INTERNATIONAL TRADEMARK REGISTRATION
Ways to apply for a trademark abroad;
WIPO application within the scope of the Madrid Protocol;
The Madrid System, also known as the multi-country application of which Turkey is a member, is a system that allows international registration of trademarks in more than one country with a single application and in a single language. It also ensures that any information changes made after the trademark is registered are recorded in the International Registry.
European Union trademark application (EUTM);
It is a trademark registration system that allows you to protect your trademark in all 27 member countries of the European Union.
African Union trademark application (OAPI);
It is a trademark registration system that allows you to protect your trademark in all 17 member countries of the African Union.
National (Individual Country) Application;
It is a trademark registration system that allows you to protect your trademark in countries that are not included in the Madrid Protocol or community systems.
WIPO APPLICATION UNDER THE MADRID PROTOCOL
The rights arising from trademark registration are national in nature and provide protection only in the country where the registration is made. Therefore, if the trademark is to be protected abroad, it must be registered separately in each of the countries where protection is requested. Within the scope of the Madrid Protocol on the International Registration of Trademarks, which entered into force in our country on January 1, 1999, Turkish citizens, those residing in Turkey or those engaged in commercial or industrial activities in Turkey have the right to apply for a trademark through the Turkish Patent and Trademark Office with more than 110 offices that are members of the Madrid System.
In order to request an international application within the framework of the Madrid Protocol, it is necessary to have an application or a registered trademark in Turkey and to make the international application based on this trademark to the TURKISH PATENT AND TRADEMARK OFFICE.
In this context, the decision whether the applications made will be registered is made after the examination of each office where registration is requested within the scope of the office's own legislation.
The Madrid System aims to:
a) Register trademarks in more than one country with an international application made in a single language and with a single currency application fee paid,
b) Ensure that changes made after the trademark is registered (such as change of title or address, transfer, restrictions on goods and services lists) are recorded in the International Registry through a single and simple process.
ADVANTAGES OF THE MADRID SYSTEM
Ease of Application
Thanks to the Madrid System, it is possible for the trademark owner to protect their trademark in more than one country with an application form prepared in a single language.
Expansion of Trademark Protection
In case the trademark owner's business strategy changes or their financial situation develops at a later date, the Madrid System allows their trademark to be protected in new markets.
International Protection
As of August 1, 2023, there are 131 member countries[1] in the Madrid System. Thanks to the Madrid System, trademark owners can protect their trademarks in one or more of the 131 countries. You can access the list of member countries of the Madrid System here.
Control of Applications from a Single System
It is possible to control and perform various transactions for international trademark applications made in more than one member country only through the central system provided by the World Intellectual Property Organization ("WIPO"). In addition, any changes to be made after the registration of the international trademark (such as changes to the name or address of the trademark owner, transfers, restrictions on the goods and services lists) can be made through the same central system through the simple procedures of the Madrid System.
Cost Advantage
The Madrid System has prevented the need for separate trademark registrations in each country and eliminated the obligation to pay attorney and official institution fees that must be paid for international trademark applications in each country.
Renewal of the Trademark with a Single Application
According to Article 7 of the Madrid Protocol, international trademark registration is protected for a period of 10 years. However, the international trademark in question can be renewed upon request at the end of each 10-year period, provided that the renewal fee is paid.
EUROPEAN UNION TRADE MARK (EUTM)
The European Union Trademark is a type of trademark that is valid in all member states of the European Union. The examination and registration systems are carried out by the European Union Intellectual Property Office (EUIPO) with its new name. European Union Trademark applications can be made directly to the European Union Intellectual Property Office, to the trademark-patent offices of the member states of the Union, or to the Institution within the framework of the Madrid Protocol. The registered European Union Trademark provides its owner with equal rights valid in all member states.
The main advantages of the Community trademark are;
It can be stated that the trademark can be registered in all European Community countries with a single application and;
It has much more economical costs compared to separate registration applications in each country.
When compared to the Madrid Protocol explained under heading “III” below; there is no requirement for at least one application in the country of origin. Thus, as in the Madrid Protocol, the dependence on the trademark in the office of origin has been eliminated. All countries must be selected at once. There is no right to register in the desired countries. The transactions of all countries are interconnected. Therefore, if the trademark is rejected in one country; it will result in rejection in other countries as well, which is a disadvantage.
PROOF OF USE IN US TRADEMARK REGISTRATION
One of the countries where applications can be made within the scope of the Madrid System is the United States of America (USA). If the American Trademark Registration is provided after the trademark application in the USA, the renewal process of the trademark will be carried out 10 years after the application date.
However, unlike most other countries in the USA, if the American Trademark Registration is provided; between 5 years after the registration date and the beginning of the 6th year, proof of use documents proving that the trademark is used in the USA must be submitted to the USPTO (American Patent and Trademark Office). For example, if the registration date of the trademark in the USA is 08.11.2023, proof of use documents must be submitted between 08.11.2028 and 08.11.2029. The scope of proof of use documents includes; invoices, customs declarations, catalogs, price lists, packaging, labels, photographs, advertisements, etc. documents are entered, the important issue is to prove that the trademark is used intensively and seriously in the USA.
DESIGN REGISTRATION
Design creates innovation and difference in products; provides functional and visual innovation. In design protection, the external appearance of the whole or part of two or three-dimensional products is taken into consideration.
Third parties cannot produce, market, sell, import, use for commercial purposes or keep for these purposes the product to which the design or design is applied within the scope of protection without the permission of the design owner, or make a proposal to make a contract regarding this design or product to which the design is applied.
In order for designs to be protected, they must first comply with the definitions of “design” and “product”.
WHAT IS A PRODUCT?
A product refers to any object produced industrially or manually, excluding computer programs, as well as a combined product or parts of this product, objects such as packaging, presentations of multiple objects perceived together, graphic symbols and typographic characters.
WHAT IS A DESIGN?
Design is the appearance of the product as a whole or a part of it or the ornamentation on it, resulting from features such as line, shape, form, color, material or surface texture.
HOW IS DESIGN PROTECTION OBTAINED?
Designs are protected as “registered design” if they are registered by applying to the Institution, and as “unregistered design” if they are presented to the public for the first time in Turkey, depending on the applicant’s preference. If a design meets the conditions of novelty and distinctiveness, it benefits from the rights provided by the Industrial Property Law No. 6769.
WHAT ARE THE PROTECTION CRITERIA?
Novelty: It refers to the fact that an identical design has not been presented to the public anywhere in the world before the application or priority date for a “registered design”; before the date the design was first presented to the public for an “unregistered design”. Distinctive nature: It refers to the difference between the general impression that a design leaves on an informed user and the general impression that any design presented to the public before the application or priority date for a “registered design” or before the date the design was first presented to the public for an “unregistered design”.
WHAT DESIGNS ARE EXCLUDED FROM THE SCOPE OF PROTECTION?
Designs that do not comply with the design and product description,
Designs that are not new and distinctive,
Designs that are contrary to public order or general morality,
Designs with appearance features required by the technical function of the product,
Designs that must be produced in certain shapes and sizes in order for the product on which the design is used or applied to be mechanically mounted or connected to another product,
Designs that include the improper use of sovereignty symbols and signs, emblems, insignia or designations that are outside this scope but are of public interest, have become public property in terms of religious, historical and cultural values and for which the relevant authorities do not grant registration permission are excluded from the scope of protection.
FOR HOW MANY YEARS ARE DESIGNS PROTECTED?
The protection period of registered designs is 5 years from the application date. The protection period can be extended up to 25 years by renewing the registration in five-year periods. The protection period for unregistered designs is 3 years from the date the design for which protection is requested was first presented to the public in Turkey.
CAN A DESIGN REGISTERED IN TURKEY BE PROTECTED WORLDWIDE?
Design registration provides national protection to applicants. A design registered in Turkey is protected only within the borders of Turkey.
If the design is to be protected in more than one country, separate design registration applications must be made to the offices of the countries where protection is requested. However, it has been seen that applying to each country office separately brings with it problems such as different application procedures and different language usage, and systems have been created that allow the design to be registered in more than one country with a single application. In this context, international design registration applications can be made through the World Intellectual Property Organization (WIPO).
REGISTRATION OF COMPUTER PROGRAMS AND SOFTWARE
Another sector protected by copyright is the software and information technology sector and its products. Computer programs are protected as scientific and literary works according to Law No. 846. Works, including software, benefit from an automatic protection that starts from the moment they are created. In order for protection to start, the software does not need to be registered or approved by any institution. However, it is possible for the works to be registered by the General Directorate of Copyrights of the Ministry of Culture and Tourism upon the request of the rights holders. In the event that the software is used without the permission of the rights holders, it is possible to file legal and criminal lawsuits under Law No. 5846.
The legal rights granted to companies or individuals who register computer programs and databases under the title of infringement of financial rights according to the LAW ON INTELLECTUAL AND ARTISTIC WORKS are as follows;
1. Those who sell or distribute a work or its reproductions in violation of the provisions of this contract, despite having an existing contract between them, shall be sentenced to imprisonment from three months to two years or a heavy fine from ten billion lira to fifty billion lira or both, taking into account the severity of the damage,
2. Those who sell a work and its reproductions in places listed in the seventh paragraph of Article 81 of this Law without the permission of the right holder, shall be sentenced to imprisonment from three months to two years or a heavy fine from five billion lira to fifty billion lira or both, taking into account the severity of the damage,
3. Without the permission of the right holder;
Those who process a work in any way
Reproduce a work in any way,Disseminate a work in any way,
Smuggle copies of a work into the country by legal or illegal means and engage in commercial activity in any way,
Show or represent the work in public places, organize this display or distribute or mediate its publication by means of any means of transmitting signs, sounds and/or images, including digital transmission
A prison sentence of two to four years or a heavy fine of fifty billion lira to one hundred and fifty billion lira or both, depending on the severity of the damage.
Optional registration and registration of software In order not to violate financial and moral rights and to facilitate proof in determining the right holders, it is possible to register and record software created in source code or object code with the General Directorate of Copyrights of the Ministry of Culture and Tourism. In addition, in the next stage, provided that they produce a computer program result, preparatory designs bearing the owner's characteristics can also be recorded and registered as scientific and literary works. The registration and registration document provides ease of proof in determining the owner or rights holder of the work in case of a dispute regarding part or all of the codes constituting the computer program. This process, which is carried out based on a declaration upon the application of the work rights holders, does not have a right-making effect. It only provides ease of proof. It can be used as the beginning of written evidence in legal disputes. After the approval of the application process by the Ministry, the file uploaded to the system and containing the computer program codes is stamped with a time stamp and then a registration and registration document bearing a signature is produced. This document produced is obtained digitally by the applicant on the system used for the application.
