Trademark is seen and known side of your goods or services by the consumers. When you enter into the market, your trademark is your identity. The stronger and more concrete your trademark, the stronger and more concrete you will be. For this reason, before investing on your trademark and having your trademark recognised by the consumers, you must register your trademark. There is very little that does not know that you should file trademark application before you use it. However, you must definitely conduct trademark search before filing an application in order to find out the change of registrability.
You think you found the right trademark for you and you immediately file the trademark or have it filed for you. But, after about a month later, you receive the decision from TURKPATENT which informs that your trademark cannot be registered and then you feel disappointed.
It is vital to carry out availability search before you file your trademark in order to find out if your trademark or similar marks were registered for someone else prior to you.
In Turkey, trademark applications are filed using Nice Classification system. It is possible to file either single class or 45 classes (first 34 class is for goods, 35 -45 classes for services) application. But, your trademark should be available for each class you wish to file. Availability search can be conducted by everyone at Turkpatent’s online database. You can either conduct identical or similar trademark search. We recommend using an expertise trademark attorney to get the best results. Because, a term or a different class you come across can be considered similar by a professional trademark attorney. Namely, if you search class 25 for clothing, you must search for class 35 as well, or if the clothing is for protective purposes, you must search class 09, or if you are interested in selling clothing as well as repairing clothing or clothing rental you should search class 35 and class 45. Another example is that if you search for trademark “google”, the results such as oogle, gogle, googel, yoogle can be considered similar even if you may not think they are similar. (off course Google is a well known and registered mark and you cannot register this mark, it is just an example to make things clear).
If you come across similar trademarks as a result of your trademark search, your trademark attorney will give you hits to make your trademark distinctive and registrable. Adding a distinctive logo, or adding a term that will change the visually and meaning conception might be enough to make your mark registrable. Sometimes, it is better to just find another mark.
If you have your mark searched by a trademark attorney, your attorney will inform you if your trademark is distinctive enough. Your trademark may not be distinctive, in that case your mark will not be registered either.
If your mark describes your goods or services, that term cannot be registered as trademark. Namely, if you produce chocolate, you cannot register the term chocolate, wafer or dragee or the terms like “tasty, milky, fresh” as they describe the quality of the goods. Likewise, if you intend to file a trademark for “adverstiment agency” you cannot register the term as it is or in another language or you cannot register the quality of the service like “fast news agency” for news agency services. Your trademark attorney will advise you if your trademark is not distinctive enough or descriptive for the goods and services claimed. A professional trademark attorney will also give you remedies to get your mark registered and support you throughout the process.
We strongly recommend conducting availability search before investing and/or commercializing your trademark as it has a big impact on your business success. Otherwise, unable to register your mark after investing and using will cause you both time and money loss.
To put it simply, before filing a trademark application, conducting an availability trademark search is crucial.
Nesrin Top
Dorapatent Trademark and Patent Consultancy Managing Director
Trademark and Patent Attorney/European Patent Attorney