Tips for owners who will register their retail services
The Turkish Patent Institute has revised its practice regarding the registrability of servicemarks in respect of retail services in particular with regard to the type of the concerned retail activity.
The change follows the developments in the case law of WIPO Nice Classification Experts Community practice on the interpretation of services commonly referred to as “retail services”.
In its decision, the Turkish Patent Institute also refers to “Praktiker” decision dated July 5, 2005 (Case C-418/02), wherein the European Court of Justice rules that the "sales" as such is not a service activity in itself as it does not relate to “bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods“ but rather relates to "bringing together variety of goods for the purpose of presenting the same to consumers”.
According to previous practice, Class 35 was generally described as “Grouping of various goods for clients so that they can better see and buy them (the above mentioned services may be provided by means of retail, whole sale stores, electronic media, catalogues and similar other methods)…” which was used to provide a wide coverage for servicemarks without limiting them to determined group of services and goods.
Under the earlier practice the applicants were specifically required "not to specify" any goods or group of goods, whereby the description of "retail services" of applications with specification of such goods were ex-officio amended by the Turkish Patent Institute.
As a consequence, if a trademark was already registered in class 35, no applicant was able to register an identical or confusingly similar trademark for the same services even if both marks deal with retailing and sale of totally different goods.
On the basis of its revised practice, T.P.I. may accept the co-existence of identical or similar marks in class 35 in the name of different owners as long as details are provided with regard to the goods or types of goods to which those services relate. The only exception are the prior trademarks currently registered for the general "retail services without any specification of goods" registered before this revised practice - as of 19.10.2011 - which will continue to pose obstacles also for new trademark applications for the identical / indistinguishable similar signs for identical / similar goods / services.
What is required is a reference to the goods or type of goods sold at retail in order to distinguish a mark from a previously registered one. Therefore, if a trademark owner has registered the service mark for retail services in respect of specific goods, it will be possible for other service mark owners to register the same service mark for retail services in respect of different goods. Conflicts between trademarks claiming retail services in respect of different goods will continue to be assessed by the TPI according to Article 8 on the relative grounds of refusal.
On basis of the its revised practice, the TPI will allow the co-existence of identical or similar marks in name of different holders in class 35, as long as it is specified for which goods or type of goods, which may be specified by also referring to the field of activity such as " textiles, automotive, electronics, etc." the retail services relate to.
Consequently in case you have registered your mark for various goods under the retail services in class 35 for specific goods it might be possible for another trademark holder to obtain a registration for an identical or similar mark for retail services for a different type of goods, which may be specified by also referring to the field of activity such as "food, automobiles, textiles, electronics etc.".
Obviously, conflicting marks for retail services indicating the type of goods, will be examined by the Institute according to the currently applied absolute and relative grounds of refusal.
We do advise our clients to apply for a new registration in class 35 in which it is clearly stated for what type of goods or specific products the retail services relate to.
Kindly note that also international trademarks designating Turkey are subject to this practice, where applicants seeking protection for "retail services" without specifying goods / services, are subject to refusal on absolute grounds. This refusal may be overcome by submission of objection, submitting the specification of goods subject to retail services, and payment of official fees for objection, within the deadline for objection.