Existing legislation
The absolute grounds and relative grounds for refusal provisions under Decree-Law 556 on the Protection of Trademarks were an approximation of the EU First Trademarks Directive (89/104/EEC) and the laws of EU member states relating to trademarks.
The draft IP law proposes new grounds for absolute refusal regarding registered geographical indications and to enable the Patent Institute to refuse ex officio all indications that are composed of or containing a registered geographical indication.
Bad faith would also become a clear ground for relative refusal in opposition proceedings. The absolute grounds of refusal of a trademark application based on an unregistered well-known mark has been transformed to a relative grounds of refusal, in accordance with Article 6bis of the Paris Convention for the Protection of Industrial Property.
The introduction of registered geographical indication as an absolute grounds for refusal is welcomed, as it reinforces geographical indication protection and serves to prevent the legal uncertainty regarding the relationship between these two types of protection.
Categorising the bad faith claim as an independent ground of refusal reflects the established case law in several court decisions recognising a bad faith claim as a ground for refusal.
The obligation to refuse ex officio an "unregistered well-known mark" was an undue burden for the Patent Institute in accordance with international trends.
For further information on this topic please contact Kerim Yardimci at Deris Attorneys At Law Partnership by telephone (+90 212 252 6122), fax (+90 212 293 7676) or email ([email protected]). The Deris website can be accessed at www.deris.com.tr.
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