ABSTRACT
As with the trademark application, it can be essential to follow the procedure up until a decision is reached. In some nations, additional steps might also be necessary once a decision has been made to register a trademark.
I. INTRODUCTION
The increase in international trade requires the protection of trademarks at the international level. There are some points to be considered before and after trademark applications before the World Intellectual Property Organization, which enables trademark applications to be made in many countries at the same time through a single center. In applications to be made through this organization, to which Turkey is a party, it is obligatory to apply through a country of origin and the trademark must be registered or applied in that country. The part that requires the most attention in international trademark applications is the writing of the classes. However, no matter how well written, it is possible for the classification to be contrary to the legislation or internal functioning of the country applied for. In this case, it is obligatory to make the necessary correction after the provisional refusal decision established by the relevant country. As with the trademark application, it can be essential to follow the procedure up until a decision is reached. In some nations, additional steps might also be necessary once a decision has been made to register a trademark. For example, some countries may request payment of a second part fee after registration, while some countries require the submission of a trademark declaration of use. For these reasons, it is important that a successful international trademark application is made by examining the guides prepared by WIPO and after a detailed planning.
International trade and globalization allow local trademarks to appear internationally. The increase in imports and exports in a global sense brings the presentation of products and services to consumers outside the borders of the country. This situation raises the questions of whether a trademark registered/protected in the country of origin will have protection abroad or how it can be protected. Considering the principle of territoriality prevailing in trademark law, it is clear that local registration and protection will not provide sufficient or no protection outside the borders of the country1. For this reason, it is necessary to offer solutions to the problem of how trademark owners who cross the borders of the country or have such a goal can protect their rights.
Trademark registration abroad can be done through a trademark application in the relevant country or through international or regional organizations such as the World Intellectual Property Organization (“WIPO”) or the European Union Intellectual Property Office (“EUIPO”).
It should be noted that many countries allow people who do not reside within their borders to register trademarks. Thus, even if a person is not a citizen or resident, they can still file for a trademark there. However, in order to submit an accurate trademark application, a trademark attorney or lawyer based in that nation is advised. In many countries, legal representation may also be required. The differences in the trademark law and application procedure of each country are among the difficulties that the applicant may encounter in case of a separate local application. Issues such as finding a reliable attorney, following the process through the attorney, and the fact that each country has different legal procedures are among the main difficulties of trademark applications to be made on a country basis through a local attorney. Additionally, if the trademark application is desired to be made in more than one country, it can be costly and tiring in terms of labor and time.
This study will examine the scope and processes of trademark application before WIPO, and the issues that Turkish practitioners should pay attention to during the application and registration phase.
II. WIPO AND MEMBER STATES
WIPO is a global forum for intellectual property services, policy, information and collaboration. WIPO, a self-funding organization of the UN with 193 member nations, processes applications for stuff like trademarks and patents, has a system of arbitration for disputes with domain names, and performs general studies on intellectual property concerns. The headquarters of the organization is in Geneva, Switzerland.
WIPO was established to lead the development of a balanced and effective international intellectual property system that enables innovation and creativity. WIPO’s mandate, governing bodies, procedures, etc. is regulated in the WIPO Convention establishing WIPO in 19672.
Türkiye became a member of WIPO on May 12, 1976, and has been a party by signing 20 of the conventions and international agreements prepared by WIPO since its establishment3.
193 out of 208 countries registered to the United Nations are members of WIPO. However, it should be noted that some of the WIPO member states do not accept trademark applications through WIPO. For example, although Saudi Arabia and Kuwait are members of WIPO, it is not yet possible to apply for trademarks in these countries through the WIPO system. Therefore, the trademark owner or his attorney who wants to apply for a trademark through WIPO should determine whether the countries to which the application is sought are parties to WIPO, as well as whether they accept a trademark application through WIPO4.
III. TRADEMARK TRANSACTIONS BEFORE WIPO
There are various transactions and applications that can be made using the WIPO system. The first of these, and the main subject of our study, is the new application. Application for “subsequent designation” is also possible through WIPO. This process is used in case that an existing trademark at WIPO is desired to apply in other countries in terms of all or some of the goods and services in which the trademark is registered. However, it is not possible to add new goods and services to the list with subsequent determination. In addition, it is possible to carry out many transactions related to trademarks such as trademark renewal, changing registration and proxy information, limiting goods and services, registering or canceling the trademark license.
There is a form for every transaction to be made before WIPO. For example, mm2 form should be submitted for trademark application, while mm18 form for trademark applications covering the United States of America, mm5 form for changes in trademark ownership. The guidelines prepared by WIPO explain which form should be filled for what purpose and the points to be considered while filling these forms5.
A. Important Issues Before Trademark Application
Trademark application at WIPO can be made through the online eMadrid system as well as through the Turkish Patent and Trademark Office (“TurkPatent”). In any case, the trademark application is first submitted to WIPO after it is examined and approved by the expert at TürkPatent.
For an international trademark application, the trademark in question must be registered or applied in the country of application (office of origin). In other words, for an international trademark application to be made through Türkiye, there must first be a trademark registered or applied for before TürkPatent. As the registration number in the country of origin, and if it has not been registered yet, the application number should be written in the part expressed as “basic trademark number” in the trademark application form.
Another point to be considered before the application is that the classes of goods and services for which the trademark is registered or applied for in the country of origin cannot be extended through international application. For example, it is not possible to add the 10th class when making an international trademark application for the X trademark registered in Türkiye in classes 03 and 05. Similarly, international trademark applications cannot be made for subclasses that are not in the application of the X trademark in the country of origin, although they are in the class 05.
It can be said that writing the list of goods/services in the trademark application form is one of the most important and exhausting parts of the application. Even a letter or punctuation error in the spelling may cause an irregularity letter to be sent by WIPO regarding the application or a rejection de cision from the applied countries even if it passes the first examination by WIPO. Again, a refusal decision can be made regarding the list of goods/ services that are meaningless, vague or broad in scope, repetitive or things not considered under the applied class, as a result of translation errors.
It should be emphasized that, no matter how well written, the member country that received the trademark application through WIPO evaluates the application and the list of goods/ services according to its own domestic legal regulations. Therefore, even though the application was approved and passed the first assessment by WIPO, the legal statutes or customs of the relevant countries may demand that it be rejected.
An international trademark application made within this framework is first examined by WIPO. It is then sent to the trademark offices of the applied countries. While the trademark offices of some countries examine very quickly and decide on the trademark application, some countries do not make any decisions for months. In this case, the trademark owner has no choice but to wait until the relevant decision is made or to follow the process closely through a local representative in that country.
B. Important Issues After Trademark Application
After the international trademark application is made and approved by the office of origin, it is examined by the WIPO expert in terms of application formalities. The scope of this review the expert examines whether the right classes of goods and services have been selected, whether the application fee has been paid, whether the mandatory information in the application form has been filled in. If any problem is detected by the expert, this situation is reported to the applicant through the “Irregularity Letter” and requested to make the necessary correction within the time specified in the letter.
The error detected in the application and how this error can be corrected are clearly stated in irregularity letters sent by WIPO. However, the applicant is not bound by the solution specified in the article. In other words, the recommendations in the irregularity letters are not binding.
A reply letter is submitted in which the necessary corrections are made for the irregularity letters. After this stage, the application, which does not contain any other formal problems, is forwarded to the trademark offices of the countries specified in the application.
1. Refusal Decisions of Member States
The country receiving the trademark application examines and decides on the application according to its own legislation. If a situation inconsistent with the country’s legislation is detected, this situation is notified to the applicant via WIPO with a so-called “Provisional Refusal Decision”. The most common reasons for provisional refusal decisions in practice are the existence of the same and/ or similar previous trademark registrations or applications in the said country, the errors in the classification in accordance with the said country’s law and procedure, the lack of mandatory elements for the country in question (for example, the translation of the trademark into the relevant language), even if it is not mandatory in the application form.
The relevant office includes explanations regarding the translation of the legislation, the reason for the refusal, and how and when6 the refusal can be appealed in provisional refusal decisions. In certain countries’ refusal decisions, it is also noticed that suggestions are made as to how to fix the problem that led to the rejection. Many countries allow the submission of a response to an appeal against a provisional refusal decision through a person authorized to act as a representative in that country. For example, the USA, which used to provide the trademark owner with the opportunity to respond to the refusal decision, requires the representation of non-citizens and resident abroad by proxy after the amendment. Considering that the refusal decision and the response procedure will be carried out entirely in accordance with the domestic law of the country in question, it can be said that it is more appropriate to work with a local representative in case of a provisional refusal decision.
In cases where no response is given to the provisional refusal decision in due time or if the response does not eliminate the reason for the refusal, the final refusal decision is established by the relevant trademark office. After this stage, it is a process that must be resolved completely according to the legal system of the relevant country. In other words, there is no opportunity to provide an answer or file a lawsuit over WIPO to the country that issued the refusal decision. In this case, it is recommended to work with a local representative and to draw a path in line with his recommendations.
It should be noted that there is no obstacle to re-applying the same or different countries over WIPO for a trademark for which a refusal decision was given.
2. Member States’ Statements of Granting Protection
The relevant country may also grant protection as a result of the trademark application submitted by WIPO. Sometimes, a registration decision can be made directly, while in some cases, a registration decision can be made after the response to the provisional refusal decision. After the applicant learns that the trademark is registered in the relevant country, there are some issues to pay attention to. These issues are mostly communicated to the trademark owner via WIPO.
The most basic issue to be considered after registration is the payment of the second fee. Some countries charge the trademark application fee in two installments: the first installment at the time of application and the second installment after the registration of the trademark was decided. Countries that already request payment of second fee are Brazil and Cuba7. If the trademark applicants in these countries neglect to pay the second fee after registration, the trademark will become invalid and the protection decision established in the relevant country will lose its meaning.
Some countries may request a declaration of use after the trademark registration decision. The decision to revoke the trademark registration will be made if it is not possible to show that the trademark is used in that nation or is projected to be used there shortly afterward. For example, in the Philippines, a trademark declaration of use is requested after registration, and if it is not submitted, the trademark registration is abandoned. For this reason, it will be to the advantage of the trademark owner who has applied for the trademark to obtain preliminary information about the obligation to use the trademark in the relevant country.
IV. CONCLUSION
The importance of branding at the international level requires the protection of trademarks at the international level. One of the most preferred ways in this regard is to apply for a trademark through WIPO. The interest in WIPO and international trademark application, which offers the opportunity to apply in three languages, is increasing day by day. For this reason, it is essential to know the points to be considered and the resources to be examined while making an international trademark application.
After briefly presenting WIPO and its member nations, our paper outlines the considerations that should be examined before and after filing an international trademark application. This study aims to draw a general framework for practitioners and trademark owners beyond an academic text and to guide their international trademark applications.
Accordingly, trademark owners and practitioners should determine the countries where the trademark will be used, determine the list of goods/ services and examine the guides prepared by WIPO at every stage of the application. However, this is not enough to ensure trademark protection, and in some specific countries, transactions such as paying the second fee and submitting a declaration of use should not be neglected to ensure the continuation of the protection after registration.
BIBLIOGRAPHY
Guide to the Madrid System International Registration of Marks under the Madrid Protocol, (Date of Access: 31.02.2023), https://www.wipo.int/edocs/pubdocs/en/wipo-pub-455-2022-en-guide-to-the-madrid-system-international-registration-of-marks-under-the-madridprotocol.pdf.
YAŞAR ÖZBEK, Dünya Fikri Mülkiyet Örgütü, (Date of Access: 31.02.2023) https://www.mfa.gov.tr/dunya-fikri-mulkiyet-orgutu.tr.mfa.
FOOTNOTE
1 Yaşar Özbek, Dünya Fikri Mülkiyet Örgütü, https://www.mfa.gov.tr/dunya-fikri-mulkiyet-orgutu.tr.mfa (Access: 31.02.2023).
2 See for the Convention and more details: https://www.wipo.int/treaties/en/convention/ (Access: 31.03.2023).
3 Please see to obtain statistical data on international agreements on intellectual property and the countries party to these agreements: https://www.wipo.int/wipolex/en/main/treaties (Access: 31.03.2023).
4 In order to determine this in a practical way, the current mm2 form can be downloaded from the WIPO website and the list of countries that can be selected in the form can be checked.
5 It is strongly recommended that the trademark owner or attorney, who wants to take any action before WIPO, should examine these notes while filling out the form for a healthy application process: https://www.wipo.int/export/sites/www/madrid/en/docs/notes_for_filing_mm_forms.pdf (Access: 31.03.2023).
6 It is necessary to pay attention to the opposition period included in the provisional refusal decisions. For some countries, it is not possible to extend the opposition time, in other words, to request an extension of time.
7 Second fee shoul be paid for trademark applications in Japan, in case that application was made before March 31, 2023.
