RELATIVE GROUNDS FOR REFUSAL IN TRADEMARK REGISTRATIONS 9 June 2021

1. General Concept of Relative Grounds for Refusal in Trademark Registrations

Relative grounds for refusal in trademark registration are regulated in Article 6 of the Industrial Property Code (IPC) No. 6769. Unlike absolute refusal reasons, in trademark registration, relative refusal grounds aim to protect the interests of the owner of the brand whose trademark has been registered or requested for registration before, while absolute refusal grounds aim to protect the public interest. Unlike absolute refusal reasons, since relative refusal reasons do not aim to protect the public interest, the existence of relative refusal reasons will only be subject to examination upon the objection of the owner of the trademark. In this respect, the relative grounds of refusal are not considered among the issues that will constitute the subject of ex officio examination.

According to Article 18 of the SMK, the related persons may file an objection before the Turkish Patent Institute (TPI) due to the fact that the trademark application is contrary to the relative refusal grounds within 2 months from the publication of the trademark application. Although the concept of "related persons" is used in Article 18 of the Industrial Property Code, the primary concept that should be understood; are the persons, institutions and organizations whose rights and interests are or may be damaged due to the trademark application that constitutes the objection. Persons, institutions and organizations can be specified as those whose trademarks have been registered before, those who have applied for trademark registration, those whose legitimate interests are in danger, and those who use the trademark or sign that is the subject of the objection without registration.

2. Relative Grounds for Refusal

As mentioned before, the relative grounds of refusal trademark aims to protect the interests of the trademark owner who has been registered or has applied for registration before. Relative grounds for refusal are regulated in Article 6 of the Industrial Property Code.

1. Possibility of Confusion with a Registered Trademark

According to paragraph 1 of Article 6 of the Industrial Property Code; “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.” The cases that are examined at this particular point; the application of the relevant trademark is the same or similar to a previously registeration of application of the trademark or registered trademark, the goods and services related to the trademark that is the subject of the refusal application and the goods and services to which the previous trademark is related are the same or similar, and the possible other of possbility of confusions due to the last mentioned similarities.

The similarities of the trademark and the goods and services related to the trademark are evaluated within the framework of the different specific cases, and various aspects such as the similarity of the visual and audio elements of the trademark, the similarity of the consumer profile of the related goods and services, the similarity of the target audience and distribution channels are taken into consideration.

2. Commercial Attorney or Representative Applying for Registration in Their Name

According to the second paragraph of Article 6 of the Industrial Property Code; "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." Pursuant to this, the commercial representative and representative of the trademark owner cannot apply for the registration of the same or mostly similar trademark on their behalf without the consent of the trademark owner or the existence of a justifiable reason for them. In this case, their application should be rejected.

However, pursuant to Article 10 of the Industrial Property Code, the trademark owner's commercial representative or representative may request the court to prohibit the use of the trademark if the same or mostly similar trademark is registered in their name without the consent of the trademark owner or without  the existence of a justifiable reason. Also the request of the transfer of the registration to him is possible.

3. Objection by the Owner of an Unregistered Trademark or a Sign That is Used in Commercial Life.

According to paragraph 3 of Article 6 of the Industrial Property Code; “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.” Pursuant to this provision, the trademark right holder has a priority right against registration. Through the former usage of an unregistered trademark or another sign that is used during commercial life, the right to prevent the registration in favor of the right owner for that trademark or sign has been granted.

4. Violation of the Protections for Well-Known Trademarks That is Provided Under the Paris Convention and for Well-Known Trademarks in Turkey

According to paragraph 4 of Article 6 of the Industrial Property Code; “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.” According to this, if a similar or identical trademark of a well-known trademark is applied to be registered in Turkey, the application should be rejected.

In addition to the provision of the 4th paragraph, the 5th paragraph of the 6th article of the Industrial Property Code can be taken into consideration together due to its strong relevance to this provision. According to this; “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.” Pursuant to this provision, the trademark or sign that constitutes the objection must be the same or similar to the trademark that has reached the level of well-known in Turkey. Moreover, the registration application will be rejected in cases where the later registration of trademark provides an unfair benefit from the well-known trademark, damages its reputation or harms its distinctive character. For a valid relative ground of refusal pursuant to paragraph 5, the recognition of the trademark is not enough only itself, but one of the three conditions above must also be present. Finally, a point that is different from paragraph 4 is the possibility of rejection of the application for different goods or services under the provision of paragraph 5.

5. Trademark Registration of Someone Else's Name, Photograph, Copyright or Intellectual Industrial Property

According to the 6th paragraph of the 6th article of the Industrial Property Code; “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.” Names that cannot be registered according to this provision can be considered as names that are well-known by the society and belong to that person. Similarly, there may be signs that constitute the subject of copyright, and in case of unauthorized registration of another's trade name, the provision of paragraph 6 will constitute a relative ground for rejection. The application should be rejected by considering the spectrum of activity of the trade name with the goods and services to be covered by the trademark which is the subject of the application.

6. Objection Regarding the Application for an Application of Trademark Same or Similar to the Terminated Common or Warranty Trademark.

According to paragraph 7 of Article 6 of the Industrial Property Code; " 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. " According to this provision, it may be possible to raise this rejection by any owner of the common or warranty trademark.

7. Objection Regarding the Trademark That is Same or Similar to the Trademark Which is not Renewed After the Protection Period

According to paragraph 8 of article 6 of the Industrial Property Code; “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.” The protection period specified in this provision is 10 years. However, in accordance with this, the trademark is also protected for two years with the relative grounds for refusal. The important point is that the trademark which its protection period has expired should continue to be used within this two-year period.

8. Bad Faith

According to the 9th paragraph of the 6th article of the Industrial Property Code; “Trademark applications filed in bad faith shall be refused upon opposition.” Whether the registration applications involve bad faith or not, this issue is examined over different specific cases on its own. However, in general, it can be thought that the registration applications that will be counted involve bad faith. For example; Applications for registration with the aim of gaining unfair advantage from another trademark, applications for the same or very similar trademark made by taking advantage of the nature of the legal relationship between them and the previous trademark owner can serve as examples in this regard.