Turkish Patent and Trademark Office’s (“TPTO”) online system no longer allows recording a trademark attorney as a representative to the IR applications designated to Turkey. The applicants are still going to be represented by trademark attorneys during the course of opposition and other proceedings; however, the communication on the IR applications is going to be carried through WIPO.
Industrial Property Law numbered 6769 (“IP Law”) introduced a non-use defense tool within the scope of opposition proceedings. In opposition proceedings based on similarity, where the opponent’s trademark has been registered for at least five years, TPTO is entitled to ask (at the applicant’s request) for proof of the use, as of the filing date or date of priority of the later trademark application. The applicant is required to raise this defense by filing a response against the opposition within one month that follows the notification on the opposition. Non-use defense can only be raised at this phase and not responding the opposition causes loss of the right of raising this defense.
Before the entry into force of the IP law, applicants were not being notified about the oppositions filed against the IR applications, as the non-use defense tool was not set forth in the law, and filing a response against the oppositions was not a requirement.
When non-use defense tool has become a part of opposition proceedings, TPTO’s practice on not to inform IR applicants about oppositions has gradually become a problem in Turkey as it was creating a risk for loss of right on raising non-use defense. In order avoid this risk and follow up the IR applications closely the trademark attorneys were being appointed to IR applications, TPTO was communicating with trademark attorneys on the oppositions.
With the latest change in practice, TPTO no longer allows recording a trademark attorney as a representative to the IR applications designated to Turkey. The applicants are still going to be represented by trademark attorneys during the course of opposition and other proceedings; however, the communication on the IR applications is going to be carried through WIPO. This again highlights the importance of monitoring IR applications very closely to ensure a smooth-running proceeding.
