First of all, it should be specified that, a trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. Registering a trademark will give notice to the public of registrant’s ownership of the mark and gives the registrant the exclusive right to use the mark in connection with its covered goods and services within the jurisdiction in which it is registered.
In principle, a trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder, for example, in case of litigation.
For example, in Turkey at the national level, trademark protection can be obtained through registration, by filing an application for registration with the Turkish Patent and Trademark Office (“TPTO“) and paying the required fees. Beside this, at the international level, there are two options: First one is filing a trademark application with the trademark office of each country in which protection desired, the other option is WIPO’s Madrid System.
Although international registration is not a requirement, it may become necessity in the nature of business. For instance, if a company sells online or has branches/ franchises in different countries of the world, as the trademarked products or services are available -at least viewable- internationally, international registration will become mandatory.
An application for international registration must be presented to the International Bureau through the Office of origin. Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the WIPO Gazette of International Marks.
For example, the registration form for the UK for applying for the TPTO is straightforward. Applicants based in the UK must use a trade mark attorney authorized to act before the TPTO. Alternatively, as Turkey is a member of the Madrid Protocol, you can file an international application from the UK and designate Turkey using this method.
In summary, the main advantages for trademark owners consist of the simplicity of the international registration system and the financial savings made when obtaining and maintaining the protection of their marks abroad. In this context, a trademark may be registered in Turkey and other demanded countries and / or regions internationally. Due to Turkey is a country party to the Madrid Protocol, it is possible making an application through TPTO for international trademark registration before WIPO.
Gülenay Çapkınoğlu is an Associate at Kılınç Law & Consulting, a full service commercial law firm based in Istanbul, Turkey.