Turkish Law Blog
How is the Registration of Same/Identical Trademark Possible under the Law on Industrial Property Numbered 6769?
I. Article 5/3 of the Law on Industrial Property
The Law on Industrial Property numbered 6769, which came into force on 10.01.2017, introduced several new regulations related to industrial property rights. One of the significant new regulations is the consent letter of trademark holder defined within the scope of Article 5/3 of the Law on Industrial Property. Under Turkish law, now, it is possible to register the same/identical trademark, which has already registered by another person for the same or identical goods/services through the assignment of the consent letter. However, the provision related to consent letter is very restricted to satisfy the need for protection of trademark holders’ idea of existing together at the market.
Pursuant to Article 5/1-ç of the Law on Industrial Property, after the registration of a trademark, the Turkish Patent and Trademark Office should refuse another request for registration of the same/identical trademark for the same/identical goods and services. This regulation originates from principle of the unity of trademark registration and serves for the protection of consumers, yet the registration of same/identical trademarks entails the confusion of consumers related to selecting goods and services.
Under the Article 5/3 of the Law on Industrial Property, trademark owner is entitled to issue a document allowing another person to register the same or identical trademark before the Turkish Patent and Trademark Office. Pursuant to this Article, a person aiming the registration of a trademark which is already registered can obtain permission from the trademark owner. Through this document, he/she will hurdle the absolute ground for refusal regulated under the Article 5/1-ç of the Law on Industrial Property. According to Law numbered 6769, this document should be notarized and the consent of the trademark owner should be expressly stated.
There are two types of forms regarding the consent requests that were published by the Turkish Patent and Trademark Office. In the event that a trademark has more than one holder, “Multiple Holder Consent Form” should be filled out. On the other hand, for the single holder, the “Single Holder Consent Form” should be filled out.
II. Article 10 of the Regulation for the Implementation of Law on Industrial Property
The details related to the consent letter were regulated under Article 10 of Regulation for the Implementation of Law on Industrial Property. Pursuant to this Article, the form should contain the followings:
- Identity and contact information of the applicant(s) who have been consented.
- If the consent form is submitted at the application stage, the sample of the trademark subject to consent; if it is submitted at the appeal stage, the application number subject to consent.
- Identification and contact information of the applicant(s) or trademark holder(s) and the application or registration numbers of the previous application or marks subject to consent.
- Goods/services have consented and their class numbers.
- If the consent form has been signed by the attorney on behalf of the applicant or trademark holder, a notarized power of attorney with the authorization of consent or a notarized copy of the power of attorney in question.
In the event that the form does not meet the above-mentioned criteria, the applicant is given two months to fill the deficiencies. If such deficiencies are not remedied within this two month period, the request shall be deemed as not executed.
There is a restricted time stated under Article 10 to submit the consent letter before the Turkish Patent and Trademark Office. The consent letter may be submitted with the application form or in case of the objection for the decision; it could be submitted until the decision is rendered. Although there is a request for consent, if the consent form is not submitted to the Turkish Patent and Trademark Office, no deficiency notice has been sent to the applicant(s). In this case, the request for the consent is deemed unperformed.
Depending the nature of the exclusive license right, the Implementation Regulation has stated a protection for the registered exclusive license holders. In the event that there are exclusive license holders registered at the registry, their written permission should be submitted. This protection has not been foreseen for non-exclusive license holder or other right holders.
Pursuant to Article 10/5 of the Implementation Regulation, the consent should be given unconditionally. At the same time, this is a requirement of the legal security principle.
Under Article 10/6, it is mandatory to submit a separate consent form for each trademark application.
III. Article 5/5 of the European Trademark Directive No. 2015/2436
Article 5/3 of the Law on Industrial Property originates from Article 5/5 of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks. According to this provision;
“The Member States shall ensure that in appropriate circumstances there is no obligation to refuse registration or to declare a trade mark invalid where the proprietor of the earlier trade mark or other earlier right consents to the registration of the later trade mark.”
It is important to state that in some respects, the consent regulation under the EU law differs from the Turkish law. Firstly, the abovementioned provision has been regulated under the title of “Relative grounds for refusal or invalidity”. However, in Turkish law, the consent letter regulation has been regarded as an exception to the absolute grounds for refusal.
Another issue which makes difference, it is obviously mentioned that the trademark holder who permits the registration of the trademark is not able to file for invalidity pursuant to the EU law. In fact, the consent of the right holder is stipulated as an exception to the relative grounds for invalidity under the Article 60 of the Regulation (EU) 2017/1001 of The European Parliament and of The Council of 14 June 2017 on the European Union trade mark. According to the reasons for invalidity regulated under the Article 25 of the Law on Industrial Property, the consent of the trademark holder has not been provided as an exception. However, in our opinion, the trademark holder who permits the registration by another person could not file for the invalidity, since this situation would be contrary to the prohibition of inconsistent behavior principle.
Another point worth mentioning is that pursuant to the Article 5/5 of the EU Trademark Directive, any kind of earlier right holders have the opportunity to consent the registration by another person. For instance, if someone asks for the registration of a trademark which includes the name of a person, the name holder can issue a consent letter for this. In accordance with the Turkish law, the consent is limited with the trademark right. In other words, only someone who has a right related to a “trademark” is able to issue a consent letter for the registration of his/her trademark. If the person who aims to apply for a trademark containing a right of another person other than trademark such as domain name, name, copyright, etc., there is not any opportunity provided under the Turkish law. The sole remedy is that the earlier right holder does not object to the trademark registration pursuant to Article 6 of the Law numbered 6769.
IV. Conclusion and Recommendations
Regulating the consent letter under the Law on Industrial Property, the law-maker paved the way for registration of the same or identical mark for the same or identical goods and services. Therefore, refusal of trademark registration due to Article 5/1-ç is precluded and the will of trademark holders to exist together at the market is preserved. However, the regulation is likely to cause problems due to its limited scope.
Firstly, the consent letter only proves that the earlier right-holder gives consent to the registration of his/her trademark. The form does not include any arrangement regarding the usage of trademarks after registration. Accordingly, there is a high probability for the parties to conclude an agreement to decide how they will use their trademarks. This type of agreements are called as “co-existence agreements”. In cases where this agreement is invalid, the existence of trademark registration may cause problems.
Another problem may arise in respect to consumers. In case of registration of the same/identical trademark for the same/identical goods or services, this situation will cause consumers’ likelihood of confusion. Therefore, we believe that the consent should be given with an agreement and the use of the trademarks should be regulated by the parties in a way that will not mislead consumers. In the light of these explanations, we are of the opinion that the Turkish Patent and Trademark Office should be authorized to audit the agreement in this respect by the law-maker.
 Official Journal, 10.01.2017, N. 29944.
 KAYA, A.: Marka Hukuku, İstanbul 2006, s. 86; GÖRKEM, G.: Markanın Hükümsüzlüğü ve Hukuki Sonuçları, Ankara 2017, s. 30.
 https://www.turkpatent.gov.tr/TURKPATENT/forms/informationDetail?id=100 (The Last Accessed: 21.11.2019).
 Official Journal, 24.04.2017, N. 30047. It will be mentioned as “The Implementation Regulation”.
 Official Journal, L 336, 23.12.2015, p. 1-26 (The Last Accessed: 08.12.2019). It will be mentioned as “The EU Trademark Directive”.
 Official Journal, L 154, 16.6.2017, p. 1-99 (The Last Accessed: 08.12.2019).
 However, it should be mentioned that co-existence agreements are not limited with the registration purposes. It may be concluded for usage purposes without registration.