration: To apply for trademark protection in Turkey via the Madrid Protocol, you must have a valid existing trademark registration in your home country. If your home country trademark application is rejected or canceled within five years of the international registration, the Madrid Protocol registration may be invalidated in Turkey as well.

In addition, in some cases, if you cannot reach the registration in your own country for various reasons, it can be a bit more complicated. In such a case, you may have to apply in another country that is a member of the Madrid Protocol and use the international system through that country.

2- You are limited to the class list in the main application: Since the Madrid Protocol application is dependent on a first application, it also depends on the class details in that application. If you want to add another class detail to your application, you must first make a new application in your origin country.

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 (TPTO) for examination. This can lead to delays and potential complications if the TPTO raises objections or requirements specific to Turkish trademark law.

Applications made to Turkey through the Madrid Protocol are completed in 10 months at the earliest in recent years. This period may extend up to 17-18 months in some applications. Especially if an opposition has been made to the trademark or the application has been partially or completely rejected and the applicant has made an appeal, the period may be much longer.

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.

5- Registration certificate: A trademark registration certificate showing the registration in Turkey is not issued in Madrid Protocol applications. Especially during customs procedures, sometimes a certificate showing that the trademark is registered can be requested. In such cases, since there is no certificate in hand, an application is made to the Turkish Patent Institute and a copy is requested. This process takes time and can cause delays.

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. For example; When a new application is made to Turkey for a single-class and colored trademark, the fee will be 940 CHF and this amount will be higher on average than the total cost of the national trademark registration application to be made in Turkey.

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- Fast registration: As we mentioned above, Madrid Protocol applications can take up to 17-18 months, even in regular operation. National applications are completed in an average of 5-7 months in a regular operation.

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 TPTO requirements, ensuring local regulation compliance.

5- Independent validity: A trademark registered through a national regular application is independent of any home country registration. This means that even if your trademark is not registered in your home country, you can still secure protection in Turkey by fulfilling the local requirements.

Madrid Protocol or National Application?

Overall, once registration is complete, the advantages of the Madrid Protocol in the long run are undeniable. Therefore, an application for the Madrid Protocol whose registration has been completed should be considered ideal. On the other hand, taking into account the difficulties of reaching the registration, the advantage of getting some support is also seen.

Contact us for more information about trademark registration in Turkey.