AD462spring2019

© Mehmet Nâfi Artemel, 2019. All rights reserved

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 Trade marks, like other intellectual property
rights, are valid and protected within the
borders of a nation where they are registered.

 Trade marks are therefore referred to as

being ‘territorial’ i.e. a trade mark is valid
within the borders of the territory (state,
country, nation) for which it is registered.

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 An application will have to be made by the
business that wishes to have a trade mark, to
a designated (belirlenen, yetkilendirilen)
authority (yetkili merci).

 In Turkey, this national authority or

organization for the registration of trade
marks is TurkPatent i.e. the Turkish Patent
and Trademark Office (formerly titled as the
“Turkish Patent Institute”)
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 Since trademarks are one of the IP rights that come
under ‘industrial property rights’,

 they are administered and regulated by the Turkish

Patent and Trademark Office (Türk Patent ve Marka
Kurumu (abbreviated as ‘Turk Patent’), which is

 affiliated to the Ministry of Science, Industry and

Technology, which is

 In charge of ‘industrial property rights’

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 If the application for a trade mark is approved
then a ‘trade mark certificate’ shall be issued
and granted by the national authority i.e.
Turkish Patent and Trademark Office
(TurkPatent) in Turkey

 See the trade mark certificate below that is

displayed in the entrance to Nusr-et
Restaurant at Etiler.
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 A friend from abroad was curious about the place
and we popped into the Etiler branch of Nusr-et the
restaurant a few years ago but did not sample the
food.

 As soon as I noticed the trade mark certificate at the

entrance I took a picture so as to share it with AD 462
students

 I conducted the trade mark search at the local,

regional and international level
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Before Nusr-et (entrance to the Grand Bazaar)

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After Nusr-et: Contribution to Turkish and Ottoman cultural history and art!

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 See the trade mark certificate below that is
displayed in the entrance to Nusr-et
Restaurant at Etiler.

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 Former name of the Turkish Patent
and Trademark Office

The trade mark is

for ‘services’

This is the ‘trade mark’

Or to be precise the
‘service mark’

The class number of the (service) mark is 43

Photo taken at Nusret Etiler Protection is granted for a 10 year term

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 The trade mark certificate has been granted
by the Turkish national authority i.e. the
Turkish Patent and Trademark Office, which
was formerly called the Turkish Patent
Institute.

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 The registered trade mark is for ‘services’ (hizmet) as is
mentioned on the certificate.
 The fact that the certificate refers exclusively and only to
‘services’ means that the trade mark can and is intended
(by the owner) to be used only for services (i.e. not for
goods).
 Where a trade mark is granted for services, it is
technically called a ‘service mark’ and not a trade mark.
However, service marks are usually simply referred to as
trade marks and no difference is made in everyday
language.
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 is the ‘trade mark’ or to be precise
the ‘service mark’ for which a registration
certificate has been granted.

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 A trade mark is granted for a term/duration/time
period/length of 10 years.
 This 10 year period is renewable for another 10
years at the end of each 10 years.
 Trade marks, provided they are renewed every
10 years, remain the property of the owner
forever.

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 ‘Emtia’ is the plural of the Turkish word ‘meta’,
and means commercial goods (ticaret mallari)

 The Turkish word ‘Emtiasi’ with the

corresponding number (43) refers to the class of
commercial goods (in this case services) for
which the trade mark is registered.

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Classes under which trade marks and
service marks may be registered

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 Something we are not often told in management,
marketing or advertising courses is that all imaginable
existing goods and services are classified and
categorized under separate classes.
 These classes or categories of products and services
(all that currently exist in life) are limited in number
and each one of such products or services will fall
under one of these defined categories or classes.
There are no more nor less than these classes!
 For instance, if it is ‘fruit yoghurt’ that you are selling,
it will necessarily be within one of these classes.
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 Goods and services are classified according to
The Nice Classification (NCL)

 There are a total of 45 classes:

 34 classes of goods

 11 classes of services

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Classes of Goods and Services
Goods and
services are
classified
according to
The Nice
Classification
(NCL)

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http://www.wipo.int/classifications/nice/en
Classes of Goods and Services
There are a total of 45
classes:

There are 34 classes of

goods

There are 11 classes of

services

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 There are many subdivisions below each class
and the Nice Classification as shown on WIPO
is more detailed and comprehensive but the
list on Wikipedia is simpler and gives a broad,
general idea without getting lost in detail, as
may be seen on the next slide

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https://en.wikipedia.org/wiki/International_(Nice)_Classification_of_Goods_and_Services
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 When making a trade mark application, the applicant
must indicate the goods and/or services for which the
trade mark is to be registered by specifying the class or
classes that correspond to the goods/services on or for
which the trade mark will be used.
 When and if you are granted a trade mark for a particular
sign, this does not necessarily entitle you to prevent
others from using that trade mark or a similar mark on
other goods and services
 You should therefore consider carefully when making an
application for other/related goods/services where you
may wish to use in the future that trade mark and apply
to register the trade mark for those classes as well.
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 Example: If a company is producing knives
and forks, then the trademark application
should be made for the corresponding goods
in class 8.

 If, however, the company wishes to market

other kitchen utensils (such as containers,
pans or pots) using the same trademark the
company will also have to register the mark
for the corresponding goods in class 21.
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 Example 2: The round Tetley tea bag which in
respect of which a patent has been issued,
also enjoys trademark protection for the
word mark, ‘Drawstring’. This is listed under
class 30 where coffee, tea, cocoa, etc are
mentioned.

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 The Turkish Industrial Property Code (Sinai
Mulkiyet Kanunu) refers to the Nice
Classification as follows at Article 11(3):

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 The relevant page on the website of
TurkPatent is as follows (2018 version is
missing):

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 The 2017 version on TurkPatent’s website:

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 ‘nusr-et’ trade mark is classified under class 43

 The above is from the 2010 version as revealed

by the date on the certificate

 The 2017
version includes
additional services
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 Trade marks, like other intellectual property, are
protected within the borders of a nation in
which they are registered.
 Therefore, the trade mark shall be
protected only within Turkey and not in another
country unless an application is made by the
owner to register it in other countries.
 This means that someone else in another
country can use the same trademark without the
permission of the trademark owner.
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 The National Route: By applying to the authorised
body in each country in which protection is being
sought.
 As in the case of nusr-et and the trademark
registration certificate, it can be seen that the trade
mark is registered with a national authority i.e. the
Turkish Patent and Trademark Office in Turkey
(TurkPatent)
 TurkPatent is the national authority i.e. the official
body of the government/state which is empowered to
grant trade marks.
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 The Regional Route: By applying for
protection in countries which are members of
a regional trademark system.

 For instance, in the European Union this

regional authority is the European Union
Intellectual Property Office (EUIPO).

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 The International Route: If a country is a
member of the Madrid system the
trademark has been registered or applied for
in or with effect in that country, the Madrid
system may be used (administered by WIPO)
to register the trademark in over 100
countries that are currently party to the
system.

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 The Madrid system makes it possible to
protect a trade mark in a large number of
countries by obtaining an international
registration which has effect in each of the
Contracting Parties that has been designated
(i.e. designated/chosen/selected by the
applicant).

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 International registration has several
advantages for the owner of the mark.
 After registering the mark, or filing (basvurmak)
an application for registration, with the Office of
origin (i.e. the home country or National
Authority such as TurkPatent), the applicant has
only to file one application, in one language, and
pay one fee instead of filing separately in the
trademark Offices of the various Contracting
Parties in different languages and paying a
separate fee in each Office.
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 However, protection can be obtained only in
those countries which are party (i.e. member)
to the Madrid system.

 The Madrid system cannot be used to

protect a mark outside the Madrid Union, in
which case, the applicant must necessarily
file a national (or regional) application.

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 Important warning!:

 A mark may be the subject of an international

application only if it has already been
registered, or if registration has already
been applied for, in the Office of origin (i.e
the National authority such as for ‘nusr-et’ at
TurkPatent.

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 It is therefore important to bear in mind that
a mark can never be protected for the first
time at the international level, through the
Madrid system.

 It is first of all required (i.e. it is a

prerequisite) that the mark be protected at
the national (or regional) level, with the
Office of origin of the applicant.
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 Let’s see how ‘nusr-et’ has made use of its
trade mark, bearing in mind its business
strategy and the markets in which it intends
to operate

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 The certificate above issued by the Turkish
national authority is evidence of the trade
mark having been registered in Turkey

 Therefore, the ‘nusr-et’ cannot be used

without the owner’s permission in that class
(i.e. 43) by competitors.

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 Is the trade mark ‘nusr-et’ protected on a
regional basis e.g. in the European Union
where it may have or wish to open up
branches in the future?

 Let’s conduct a trade mark search under

“eSearch plus: The (European Union
Intellectual Property Office) EUIPO’s
database access” at
https://euipo.europa.eu/eSearch/#basic
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No result yielded by typing
in the coined word!

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Let’s give it another try by typing in the word “nusret” instead of the coined word “nusr-et”

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 1 trade mark
 It’s registered as a ‘figurative trade mark’
(see the reference in this handout for what
that means)
 Trade mark owner’s name is shown as: “D ET
VE ET ÜRÜNLERI GIDA PAZARLAMA
TICARET ANONIM SIRKETI”
 But it is indicated above that there are 2
owners!
 Nice Classification are for classes: 29 and 43
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 Is the trade mark ‘nusr-et’ protected at the
international level e.g. in countries that are
members of the Madrid System, where it may
have or wish to open up branches in the
future?

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http://www.wipo.int/madrid/en/search/ 55
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http://www.wipo.int/branddb/en/

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 The ‘nusr-et’ trade mark has been registered
and is protected through the Madrid system
in several countries in the world.

 The trade mark has been registered for

classes 29 (certain goods) and 43 (certain
services).

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 In Turkey
and France
5 years!

http://www.wipo.int/sme/en/faq/tm_faqs_q5.html 59
 What are then some of the options available in such a situation?
 Buy the trade mark from the current owner (unlikely that he would
sell; see comments above)
 Obtain a license to use the trade mark; he is not using it so he may
allow you or not; probably not if he is thinking of resuming the
restaurant business since his concept might be different. Besides he
might charge you too much for use of the trade mark; you would not
wish to invest in the business since one day (depending on the length
of the licence agreement) he might decide to no longer allow to use it.
 Change the name from ‘simple’ to something else; but if you are going
to opt for this you must do it quickly before you are identified with this
name by customers and in the trade (there might be still some
expense involved over removing and adopting new official stationery,
receipts etc. which bear the name ‘simple’

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 Confusing … you bet it is!!!!!

 But
 One has a trade mark and the other i.e. the
university does not.
 One has a logo the other does not.
 One has a website:http://bogazicicazkorosu.com/;
the other does not

 Let’s conduct a trade mark search

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 Could the University have opposed when an
application was made to register the trade
mark?

 They could have but no one has absolute

claim on the word ‘Bogazici’ so Bogazici Jazz
Choir is quite acceptable though possibility of
confusion could have been raised – as was
indeed the problem faced and aired by the
student
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Required reading that accompanies
this lecture handout

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 Koalect: trade mark conflicts and the
importance of prior searches, European IPR
Helpdesk, April 2017; Link:
https://iprhelpdesk.eu/sites/default/files/news
documents/Case-Study-Koalect.pdf

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Koalect: Trade mark conflicts and the importance of prior searches
Finding the right name for your company and the products you sell is not an
easy task. Not only do you need to be creative but also you must avoid
infringing your competitors' rights over their trade marks. Avoiding infringement
is even more important when you are at an early stage in the development of
your new business. Time and economic resources are usually scarce when a
company is being launched and you will want to invest them in something other
than litigation. This is why performing a prior trade mark search before starting
to operate a business under a certain name or brand is an essential task we
must not overlook.
To illustrate the issues that can arise in this situation, Koalect, a successful
Belgian start-up, tells us their story in this new case study.

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