Trademark Registration: Grounds for Refusal, Opposition and Infringement

A trademark is a sign that distinguishes goods or services, and registration gives the owner protection. This article gives general information under the Industrial Property Law No. 6769 and does not replace an assessment of your specific case.

1. Absolute grounds for refusal

The law provides that certain signs cannot be registered as trademarks (Art. 5). The main ones:

• Signs with no distinctive character.
• Signs consisting exclusively of indications of kind, quality, quantity, purpose, value or geographical origin.
• Signs likely to mislead the public about the nature, quality or geographical origin of the goods or services.
• Signs containing religious values or symbols and signs contrary to public order or morality.
• Signs identical or confusingly similar to a registered or earlier-filed mark for identical or similar goods or services.

A mark that has acquired distinctive character through use before the application date cannot be refused on some of these grounds (Art. 5/2).

2. Relative grounds for refusal

An application is refused if earlier mark owners or rights holders object (Art. 6). Examples: likelihood of confusion (including association), an application by an agent or representative without the owner's consent, applications similar to well-known marks, applications containing another person's name, trade name, photograph or copyright, and applications made in bad faith.

3. Opposition to publication: two months

Oppositions to a trademark application published in the Bulletin, on grounds under Art. 5 or 6, must be filed in writing with reasons to the Institution within two months of publication. If the grounds are not submitted in this period, the opposition is deemed not filed; the opposition fee must also be paid and proof submitted within the same period (Art. 18).

4. Proof of use

In oppositions based on likelihood of confusion, if the earlier mark has been registered in Türkiye for at least five years at the application or priority date, the applicant may request that the opponent show serious use in the preceding five years for the goods or services relied on, or justified reasons for non-use. If this is not proven, the opposition is rejected (Art. 19/2). The Institution may encourage the parties to settle (Art. 19/4).

5. Acts that infringe a trademark

• Using the mark without the owner's consent in the ways specified by law.
• Imitating the mark by using it or an indistinguishably similar sign.
• Selling, distributing, placing on the market, importing, exporting or holding for commercial purposes goods bearing the mark while knowing or being expected to know it is an imitation.
• Exceeding licensed rights without permission or transferring them to third parties (Art. 29).

In infringement cases, the five-year use requirement may be raised as a defence, with the date of the lawsuit as the reference point (Art. 29/2).

6. Before filing

Researching similar registrations and assessing absolute grounds before filing reduces the risk of opposition and refusal. Businesses and entrepreneurs in Yalova can create an appointment or reach us via the contact page.

This article is for general information only and is not legal advice.