A seminar organized by the Office for Harmonization in the Internal Market (OHIM) & the Turkish Patent Institute was held in Ankara on June 11, 2002, to create public awareness on the Community Trademark (CTM) among professionals and businessmen.
Mats Uden (Legal Assistant/Appeal Dept.) pointed out that 33,000 CTM applications were filed in Turkey, which indicates the closeness of the Turkish system to the European market, and, interestingly, that both Trademark laws apply similar procedures with the exception of further flexibility in Community registration.
The scope of presentation was on how to file a CTM and the formalities as well as classification in this regard.
While the filing of a CTM may be carried out directly, by fax, mail or courier, in any of the 11 languages, with no original documents, the Turkish Patent Institute requires original documents and proof of the commercial existence of the legal entity and the validity of the Power of Attorney.
In addition to the application form, the common requirements for filing a CTM are a representation of the mark, list of goods or services, and the payment of basic E975 within one month from the filing date, the latter being a facility not offered locally.
In filing a CTM, the valid classification is in accordance with the Nice Agreement system. More than 3 classes are subject to a payment of E200 per additional class; amendments of lists of goods or services are allowed but cannot extend the original list. The indication "all goods & services" as such is not accepted; specification to class heading in the list is required.
The formal examination is performed in connection with the classification as well as the particulars of the application, languages, signature and entitlement to file.
The Office (OHIM) is very liberal in accepting trademarks; it rarely rejects an application. Most common rejections are of marks devoid of a distinctive character.
Generally, the registration of a graphical mark stands for the typical approach among trademark registrations while a ‘smell mark’ is very hard to put graphically, being rather a cultural perception, which is a difficult case to deal with.
Opposition Procedures
An opposition period shall be allowed upon publication for 2 months from the Notification date. A third party may file an opposition in only one of the 5 languages. There is a two – month period of negotiations prior to adversarial proceedings. The losing party bears the cost of E250.
An opposition can be based on one of the following:
- Earlier TM registration in EU.
- Earlier registered TM with reputation.
- Earlier national well known work.
- Earlier unregistered national TM.
- Sign used in the course of trade.
The Grounds of Opposition are:
- Identity (absolute protection).
- Likelihood of confusion.
- Reputation.
- Earlier non-registered sign.
- TM filed by a representation (bad faith / cancellation proceedings).
There is 1520 appeal at the OHIM (assigned to the board). Some interesting cases of accepted/rejected CTM were stated in the seminar as follows:
CTM Spanish Opponent
Mark: Fifties Miss Fifties
Goods: Denim clothing clothing-footwear
Ground: Article 8(1)(b) CTRM: conceptual similarity (image of the fifties fashion).
Rejected
Mark: Shield GoldShield
Goods: Class 3 Class 3
Ground: Earlier rights/seniority & use of 6 years.
Rejected
Mark: PoloClub colored, Chantly PoloClub,Beverly Hills
Goods: Classes 14 & 25 Classes 14 & 25
Accepted
Mark: PICARO PICASSO
Goods: Class 12 Classes 12
Ground: Conceptual meaning of Picasso as an Artist.
Accepted
Mark: Private Pleasures Secret Pleasures
Goods: Class 3 Class 3
Ground: Conceptually both are very similar. Opposition was accepted although phonetically not similar.
Rejected
Another interesting example was that of "BABY-DRY" for Proctor & Gamble Company in which the CTM was rejected in the first instance due to lack of distinctiveness; yet, the Court eventually accepted the mark on the basis that the descriptive form should be "Keep baby Dry" while the mark was being invented. Examples of the rejected marks by the Office are: "True value," "FLEXIPENSION," "MIXEDNIGHT EVERY TIME," "National Car Rental," "Stream serve" (Dictionary definitions: internet examples).
Discussion in the seminar clarified the registration system of the CTM as well as the differences between the OHIM laws and the Turkish Patent Institute applications.