- THE IMPLEMENTING REGULATIONS UNDER THE DECREE-LAW NO 556 PERTAINING TO THE PROTECTION OF TRADEMARKS
THE IMPLEMENTING REGULATIONS
UNDER THE DECREE-LAW NO 556 PERTAINING
TO THE PROTECTION OF TRADEMARKS
been amended on October 2, 2002.)
PART ONE
General Provisions
Object
Article 1 - The object of these Regulations is to specify the procedures and the rules to be followed concerning the time and place of filing and the preparation of the application documents for registering a trademark, and other matters related with trademarks as provisioned in The Decree-Law No 556 Pertaining to the Protection of Trademarks.
Scope
Article 2 - These Regulations encompass the principles, the rules and the conditions for the protection of trademarks by registering such marks for appropriate goods and services.
Legal Foundation
Article 3 - These Regulations have been prepared based on The Decree-Law No 556 Pertaining to the Protection of Trademarks, the Paris Convention, the TRIPS Agreement, the Nice Agreement and the Vienna Agreement.
Definitions
Article 4 - For the purposes of these Regulations;
a) ''Institute'' means the Turkish Patent Institute,
b) ''The Decree-Law'' means The Decree-Law No 556 Pertaining to Protection of Trademarks dated 24.6.1995, as revised with the Law no 4128 dated 3/11/1995.
c) ''Trademark'' means trademarks or service marks including guarantee marks and collective marks.
d) ''Official Trademark Gazette'' means the Gazette in which the registered trademarks are published.
- e) ''Official Trademark Bulletin'' means the Bulletin in which the trademark applications are published.
f) '' Class'' means the international classification of goods and services for the purposes of the registration of marks.
g) ''Figure'' means two dimensional signs or three dimensional signs that can be used as the packaging of the goods but that do not reveal the good which has the attributes of the mark and comply with the other provisions of the Decree-Law.
h) ''Circular'' means the Circular on the Schedule of Fees to be administered by the Turkish Patent Institute in accordance with Articles 6/f and 25 of the Decree-Law no 544.
i) “Paris Agreement” means the amendments of the Agreement for the constitution of a union for the Protection of Industrial Property of March 20, 1883.
j) “TRIPS Agreement” means the Agreement on Trade-Related Aspects of Intellectual Property Rights which is the annex of the Agreement Establishing the World Trade Organization as ratified by Law no 4067 dated 26.01.1995.
k) “Nice Agreement” means the Nice Agreement and its Revisions Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks as ratified by the Council Of Ministers decision no 95/7094 dated 12.7.1995 and published in the Official Gazette No 22373 on 13.08.1995.
l) “Vienna Agreement” means the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks as ratified by the Council of Ministers decision no 95/7094 dated 12.7.1995 and published in the Official Gazette No 22373 dated 13.08.1995.
Place and Time of Application
Article 5 - The natural or legal persons desiring to register a trademark shall file an application at the Institute or at an office authorized by the Institute.
The filing date and the time of the application is the date, hour and minute as accorded by the Institute or by the office authorized by the Institute.
An application filed by post shall have effect as of the date of receipt by the Institute or at the office as authorized within the terms of the second paragraph above.
A separate application must be filed for registering each trademark.
The same trademark shall be registered only once for the same goods or services.
PART TWO
The Characteristics of Marks and Persons Entitled to Protection
SECTION ONE
Characteristics of Marks
Characteristics of Collective Marks
Article 6 - Collective mark serves the purpose of distinguishing the goods and services of the undertakings belonging to a group from the goods and services of the other undertakings.
Characteristics of Guarantee Marks
Article 7 - A guarantee mark, under the control of the proprietor of the mark, serves the purpose of guaranteeing the common characteristics of the undertakings, production methods, geographical origin and the quality of those undertakings.
Characteristics of Trademarks
Article 8 - A trademark is a sign that serves the purpose of distinguishing the goods produced and/or traded by an undertaking from the goods of other undertakings.
Characteristics of Service Marks
Article 9 - A service mark is a sign that serves the purpose of distinguishing the services of one undertaking from the services of other undertakings.
SECTION TWO
Protection
Persons Entitled to Protection
Article 10 - The protection as conferred by the Article 3 of The Decree-Law No 556 Pertaining to the Protection of Trademarks shall be available to:
a) natural and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Turkish Republic, or to the persons who have application rights resulting from the terms of the Paris or Bern Conventions or the Agreement Establishing World Trade Organization.
b) natural or legal persons other than those referred in paragraph (a) above, who are nationals of states which accord legal or de facto protection to the nationals of the Turkish Republic shall enjoy according to the reciprocity principle trademark protection in Turkey. The principle of reciprocity shall be accepted to exist where countries have registered the marks of Turkish nationals or have declared by writing that registrations shall be available.
PART THREE
SECTION ONE
The Application Petition and the Annexes
The Applicants, Filing Conditions and Filing Form and the Application Petition
Article 11 – The following persons may file an application for registration:
a) Real or legal persons (Legal persons shall be represented by a person or persons appointed by their authorized bodies)
b) Trademark Agents.
With respect to trademark registration applications or requests related with procedural matters after registration made by persons unauthorized to act before the Institute, the applicant shall be allowed two months to appoint a trademark agent. The request of the applicant who has not appointed an agent within the prescribed period shall be rejected. The applications of those whose domicile is in Turkey shall be prosecuted in the name of the applicant.
Trademark application petition, conforming to the sample form attached to these Regulations (Annex-1), shall be prepared on paper using a typewriter or a computer printer and all parts shall be filled out without deficiency.
The trademark application petition shall contain the applicant’s name and surname, title, address, telephone number, fax number, if an agent is appointed the name, surname or title, registration number, address, telephone number and fax number of the agent, the type of the mark, meaning and pronunciation, list of goods and/or services, their class numbers and sub-classes, priority information, signature and the name and surname of the signer.
The list of the goods and services to be used with respect of the trademark to be registered shall be indicated in the petition without using generalized designations and in conformity with the international classification. Where general terms have been used, the Institute shall request clarification of the general terminology. The examination shall start only after such clarification has been received.
Documents to be Annexed to the Petition:
Article 12 - The following documents must be annexed to the application petition:
a) 20 copies of the representation of the trademark in minimum 5X5cm and maximum 7X7 cm size suitable for publication and printable reproduction.
b) the original receipt for the payment of the application, search, examination and evaluation fee,
c) the original receipt for the payment of the class or classes fees,
d) properly drafted power of attorney if an agent is appointed.
e) a notarized signature circular where the applicant is a legal entity,
f) a document verifying that the applicant is engaged in trade, in production or in a service activity. This document shall be obtained from either the Chamber of Industry, or the Chamber of Commerce, or the Chamber of Small Business and Craftsmen, or the Trade Registry Office or from the Tax Office,
g) where the application concerns a guarantee or a collective mark, a notarized copy of the technical regulations.
h) if a priority right is claimed, the original copy of the priority document or its notarized copy and the notarized Turkish translation of the document.
ı) where the priority claim concerns an exhibition priority, a certified copy of a document obtained from the authorized office of the country in which the exhibition was held which would specify the name of the product and evidence the first display date of the product with the mark clearly and visibly affixed on the product, and which indicates the official opening date of the exhibition, and a certified copy of the mark.
i) the original receipt for the payment of the trademark registration fee and the Trademark Certificate of Registration issuance and registry fees.
j) for applications based on a foreign registration or an application, the notarized Turkish translation of a certificate evidencing that the applicant is engaged in commercial, manufacturing or service activity, or the original or a certified copy of the certificate of trademark registration issued by the country of registration.
For the withdrawal of an application, the authority for withdrawal must be clearly specified in the power of attorney and notarized. If the agent is changed during the procedures, the notifications shall be made to the new agent.
With respect to the power of attorney referred to in subparagraph (d), those who are not domiciled in Turkey have to appoint an agent who is recorded in the Registry of Agents kept by the Institute in order to register their marks and for other procedures after registration.
Furthermore, the following must be indicated in the technical regulations referred to in paragraph (g),
1) the applicant’s first and last names where they are real persons, commercial titles where they are legal entities,
2) the applicants’ address,
3) the representation of the mark,
4) the communication address,
5) the means and conditions for the use of the mark,
used and means of usage of the mark,
the common characteristics of the goods and services which the mark guarantees, the means of controlling the usage of the mark and the measures for compliance to be utilized when necessary; in the technical regulations of a collective mark, the entities authorized to use the mark.
SECTION TWO
- In order for an application to be examined the following documents must be deposited at the time of filing:
a) a signed request, conforming to the form attached to these Regulations (Annex 1),
b) the original receipt documenting the payment of the application, search, examination and evaluation fee,
c) 5 copies of the representation of the trademark
d) where an application petition or the representation of the mark contain non-Latin letters or numerals their corresponding presentation in Latin characters,
e) the original receipt evidencing the payment of the priority claim fee where a priority claim has been requested in the application,
f) the technical regulations prepared by the undertaking, with respect to applications for a guarantee mark and a collective mark.
Except for the priority fee, provided that the applicant’s identity is comprehensible, where there is a deficiency with respect to the above documents or the list of goods and/or services, or the name, surname, title, address and signature of the applicant, one month shall be allowed for rectifying these deficiencies. The applications whose deficiency have not been rectified within this period or do not contain an address, shall be rejected. The application shall be accorded the filing date as of the date, hour and minute the deficiency is rectified.
Article 14 - The goods and services indicated in the petition in accordance with the Article 24 of the Decree-Law shall be classified in conformity with the international classification of goods and services.
The list of goods and services shall be indicated with their class numbers and grouped according to the classes in which they belong. With respect to those applications containing more than three classes if the additional class fee has not been paid within the period allowed the application shall be examined only with respect to the first three classes indicated in the list of the goods and services.
The Institute reserves the right to make the necessary revisions on the goods, services and classes indicated in the application petition.
Where the list of goods and services has not been prepared in accordance with paragraph two, for any revisions that are made by the Institute in accordance with paragraph three a fixed fee equal to the application fee shall be charged as a fee for revising the list.
Duration
Article 15 - Two months shall be allowed for submitting an explanation of the general terms or for the preparation of the list of goods and/or services or for the payment of the list preparation fee. Where the deficiencies are not rectified within the prescribed period the concerned parts shall be rejected.
Two months shall be allowed for the payment of the deficient class fees or the extra class fees. The classes for which the class fee has not been paid shall be deleted from the application.
Of the documents provisioned in Article 12, those which have not been submitted at the time of filing the application, except for those specified in Article 13 and items (h) and (ı) of Article 12, a period of four months from the date of request shall be allowed by the Institute for the filing of these documents.
Two months shall be allowed for remedying the deficiencies with respect to the procedures under Articles 20, 21, 22, 23, 24, 25, and 26 of these Regulations and for undertaking the necessary changes on the mark in accordance with Article 22 of the Regulations. Where the deficiencies have not been rectified within this period the procedures specified under these articles shall not be implemented and the fees that have been paid shall be recorded as income to the Institute.
Where the deficiencies have not been rectified within the periods as specified in the third and fourth paragraphs, the application or the request shall be considered annulled.
SECTION THREE
Publication of the Application and the Registration
Publication
Article 16 - An application for the registration of a trademark which has complied with the conditions of application without any deficiency and which has not been refused according to Articles 29, 30, 31 and 32 of the Decree-Law shall be published in the monthly Official Trademark Bulletin with the following information:
a) the application date and number,
b) the name and address of the applicant,
d) the list of the goods or services and the class numbers,
e) the goods or services deleted in accordance with the relevant provisions of the Decree-Law.
f) data concerning the agent.
Institute may publish supplementary Bulletins without being constrained by this period.
Where an application is refused after the publication of the application in accordance with the provisions of the Articles referred to in the first paragraph above, the refusal decision shall also be published.
Publication of the Registration
Article 17 - A trademark registered in accordance with Article 39 of the Decree-Law shall be published in the bi-monthly Official Trademark Gazette. The publication shall indicate the information contained in the Register.
SECTION FOUR
Renewal Application
Article 18 - At the request of the proprietor of the mark or his agent, registration of the registered trademark shall be renewed, conditional to the payment of the renewal fee prescribed in the Circular,
The request for renewal shall be submitted within a period of six months before the last day of the month in which the protection ends. In failing this deadline, the request may be submitted within a further period of six months from the last day of the month in which the protection ends conditional to the payment of an additional fee as prescribed in the Circular.
Documents Necessary for Renewal Application
Article 19 - When applying for a renewal, along with the renewal request the original receipt for the payment of the trademark renewal fee, and if an agent is appointed a power of attorney must be submitted. The Institute may request, if required, other documents that might be missing in the file. Deficiencies in a renewal application have to be remedied within two months. Where the deficiencies have not been rectified within two months, the renewal procedure shall not be implemented and the fees that have been received shall be recorded as an income in the Institute’s accounts.
SECTION FIVE
Procedures after Registration
Changes Concerning the Address, the Title and the Characteristics of the Firm
Article 20 - The proprietor of a trademark is obligated to inform the Institute any changes with respect to a trademark. Where after the registration of a trademark changes have occurred with respect to the address, the title and the characteristics of the firm, such changes shall be recorded in the Register upon the request of the proprietor or if such changes are identified at the time of a new application of the proprietor of the mark, corrections shall be requested on all the other marks registered or applied for in the name of the proprietor.
Following documents must be submitted for recording the changes with respect to the address, the title, the characteristics of the firm and for the cancellation of a mark:
a) For changes of the address:
1) a request,
2) the original Trademark Certificate of Registration,
4) power of attorney if an agent is appointed, signature circular for the legal entity.
b) For changes of the title:
1) a request,
the Trade Registry Gazette showing the change of title or other document evidencing such change,
4) the original receipt of payment of fees,
5) power of attorney if an agent is appointed, signature circular for the legal entity.
c) For changes concerning the characteristics of the firm:
1) a request,
3) the original Trademark Certificate of Registration ,
5) power of attorney if an agent is appointed, notarized signature circular for the legal entity.
d) For the cancellation of a mark:
1) a request,
2) if the cancellation is requested by an agent, the original or a notarized copy of a notarized power of attorney specifying the authority for the cancellation,
e the proprietor of the mark is a legal entity, the original or notarized copy of the signature circular,
4) where the proprietor of the mark is a real person, the original or notarized copy of the signature declaration,
5) the original receipt for the payment of the fee.
An issuance fee is charged for the new trademark registration certificate issued.
Transfer by Inheritance
Article 21 - The following documents have to be filed in order to record in the Register changes resulting from the transfer of trademarks acquired by inheritance.
a) a request,
court decision or a copy certified either by the court or by the notary public,
ent of fees,
d) the original Trademark Certificate of Registration,
e) a power of attorney if an agent is appointed, signature circular for the legal entity.
Assignment of the Mark, Partial Assignment and Merger
Article 22 – Following documents must be filed for an assignment:
a) a notarized deed of assignment indicating the mark and the registration number and containing the signatures and declarations of both the assignee and the assignor. In case of partial assignment the full list of the goods or services assigned has to be specified,
b) a certificate of commercial activity for the assignee,
c) the original Trademark Certificate of Registration,
d) the original receipt for the payment of fees,
e) signature circular where the assignee is a legal entity,
f) power of attorney where an agent is appointed.
The assignment is recorded in the trademark register upon the request of one of the parties.
If the assignment procedures fall within the provisions of paragraph four of Article 16 of the Decree-Law, the changes to be effected are communicated to the assignee. Unless the assignee submits in writing his acceptance of the changes to the Institute within the period prescribed in Article 15 of these Regulations the assignment shall not be recorded.
Until the assignment is recorded in the register, the Institute shall recognize the person recorded in the register as the owner of the mark.
Division of a mark is possible under partial assignment. In the case of partial assignments a new file shall be docketed in the name of the assignee with respect to the goods or services assigned and the trademark registration certificate shall be issued after a new trademark registration number is accorded covering those goods or services assigned. The mark shall be recorded in to the register with its new registration number and its first registration date and published in the Official Trademark Gazette. An issuance fee is charged for the new trademark registration certificate issued
Following documents must be filed in case of a merger;
a) a request,
b) the original document evidencing the merger,
c) certificate of commercial activity,
d) the original Trademark Certificate of Registration,
f) if the request is filed by an agent a power of attorney,
g) the original receipt for the payment of fees.
During the prosecution of the merger and assignment recordal procedures, if the proprietor of the mark requests, a new trademark renewal or registration certificate shall be issued containing the latest information with respect to the proprietor of the mark conditional to the payment of the renewal and registration certificate issuance fee. In this case the Trademark Renewal and Registration Certificate will not be requested.
License
Article 23 - The proprietor of a trademark may license his rights over a trademark with respect to some or all of the goods and services for which it is registered. A licensing agreement cannot contain provisions contrary to the Decree-Law and the other related laws, decrees and regulations.
Following documents must be filed for a license:
a) notarized license contract containing the declarations and the signatures of the licensee and the licenser, the registration number of the trademark, the duration and the fees of the agreement,
b) certificate of commercial activity of the licensee,
c) the original Trademark Certificate of Registration,
e) signature circular if the licensee is a legal entity,
f) if request is made by an agent a power of attorney.
g) with respect to the renewed marks, payment of the license recording fee for the continuation of the license.
Trademark renewal and all other changes with respect to a trademark that are recorded in the Register shall be published in the Official Trademark Gazette. The fees prescribed in the Circular of Fees shall be paid for this purpose.
Pledging the Trademark as Security and Changes on the Pledge
24 - A registered trademark may be offered as security independently of the undertaking.
Upon the request of one of the parties, the security pledge shall be entered in the Register and published.
The changes made with respect to a mark that is the subject of a pledge is communicated to the pledge holder by the Institute after the relevant fees are collected from the pledging party. However, an assignment and a cancellation of a mark may only be affected with the consent of pledge holder.
Following documents must be filed for recording of a security pledge.
a) a request,
b) the original security pledge contract or its notarized copy,
c) the original Trademark Certificate of Registration,
d) the original receipt for the payment of fees,
e) power of attorney for the agent if the request is made by an agent or signature circular for the legal entity.
In order to cancel the recording of the security pledge in the Register, the original document evidencing the mutual consent of the parties to the cancellation of the contract or a notarized declaration by the holder of the security pledge must be lodged.
Levy of Execution
Article 25 - A mark may be levied in execution independently of the undertaking. Levy of execution shall be entered in the Register and published.
Prosecution of procedures that may be damaging to the holder of the levy may be undertaken only with the consent of the holder of the levy.
Collateral
Article 26 - A registered trademark may be offered as a collateral independently of the undertaking. The collateral pledge shall be entered in the Register and published upon the request of one of the parties concerned. Where a mark has been pledged as collateral, if prosecution of procedures with respect to mark concerned is in a nature that may be damaging to the holder of the collateral, the Institute shall seek the consent of the holder of the collateral.
Except for the change of address or renewal of the mark, all other procedures shall not be prosecuted until the collateral restraint is lifted.
Following documents must be filed for recording of the collateral pledge in the trademark register:
a) a request,
b) the original or the notarized copy of the collateral contract,
c) the original Trademark Certificate of Registration,
d) the original receipt for the payment of fees,
e) power of attorney for the agent if the request is made by an agent or signature circular for the legal entity.
Termination of the collateral on a mark shall be considered to exist in the following conditions:
a) when the creditor has relinquished his due,
b) upon the termination of the condition or the period where the contract has specified a condition or a time period for the duration of the pledge,
c) upon the sale of the trademark under levy of execution.
Legal Transactions on Applications
Article 15 – Legal transactions of assignment, licensing, inheritance, levy of execution, pledge of security and changes with respect to the owner of the mark shall apply with respect to applications conditional to the presentation of the relevant documents.
SECTION SIX
Fees
Article 28 - The fees payable with respect to a trademark registration and prosecution of procedural matters shall be published in a Circular of Fees to be Administered by The Turkish Patent Institute in accordance with the provisions of Articles 6/f and 25 of the Decree-Law no 544.
The fees are payable by the party requesting the service.
The requests are rejected when their fees are not paid within their legal period.
The fees paid for trademark procedures are not refundable.
A copy of the Trademark Certificate of Registration shall be supplied upon the request of the trademark proprietor or of the agent.
Following documents must be filed for obtaining a copy:
a) a request,
receipt for the payment of the relevant fee for obtaining a copy of the Trademark Certificate of Registration.
Registry
Article 29 - Trademark registry is open to the public. Upon request and payment of the prescribed fee a copy of the Register shall be available to any requesting party.
The Information Contained in the Register
Article 30 - The following information shall be recorded in the Register:
a) the registration number of the trademark, the application and the registration dates,
b) a representation of the trademark,
c) the name, if a legal entity the title, nationality and address of the proprietor of the trademark, and agent’s name and address if applicable,
d) the list of the goods or services in respect of the trademark,
e) class codes.
Priority
Article 31 - Where a priority claim is accepted, the following observations are recorded in the Register and on the Trademark Certificate of Registration.
It has hereby been recognized that the first application for the registration of this trademark has been filed at the administration of..................................... on the day of...................with filing no...................., and therefore is entitled to the priority right as of this date.
PART FOUR
Opposition to the Publication of an Application
Article 32 – An opposition to the registration of a trademark application on grounds that it may not be registered under the provisions of Articles 7 and 8 of the Decree-Law, and an opposition on grounds that there exists bad faith in the application may be filed in a signed petition conforming to the form attached to this Regulation in Annex II within three months of the publication of the application. Institute may request further facts, evidences and documents from the opposing party to be complied within one month.
Where an opposition is found to be legitimate, the application for the registration of the trademark is rejected.
Appeals against the Decisions of the Institute
Article 33 - Any party adversely affected by a decision of the Institute may appeal at the Institute within two months of the notice of the rejection or partial rejection decision. Any of the other third persons who are parties to the proceedings shall on their own have the right of appeal.
Form and Time of Appeal
Article 34 - The appeal/opposition is filed at the Institute within the periods specified in Articles 32 and 33 of these Regulations with a signed petition explaining the justifications for the appeal/opposition.
The original receipt for the payment of the appeal/ opposition fee, and if an agent is appointed the power of attorney should be attached to the petition.
Where all the documents have not been filed at the time of appeal/opposition, the deficient documents may be filed within the period of appeal/opposition without further notice. With respect to appeals against the decisions where the documents have been filed without any deficiency the examination may start before the end of the two months period. Where the specified documents have not been filed within the periods as specified in articles 32 and 33 the appeal/opposition shall be deemed not to have been filed.
Rectifying a Decision
Article 35 - The related department of the Institute may remedy its decision where it finds the appeal/opposition to be acceptable and right.
If the appeal is not found to be acceptable by the related department, the appeal shall be forwarded to the Re-examination and Evaluation Board by the department without comment as to its merits.
Examination of Appeals
Article 36 - The Re-examination and Evaluation Board shall consider the appeal if the appeal is found admissible.
The Re-examination and Evaluation Board shall, if finds it suitable, invite the parties to submit within one month their own observations on the observations of the other parties or those of the administration.
Opposition fee
Article 37 - The fee paid for filing an appeal of the Institute’s decision with respect to a trademark application shall be deducted from the trademark registration and certificate issuance fee if the appeal is accepted.
PART FIVE
Last Provisions
Provisions Repealed
Article 38 - The Implementing Regulations of the Trademark Law published in the Official Gazette no 22262 dated 18.4.1995 have hereby been repealed.
Transitional Article 1 - Those trademarks having the renewal right of a three year period under the repealed Trademark Law no 551, irrespective of their remaining periods shall be renewed within six months of the publication of this Regulation. A trademark which is not renewed within this period shall be deleted from the registry.
Transitional Article 2 - The fees payable for applications filed after 27.6.1995 shall be paid within two months of the coming into force of the Circular of Fees to be administered by The Turkish Patent Institute in accordance with the provisions of Articles 6/f and 25 of the Decree-Law no 544.
Transitional Article 3 - The favorable provisions of these Regulations shall also be implemented for the prior applications.
Entry into Force
Article 39 - These Regulations shall enter into force on the day of publication.
Execution
Article 40 - These Regulations shall be executed by the President of the Turkish Patent Institute.
These Regulations have entered into force after publication in the Official Gazette no 22454 dated 5 November 1995.
The light italic parts are revisions and amendments which have entered into force after publication in the Official Gazette no 23672 dated 20 April 1999.
The heavy italic parts are revisions and amendments which have entered into force after publication in the Official Gazette no 24894 dated 2 October 2002.