The document, which has been used by many countries in the international arena for many years and can also be referred to as a coexistence agreement, was finally entered into force with the Turkish Industrial Property Code as of January 1, 2017 in Turkey as well.
How and in which areas can letter of consent be used?
Before the acceptance of the Code, a prior same/similar trademark application could cause the unconditional rejection of the new application if it had same/similar goods and services to the new application. However, after the acceptance of the Code, even if your trademark application was rejected due to prior same/similar trademark, there is now a way out. If the trademark owner, who encounters such a situation, submits a notarized and legalized (only notarized document is sufficient if the owner is Turkish) letter of consent (LoC) to TurkPatent stating that the owner of the previous trademark consents to the registration of the trademark application that is the same/similar to his/her application, the reason for ex-officio rejection for the new trademark application becomes invalid.
What kind of difficulties may be encountered during the process of obtaining consent?
With the enabling of the LoC, an easier and shorter path has emerged for new brand owners who do not want to lose time and money by filing a cancellation action before the court against businesses that have registered in many classes but do not use their trademarks for most of their registered goods and services. Although it is sometimes seen that former brand owners demand a fee for providing LoC when requested, well-established and experienced brand owners mostly respond positively to this call for support.
In addition, although the prior trademark’s owner gives a LoC, his/her right to oppose the publication of this new trademark remains valid. If you are worried about such a situation, it is possible to prevent the other party from objecting to your brand at the stage of opposition to publication by making a legally valid coexistence agreement with the prior trademark’s owner at the stage of obtaining consent.
When should the LoC be filed?
If you have determined the existence of the prior same/similar trademark or trademarks before applying for your own trademark, and know that LoC can be obtained from the prior trademark’s owner, the notarized/legalized consent can be filed with the application form.
In this case, if the LoC does not contain the required elements, a two-month-period is given to the applicant to remedy the deficiencies. If the necessary corrections are not made within this period, the request will be deemed invalid.
As a second option, the LoC can be submitted after you object to the refusal decision due to the existence of prior same/similar trademark until the decision regarding your objection to the said decision is finalized. If you do not submit the notarized/legalized LoC despite your request, the request will be deemed not made.
In what format should the LoC be?
– It must be in the format published by TurkPatent’s website, and must be notarized and legalized depending on the nationality of the consenter.
– If there are exclusive license holders recorded in the registry, their written permissions must also be presented.
– LoC must be unconditional. After it is submitted to the Institute, it cannot be withdrawn.
– A separate LoC must be submitted for each prior trademark application.