Our Services

Strategic Services

• Intellectual Property Strategy
• Portfolio Management for Intellectual Property Rights
• Intellectual Property due Diligence

Intellectual Property Strategy

Intellectual property rights allow a firm to maintain a strategic advantage and exclusivity in a particular market as well as protect against the attacks of competitors. However, businesses can only take advantage of these protections if their intelectual property strategy is well-planned and skillfully executed. An effective intellectual property strategy is an indispensable component of any competitive business, without which it may lose its competitive edge to less visionary companies.

Gün+Partners Patent – Trademark provides consultancy services to businesses which seek to develop an intellectual property strategy. Our firm works alongside our clients’ R&D departments, marketing departments and in-house creative teams to develop a comprehensive blueprint for day-to-day actions.

Our intellectual property strategy consultancy’s services include both the design of the initial strategy and support of our clients’ subsequent efforts to improve and enrich that strategy throughout the implementation phase. Our services are designed especially for firms eager to cement their market share, and which seek to protect their products against lesser imitations.

We specialize in fostering an awareness of intellectual property rights; assessing existing intellectual property stock; analysing opportunities for increasing and improving protection; conducting availability searches and rendering opinions on registerability; advising clients regarding conflicts among different types of intellectual property rights; and providing detailed analyses of any possible threats or opportunities, strengths and weaknesses, associated with acquiring and maintaining those rights.

Portfolio Management for Intellectual Property Rights

Our portfolio management services are based on registering trademarks, patents, utility models, industrial designs, domain names and copyrights in Turkey and abroad. We are adept at balancing the interests of the relevant authorities, maintaining and updating these registrations, as well as prosecuting and general management of these procedures.

We routinely monitor the public intelectual property publications and notices; and when a third party files an application that could infringe on our clients’ rights we file defense petitions with the relevant authority. Our intellectual property rights portfolio management services can be tailored to the needs of any kind of business. We work with both small- and medium-sized businesses lacking a separate intellectual property division, as well as with larger businesses that prefer to outsource portfolio management.

While in some cases we manage our clients entire intellectual property portfolios, we also support internal portfolio managers by taking responsibility for some portion of a portfolio, making preparations on behalf of the portfolio manager, outlining options for responding to evolving market developments as well as providing suggestions and taking initiative on behalf of the client when necessary.

Intellectual Property due Diligence

Our intellectual property due diligence services analyse companies’ intellectual property rights in terms of quality, scope, registration, use and protection status, strengths, weaknesses, potential risks, and potential opportunities.

We provide this service to those businesses interested in reviewing or changing their existing intellectual property strategy, companies which are creating their first comprehensive strategy, and those engaged in a merger or acquisition.

Search Services

In principle, intellectual property rights are protected by law even if those rights have not been registered. However, registered rights are entitled to stronger protection. Thus, as in most jurisdictions, Turkey prefers that the intellectual property registration system be used. Without registration it may be difficult to protect against infringement; and in some cases without registration certain rights may not be recognized at all. In general, registration facilitates the development and promulgation of new ideas and inventions. Intellectual property right registrations usually reflect genuine right ownership, and it is rare for a right ownership to be genuine when it has not been duly registered.

It is of vital importance to investigate existing registrations before attempting to register an intellectual property right. Developing a distinctive trademark and establishing a market presence requires significant investment in advertising and promotion. The trademark registration process contains some safeguards to ensure that similar trademarks are not registered; however, the process takes time. Companies often begin to use and promote their trademarks before the registration process has been completed. There is a risk that not only will the investment in the trademark go to waste but that the company will be in the unfortunate position of having infringed upon a third party’s previously registered trademark and thus be sued for damages. Even if a trademark is successfully registered, it can be cancelled if later found to be the same or similar to a senior trademark or sign, or if it infringes on a work under copyright protection. Our due diligence process is designed to avoid this kind of loss and, above all, prevent the harm that would be done to any market share gained during these efforts.

The search services that our firm provides ensure that any attempts to register intellectual property rights will not infringe on the rights and registrations of others, while continuing to focus on protecting the rights of our clients.

Our search services include analysis of registrations and applications in the public record that carry strategic importance, investigating any possibly unregistered intellectual property rights, as well as consultation regarding the registrability of the intellectual property. We provide these service ourselves in Turkey and via research institutions and specialist attorneys abroad.

• Application and Registration Search
• Name / Title Based Searches
• Similarity Search
• Search on the Basis of Prior Rights
• Market Monitoring and Investigation
• Patent Application and Registration Searches
• YInternational Searches

Application and Registration Search

Intellectual property rights become public once they have been duly published in accordance with application and registration procedures. Our search service monitors these public registries and investigates possible claims. The breadth of our searches may include national or international classifications, identity or similarity, as well as other criteria, depending on the choice of the client and on the quality of the intellectual property right.

We search for identical or similar versions of the patents, trademarks, designs or geographical signs, and identify whether they are registered under the names or trade names of our clients’ competitors.

This service may be provided for the Turkish market, for specific foreign markets or both.
During the search process, our firm examines the criteria and compiles a list of registered rights, as well as those still in the application phase. Upon request, we provide an opinion regarding the registrebility of the trademark in question.

Name / Title Based Searches

Our firm searches all the applications and registrations made for particular trade names in all national and international registration catalogs, in particular the Turkish Patent Institute (TPI), World Intellectual Property Organization (WIPO), and European Patent Office (EPO). We then compile a list of the results and the supporting documentation.

We request that our clients limit the name- and title-based searches to a specific type of intelectual property right, such as trademark, industrial design, patent, utility model, domain name, etc.

Similarity Search

Similarity searches are used only when attempting to register trademarks and industrial designs.

This research determines whether there have been prior applications or registrations identical or similar to the trademark or design application which we have been commissioned to search. Identical or similar applications and registrations detected as a result of the research are compiled and submitted with the supporting documentation.

Search on the Basis of Prior Rights

An particular intellectual property right may well be subject to a competing or prior registration.

This situation often occurs in the case of trademark registration. The trademarked original design may actually be subject to a prior copyright, and permission of that author would be necessary to register the trademark. Thus, a trademark registration may be cancelled solely on copyright grounds if the registered mark is subject to another’s copyright. Furthermore, a trademark may be a person’s name, which is also protected as a personality right. Whichever right was registered first is the one which is protected. Applications that are in breach of a copyright or personality right may be rejected if an opposition is filed. If a registration already were completed it would still be vulnerable to future cancellation.

In order to avoid these risks, if the trademark application will be made for a figurative element or for an original sign, it is essential to ascertain whether an earlier design application has been submitted for this same sign.

When we search on the basis of prior rights we conduct a comprehensive investigation intended to ascertain any possible circumstances that may hinder a registration or lead to cancelation. This approach minimizes risks and allows our clients to move forward with confidence. Our firm researches potential obstacles that may crop up during the application and registration stages, as well as those which could occure once the trademark has been approved and is in use.

Market Monitoring and Investigation

Our market monitoring and research service focuses primarily on assessing whether a particular trademark or similar mark is being used currently in the marketplace.

There are numerous reasons for conducting such an inquiry. While our market research is intended primarily to ascertain whether a trademark is currently in use or the degree to which its character is distinctive, the research is also an essential component of trademark registration cancellation actions based on non-use, as well as a valuable tool in foreseeing any possible claims of prior right ownership acquired through unregistered use.
Our firm conducts extensive investigations and, with the help of experienced investigators, reports on whether the trademark is in fact “in use.”

Our services include investigation into the origin and the distribution channels of counterfeit products, as well as the methods of infringement.

Patent Application and Registration Searches

When conducting search services, our firm looks for patents and patent applications in both national and international databases using multiple search criteria, including title of application, international classes of inventions and key terms. Our goal is to identify any information and documentation that will enable us to determine the state of the art and ensure that our clients are not putting their investments at risk by infringing on existing patent rights.

International Searches

The registrations for intellectual property rights are territorial. In other words, the intellectual property rights are protected in a particular country only if they are registered in that jurisdiction.

We advise firms doing business abroad to be cautious and register their intellectual property in any country in which they plan to do business. It is essential to conduct a preliminary search before the registration in order to effectively protect intellectual property rights. A thorough preliminary investigation helps firms doing business abroad maintain their competitiveness and secure their investments.

Our firm conducts searches directly through the World Intellectual Property Organization (WIPO), the Office of Harmonization for the Internal Market of the European Union (OHIM), and the United States Patent and Trademark Office (USPTO) and conducts searches on the databases of other countries through our longstanding contacts with international firms and attorneys.

Well-Known Trademarks

Turkish Law grants a wider scope of protection to well-known trademarks than to those which are less popular. Generally, trademark protection only precludes companies from using the same or similar trademark for similar types of goods. A well-known trademark, however, cannot be registered by any entity other than the original owner of the trademark, even if the goods and services are completely different from the well-known company’s.

The authority to determine whether a trademark qualifies as well-known has been granted to the Turkish Patent Institute (TPI). The TPI prepared and published a guide, entitled “Principles and Implementation Criteria for Determining Well-Known Trademarks.” The guide takes into account the Joint Recommendation Concerning Provisions for the Protection of Well-Known Trademarks written by the WIPO Committee of Experts. However, when determining whether a trademark qualifies as well-known the TPI may take into consideration other criteria as well.

Our firm provides consultancy services on the applications to the TPI for registering a trademark as well-known.

Registraiton Services

• Registration of Trademarks
• Patent Registration
• Utility Model Registration
• Industrial Design Registrations
• Domain Name Registration
• Renewals And Extensions
• Recording Changes
• Other Registration Services

Registration of Trademarks

According to the definition in Decree Law No. 556, a trademark may consist of words, figures, letters, numerals, 3D shapes, names and surnames, slogans, sounds, colour compositions and any other graphic representations or reproductions, provided that the sign is capable of distinguishing the goods and services of one undertaking from the goods and services of others. A trademark must differentiate the goods and services that it is intended to represent from those of its competitors, as well as indicate the origin of those goods.

The registration procedure for trademarks includes measures intended to prevent the registration of similar or identical signs.

Unfortunately, this also causes the application process to be quite lengthy. The Turkish Patent Institute’s (TPI) examination process takes four to eight months, depending on the workload of the Institute. If no obstacle is presented, the application is announced to the public through publication in the Official Trademarks Bulletin. Third parties are entitled to file oppositions to the trademark application within three months of the date of publication. If no opposition is filed within the three month period, or if the oppositions filed are rejected by the TPI, the trademark proceeds to registration. A certificate is then issued by the TPI following the payment of a registration fee.

If no opposition is filed, it is possible for a trademark registration to be completed within ten to twelve months from the date of application. Within six months of the application date, a trademark application filed in Turkey can be used as the basis for a priority claim against a subsequent trademark application filed in any country which is a party to the Paris Convention.

Trademarks registered with the Turkish Patent Institute are protected only within Turkey. Trademark owners should file separate trademark applications for other countries in which they conduct commercial, production or export activities or those countries in which they may potentially do business in the future.

For trademark applications filed abroad, there are a variety of different methods which can be used depending on the needs and preferences of the applicant. Trademark applications may be filed in different jurisdictions using the Madrid protocol system, community trademark application system, national application system, or any combination thereof. We provide our clients with recommendations concerning national and international trademark applications, tailored to fit their particular intellectual property strategies, and we also carry out trademark registrations on their behalf.

Patent Registration

A patent is a protective document entitling the owner of an invention—which is novel, involves an inventive step and is capable of industrial application—the right of exclusive use for a specific period of time, in exchange for disclosure of the invention to the public. The owner of the patent right is entitled to prevent others from using the invention for a set period of time.

Patents are protected under the territoriality principle, which means that a patent is protected only within the country where it is granted. Although unfair competition suits and similar exceptional cases may be pursued, a patent which is granted in another country does not receive full protection in Turkey. To enjoy protection, a patent must be validly registered in the country in which protection is sought. A series of international agreements have been signed to facilitate the “state of the art” and “novelty” examinations and lower the costs. One of these agreements to which Turkey is a party is the Patent Cooperation Treaty (PCT), affording the benefits of a single patent application form and a centralised filing and examination system. Turkey is also party to the European Patent Convention (EPC) which also provides for a centralised filing, examining, and patent-granting procedure. Under these protocols, applicants must specifically designate each country to which they would like their application submitted.

Applications to register a patent in Turkey may be directly filed with Turkey’s national patent office (TPI), with the WIPO in Geneva through designating Turkey, or the with the European Patent Office (EPO) in Munich through filing a European patent and validly designating Turkey. In order for a patent application to be valid in Turkey, it may be filed either directly with the Turkish Patent Institute, or through designating Turkey in a WIPO or EPO application, as provided for under the PCT and EPC, respectively. The TPI will decide whether to grant patents to TPI and WIPO applications, while the EPO determines whether to grant a European patent. Upon publication of the EPO’s decision to grant a European patent, it will then be validated in Turkey by the TPI.

When a company requires patent protection both in Turkey and abroad it may choose among various registration paths according to the businesses individual capabilities and needs. Therefore, the methods described above may be used in combination: e.g., an application may be filed with PCT and then registered in contracting states under the EPC or national application system. Whichever application method is selected, it is essential that the applicant choose wisely in which countries the patent is to be registered.

Where an applicant considers that it is appropriate he may switch from a patent application to a utility model application (see below). For patent applications with examination this switch may be made during the opposition period against the examination report; and for patent applications without examination it may be effected within six months of the publication of the research report. The TPI may issue recommendations to this effect, as well.

Turkish patent law does not allow for a supplementary protection certificate to be issued for pharmaceutical patents.

Our office has extensive experience with the patent application process. We prepare the applications and perform all the necessary follow-up for patents registered with the TPI, WIPO and EPO. We facilitate the validation of PCT and EPO applications in Turkey directly, through authorized patent attorneys, and we make use of our wide network of corresponding patent attorneys for applications filed in other countries.

Utility Model Registration

The utility model registration is a patent-like protection that entitles the certificate holder the exclusive right of use to a novel invention for a certain period of time, in exchange for disclosure of the invention to the public. Once again, the utility model protection is territorial: a utility model is protected only in the country that granted the utility model certificate.

Turkish patent law grants the same protection to both patent and utility model certificate holders. However, the term of protection for the utility model certificate is ten years from the date of application and cannot be extended.

Utility model applications are filed with the TPI and examined for compliance with formal requirements. If a deficiency is found or if a utility model certificate cannot be granted for any other reason, the applicant is permitted to amend the claim or submit an opposition within three months of notification.

After examining the response of the applicant and any amendments to the application, the TPI decides whether or not to grant a utility model certificate for all or part of the claims. The application is then published in the official bulletin.

Within three months of the publication of the application, each person or organization with a legal interest in the case may file an opposition and the applicant is notified of the oppositions. Within three months of the date on which an opposition is served, the applicant may submit a reasoned opinion against the opposition. The applicant may also amend the claim, or request a certificate without considering the oppositions.

The courts are authorized to resolve any disputes arising from the question of whether the applicant is entitled to request a utility model certificate. Though the claims are filed with the TPI, the Institute is not authorized to resolve these disputes.

After the applicant’s response period expires, the TPI decides whether to grant the utility model certificate. Once the allotted period for filing an opposition is over, the TPI will not consider any subsequent oppositions filed by third parties. Following payment of the requisite fees, the utility model certificate may be delivered to the applicant.

After a certificate has been issued, third parties may file an opposition only on the grounds of perceived procedural deficiencies. It is not necessary to have filed a prior opposition in order to oppose the certificate once it has been approved. If the grounds for opposition are found to be justified, the TPI returns the application to the stage in which the deficiency was found and restarts the procedure from that point.

Industrial Design Registrations

Design and development of new products have become strategic factors in competition, and the aesthetic appearance of a product influences consumer preferences. Registration certificates entitle industrial design owners to the exclusive right to use their designs for a specified period of time. In return, the owner of the design agrees to make it public by filing the application.

Industrial design registrations provide protection only for the country in which the registration is made. With the exception of unfair competition and similar cases, registration certificates obtained in other jurisdictions do not grant protection in Turkey. Separate applications should be filed in each country in which protection is sought.

Industrial design applications are filed with the Turkish Patent Institute (TPI). The applicant may either directly apply to the TPI or may apply to the WIPO in Geneva under The Hague Convention system and designate Turkey. There are several methods by which design applications may be filed abroad, depending on the requirements of the applicant. For European Union industrial design registrations, a “community design” application can be filed, or separate national applications can be filed with every country in which protection is required. Our firm conducts industrial design filings and prosecutions before the TPI, WIPO and OHIM. We also coordinate community design applications filed with the OHIM and design applications in other countries via our local associates.

Domain Name Registration

As e-commerce becomes progressively important, infringement of domain names registered by third parties crops up with increasing frequency. Companies need to protect their domain names the same way they protect their trademarks.

The domain name authority for the “.tr” extension in Turkey currently resides with Middle East Technical University (METU). According to the new regulations for domain names published in the November 07, 2010 issue of the official gazette, within two years Turkey will begin using a new domain name registration system called “TRABİS” . Until this date, the current registration process will continue. Once TRABİS comes into effect, authority over domain name registration will reside with registrars authorised by the Information Technologies Agency. We can supply our clients with consultancy and agency services in the field of domain name applications and registrations.

Renewals And Extensions

Recording Changes

Actions such as assignment of rights, mergers and licences should be recorded with the TPI and applicable organizations and kept updated as protection from the claims of third parties. It is important for the records to reflect changes in the name, title and company type of the right owner in order to prevent any problem that might occur should the records not be properly maintained.
Our firm updates records for our clients by keeping track of the registration of assignments, mergers, licences, liens and company types, as well as name and address changes, in connection with the registered rights of our clients.

Other Registration Services

Geographical Signs

Geographical signs are those signs displaying the origin of a product. They correspond to the products produced in a specific place and which are directly attributable to that place, area, region or country of origin. Geographical signs are classified into two groups: “designation of origin” and “geographic indication.”

Unlike other intellectual property rights, the registration of a geographic sign does not provide its owner with a monopoly on usage. A designation of origin may be used by other manufacturers operating within the location indicated in the registry, for the products mentioned in the registry, provided that those products share the quality, reputation and other characteristics enumerated in the registry. As for the use of the “geographical indications” it is required that at least one of the operations (such as manufacturing or processing the product) be carried out within the territory, area or geographic region designated in the registry, and that the product have the quality, reputation and other characteristics described in the registry.

Any entity related to the item and the geographic territory may apply to the Turkish Patent Institute for the registration of a geographic sign; this may include natural or legal entities manufacturing the product, consumer associations, and public institutions. The application should include the name of the product, description, technical information and documents explaining the physical, chemical, biological and similar characteristics of the product and its material; information explicitly describing and determining the geographical borders of the territory, area or region; information regarding particular production techniques or local conditions, if any; and information setting forth in detail a recommended auditing format for evaluating which goods may be marked with the “designation of origin” or the “geographical sign” for which registration is sought.

Applications are examined by the TPI, whereupon missing information, if any, is completed. If needed, representatives from public institutions or universities are appointed as experts in order to examine the technical claims. Applications that meet the legal requirements are published in the Official Gazette, two of the national newspapers with the largest circulation, and in a local newspaper. Geographical sign applications against which no objection has been filed within six months of the publication in the Official Gazette become final and are registered as of the publication date.

Our firm provides services for the preparation of applications for geographical signs, as well as the follow-up.

Integrated Circuits

An integrated circuit topography is a series of visual images that show the three-dimensional arrangement of the layers that constitute an integrated circuit. These are prepared for production purposes and may be fixed in any format. Each image displays a total or partial view of the circuit’s surface, and the topography can be taken at any phase of production.

Integrated circuit layouts which have original characteristics are protected once they have been granted a registration certificate. An integrated circuit layout is deemed original if it is the product of intellectual effort and if it was not previously known among integrated circuit producers or designers. The protection does not apply to the content contained within the integrated circuit, the process period, technical information or any information pertaining to the circuit apart from the integrated circuit layout itself. The protection is unrelated to the actual use of the particular topography in any product.

Persons residing and doing business in Turkey, as well as those natural and legal entities which are nationals of countries that have ratified international conventions or that accord de facto reciprocity to nationals of the Turkish Republic, shall enjoy these protections. An integrated circuit topography registration is valid for a period of ten years from the date of market launch or from the date of the application, whichever is earlier. If the product has not yet appeared on the market, the owner must apply for registration within two years of its market launch. The protection period expires at the end of the tenth calendar year.

Our firm has extensive experience with integrated circuit topography applications and their follow-up.

Plant Varieties

In Turkey, intelectual property rights related to new plant varieties are set forth in the Law on the Protection of Plant Breeders’ Rights. A plant variety is eligible for registration provided that it is new, different, uniform and stabilized. Registration gives the owner the right to manufacture, reproduce, sell, export or import the registered plant variety. The protection period lasts between twenty-five and thirty years, depending on the type of plant.

Since 2008, the registration of new plant varieties has been conducted by the General Directorate of Agricultural Production and Development, within the Ministry of Agriculture.

As a party to the International Union for the Protection of New Varieties of Plants (UPOV Convention), Turkey protects nationals of other member states as well as its own citizens and residents.

Applications for plant breeder’s rights are subject to both procedural checks and a substantive examination. Applications that fulfill the requisite conditions are entered in the registry and published in the industry bulletin. Certain persons may file an opposition to the application within three months of the bulletin’s publication date. The applicant may file a response to the opposition, or make changes to the application.

Parties to the UPOV Convention are notified of the application results, and authorized institutions may then present their opinions with regard to the designation.

Upon examination, if it is determined that a plant variety meets the necessary conditions, and the name given to the plant variety has been deemed suitable, the plant breeder’s right is registered, and a certificate is issued to the owner. The registration of a plant breeder’s right is published in the industry bulletin within thirty days. Any interested party may file an opposition to the registration within thirty days of the publication date, on the grounds that the legal criteria has not been sufficiently established. Should a gap in the information in fact be determined, then the registration will be nullified and the procedure will be begin from the stage at which the deficiency was identified.

In order to ensure that the plant breeder’s rights continue to be protected, an annual fee should be paid in January of every year. If this fee is not paid, the right will be deemed cancelled as of the payment deadline. If the payment cannot be made due to an act of god, force majeure, the right can be revived by publication and after taking third parties’ opinions, provided that an application to revive the right is filed within six months. During the period in which the right is in force, the owner of the right is liable for the continuance of the genetic structure of the protected variety and for storing a sample of the variety if requested. If the plant breeder fails to do so, his or her right may be cancelled.

Our firm is experienced in the preparation of plant breeders’ right applications and the necessary follow-up.

Watch Services

Intellectual property rights are also protected under general provisions of law, even if those rights are not specifically registered. However, as is the case in most jurisdictions worldwide, Turkey prefers the use of registration systems in order to protect intellectual property rights more effectively. Thus, registered rights are entitled to stronger protection. While in some cases, registration establishes intellectual property rights, in the majority of cases, registration facilitates the development and promulgation of intellectual property rights.

The national registration systems enable the right owners to be informed of any unfair or infringing applications, and allow owners to protect their rights by filing oppositions or similar actions. Intellectual property right registrations usually reflect genuine right ownership, and genuine right ownership not in conformity with registration rarely occurs.

Applications and registrations of third parties in Turkey and in other jurisdictions may affect rights which have not yet been applied for; if action is not taken in a timely manner unfair registrations can occur. Once a right has been registered, that right can be cancelled only with the consent of the right owner or by means of a court decision, the latter of which would necessitate a great deal of effort and expense. Given the importance of ensuring accurate trademark registrations, a worldwide watch services has been developed to flag any suspect intellectual property applications at the time of publication and during the application process. A watch service developed in Turkey after 1995, as trade and intellectual property rights became more and more globalized. This service is essential to protect an intellectual property rights portfolio from unfair and unauthorized trademark registrations.

The purpose of a watch service is to identify unfair and infringing applications. With the help of the watch service agent, the right holder evaluates those applications likely to infringe on his or her rights and takes the necessary legal action. Our watch service conducts valuable inquiries on behalf of our clients and provides suggestions on the necessary follow-up procedures.

We monitor trademark applications in Turkey directly, and the international and foreign applications via our colleagues at international watch agencies. As needed, we may work with foreign associates to evaluate potential infringement outside of Turkey. Our firm works in conjunction with Thomson CompuMark, the leading provider of international watch services.

Opposition / Appeal Services

Both published applications and decisions rendered by the TPI can be challenged by filing an opposition or appeal; furthermore, responses can be filed to oppositions or appeals filed by third parties. Countries with well-developed intellectual property registration systems provide the option of filing oppositions to applications while they are under consideration by registration authorities, as well as the possibility of appealing decisions regarding rights which have already been registered. The goal is to prevent unfair registrations and enable registration authorities to render accurate decisions.

Filing an opposition is the first step to counter an unfair application or inappropriate decision by a registration authority. A properly filed opposition can prevent a dispute from languishing in the courts and continuing for years. A correctly filed opposition is the first and most significant part of any dispute that may arise between the right owner, the applicant and the registration authority. However, it is important to note that since there are mechanisms intended to protect the content of the oppositions filed before the registration authority, an opposition procedure should be pursued according to a well-thought-out strategy. To protect against unfair registrations, it is crucial to determine exactly how an opposition should be filed.

It bears repeating that our firm acts with the awareness that an opposition is the first and most important phase of a dispute that can continue for years. We file comprehensive oppositions against the publication of trademarks, as well as against decisions of the TPI. Our trademark attorneys have extensive experience protecting intellectual property rights.

International Trademark Registration

• International Trademark Registration
• Internation Patent – Utility Model Registration
• International Industrial Design Registration
• International Renewal and Extensions
• International Recording Changes
• International Watch Services
• International Opposition/Appeal

International Trademark Registration

International Trademark Registration According to The Madrid Protocol

The Madrid Protocol system provides for the registration of a trademark in eighty-one member countries using a single application form in one language. These applications are filed with an international registry within the WIPO. Turkey has been the member of the Madrid Protocol since January 1, 1999.

Aside from making it more cost effective to register a trademark abroad, the Madrid Protocol system also eases the post-registration processes. Procedures such as renewal, name and address changes or assignment of rights which previously needed to be filed separately for each country can now be effected with a single application filed with the WIPO International Bureau.
Community Trademark Registration

The community trademark system provides trademark protection in all European Union countries via one single application filed with the Office for Harmonization in the Internal Market (OHIM).
Since Turkey is not yet a member of the European Union, community trademark applications can only be filed in Turkey under the auspices of the Madrid Protocol. In order to file a community trademark application directly from Turkey without using the Madrid system, a local agent must be appointed who resides in one of the European Union countries.

Gün + Partners Patent – Trademark can perform community trademark registration procedures on behalf of its clients, either via the Madrid Protocol or through its associates in the European Union.
Foreign Locaol Trademark Registrations

It is possible to file a trademark application with the trademark registration authority of a particular country via a local agent if the country for which the trademark protection is desired is not party to the Madrid Protocol or the European Union, or if filing the application via either of those two methods is not advantageous for some reason. The procedures and the costs will differ depending on the country concerned.

Gün+Partners performs local trademark registration procedures abroad via its experienced local associates.

Internation Patent – Utility Model Registration

Patent Cooperation Treaty Central Application System

The Patent Cooperation Treaty (PCT) provides for an international patent application system wherein one patent application is valid for all 142 signatory countries. The PCT system includes both international and national components. During the international phase, the patent application is filed in whichever countries the applicant has selected. As of January 1, 2004, all applications are by default submitted to all signatory countries. However, an applicant may, upon request, exclude particular countries from its application. The application is then passed on to the WIPO in Geneva, which prepares an international search report. At the request of the applicant, the WIPO can also prepare an international preliminary examination report. Then, during the national phase, this information is passed on to the signatory countries where agents or attorneys initiate application procedures appropriate to each particular country. From this point forward, the patent applications are considered following the same procedures as if they were national patent applications.

Our office handles PCT applications throughout both the international and national phases. For countries other than Turkey, once the applications have entered the national phase we coordinate the regional registry procedures with local patent attorneys and offices. For Turkish applications we complete all necessary procedures directly.
European Patent Convention Central Registry System

Unlike the PCT, the European Patent Convention (EPC) system provides for the examination and registration of patent applications via a central office, which has the authority to validate a patent in all thirty-eight member states using a single application form in one language. (Number of member states last updated on 4 October 2010.) The European patent-granting procedure is carried out and finalized by the EPO. Once again, the applicant must designate the countries in which patent protection is sought: registration of a patent with all member states is not required. As of April 1, 2009, all EPC member states are deemed designated unless the applicant explicitly states otherwise, and a flat fee is paid upon submission of the application. After an EPC patent is granted, relevant procedures must be completed at the national-level to make the EPC patent valid in Turkey and the other EPC member states. The EPC process is also divided into international and national phases. The international phase consists of filing the patent application, a formal examination, the issuance of a European Search Report, publication of the application and the issuance of an examination report.

If the examination division decides that a patent can be granted and the decision is published, the patent application enters the national phase. Each country has three months from the publication date to validate the patent. To complete the EPC process in Turkey, European patent documents must be translated into Turkish and filed with the TPI. Once the documents are submitted, the patent is published in the national patent registry. The patent application is then officially registered as a Turkish patent.

Our firm files EPC applications on behalf of our clients, prosecutes them and, once the applications have entered the national phase, we coordinate the regional registry procedures with local patent attorneys. We validate European patents for Turkey directly.
National Patent Registration Abroad

Gün+Partners’ Intellectual Property Office offers national patent registration services for most foreign countries through our extensive network of experienced international attorneys, with whom we have been cooperating for many years. We are happy to assist if for any reason an applicant prefers to file national patent applications rather than using one of the centralized patent application systems. Patentability criteria rarely vary from country to country; but the examination, costs and procedural requirements may differ.

International Industrial Design Registration

The Hague Convention System

The Hague Convention system regulates design registration in the thirty-four countries party to the Convention. The system uses a single application form prepared in a single language as specified in the Geneva text of the Lahey Convention, to which Turkey became a party on January 1, 2005.

The Hague Convention system eases post-registration procedures as well: registration renewals, address or trade name changes, or other procedures required by particular countries can be performed with a single application to the International Bureau.

Our firm provides international applications, registrations, amendments and updating services through the Hague Convention system.
Community Design

With a single application to the Office of Harmonization for the Internal Market (OHIM), the European Union’s community design system provides for design registration and protection valid in all European Union countries. Since Turkey has not yet become a member of the European Union, Turkish attorneys cannot file community design applications directly. In order to file a community design application from Turkey to the OHIM, an attorney residing in one of the members of the Community should be appointed. However, it is possible to circumvent this requirement by applying for a design registration using the Hague Convention system. Our firm directly coordinates community design registration proceedings for applications made under The Hague Convention system where OHIM has been designated. When a direct application to OHIM or any other foreign country is needed, we work with local associates residing in European Union member countries.
Foreign National Registrations

If The Hague Convention system or community design application systems are for any reason unsuitable, design rights may be registered directly in each country for which the protection is desired. Design registration laws, procedures and costs vary depending on the country. Our firm coordinates design registration services in all countries wherein design protection is available, through our local associates.

International Renewal and Extensions/h3>
Our firm monitors our clients’ trademark and industrial designs registration renewals in Turkey as well as in other countries and coordinates the annual payments required for patent and utility models. We manage the payment of necessary fees directly or through attorneys in direct cooperation with our firm.

International Recording Changes

Actions such as assignment of rights, mergers and licences should be recorded with the TPI and applicable organizations and kept updated as protection from the claims of third parties. It is important for the records to reflect changes in the name, title and company type of the right owner in order to prevent any problem that might occur should the records not be properly maintained.

Our firm updates records for our clients by keeping track of the registration of assignments, mergers, licences, liens and company types, as well as name and address changes, in connection with the registered rights of our clients.

International Watch Services

Intellectual property rights are also protected under general provisions of law, even if those rights are not specifically registered. However, as is the case in most jurisdictions worldwide, Turkey prefers the use of registration systems in order to protect intellectual property rights more effectively. Thus, registered rights are entitled to stronger protection. While in some cases, registration establishes intellectual property rights, in the majority of cases, registration facilitates the development and promulgation of intellectual property rights.

The national registration systems enable the right owners to be informed of any unfair or infringing applications, and allow owners to protect their rights by filing oppositions or similar actions. Intellectual property right registrations usually reflect genuine right ownership, and genuine right ownership not in conformity with registration rarely occurs.

Applications and registrations of third parties in Turkey and in other jurisdictions may affect rights which have not yet been applied for; if action is not taken in a timely manner unfair registrations can occur. Once a right has been registered, that right can be cancelled only with the consent of the right owner or by means of a court decision, the latter of which would necessitate a great deal of effort and expense. Given the importance of ensuring accurate trademark registrations, a worldwide watch services has been developed to flag any suspect intellectual property applications at the time of publication and during the application process. A watch service developed in Turkey after 1995, as trade and intellectual property rights became more and more globalized. This service is essential to protect an intellectual property rights portfolio from unfair and unauthorized trademark registrations.

The purpose of a watch service is to identify unfair and infringing applications. With the help of the watch service agent, the right holder evaluates those applications likely to infringe on his or her rights and takes the necessary legal action. Our watch service conducts valuable inquiries on behalf of our clients and provides suggestions on the necessary follow-up procedures.

We monitor trademark applications in Turkey directly, and the international and foreign applications via our colleagues at international watch agencies. As needed, we may work with foreign associates to evaluate potential infringement outside of Turkey. Our firm works in conjunction with Thomson CompuMark, the leading provider of international watch services.

International Opposition/Appeal

As is the case in many countries with a well-developed intellectual property registration system, Turkey allows for the possibility of filing oppositions to third party applications as well as to the decisions of the registration authorities. The system aims to prevent unfair registrations and to ensure the reliability of the registration process as a whole.

Filing an opposition is the initial step if an unfair application is filed, or when the registration authority has rendered an inappropriate decision. A properly filed opposition can prevent a dispute from languishing in the courts and continuing for years. A correctly filed opposition is the first and most significant part of any dispute that may arise between the right owner, the applicant and the registration authority.

Our firm provides opposition services to refusal decisions rendered regarding applications filed abroad, as well as to any unfair and infringing applications encountered abroad.