Overseas Registration

It is possible to register trademarks abroad in several ways. These include: Territorial Application (applied separately for each country), regional application (collective application for the selected region), (EUTM-28 EU Country) (ARIPO-9 African Country) (OAPI-17 African Country), Madrid Protocol (100 Parties to the Agreement). It is possible to sort it as an application within the scope of more than .

Real and legal persons residing in Turkey can register their trademark in their own country in different countries that are party to the agreement, just like in other countries, in accordance with the provisions of the Paris Convention.

Although foreign trademark registration procedures are similar to the domestic application, it may differ from country to country.

As we mentioned above, there are several ways to register a trademark abroad;

• Territorial Registration: In this system, protection is requested by making a separate application for each country for which registration is requested. Although it is possible to get registered quickly by applying to the patent offices of the relevant countries, it is more costly than other systems since the attorney and fee will be paid separately for each country. It is preferred because it is fast. In addition, it is inevitable to be registered in this way in countries that are not included in the collective application systems (For example, Iraq, Saudi Arabia, Kuwait, etc.). Although the registration period varies according to the countries, it is approximately 12-18 months.

 

• EU Registration: (EUTM): 28 countries (Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland , Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, England, Croatia), it is possible to receive protection valid in all countries with a single application for the European Union. It can be preferred because it is economical and fast. However, during the registration process, when an objection is raised from a registered trademark in any member country, the application can be canceled completely. In this respect, it contains risks. The registration period is approximately 12-18 months. Since it is costly to get individual protection in EU countries, it can still be preferred. On the other hand, it is possible to apply by being selected as a single country within the scope of the Madrid Protocol.

 

• African Union (OAPI): 17 countries in total (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire, Equatorial, Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, It is possible to apply collectively and get registration for the union, which includes Senegal, Togo. The union of the relevant countries is included in the scope of the Madrid Protocol and application can be made by selecting it as a single country.

 

• Union of South Africa (ARIPO): Within the scope of the agreement to which 9 countries (Gambia, Ghana, Kenya, Mozambique, , Sierra Leone, Somalia, Sudan, Zambia) are parties in total, it is possible to receive protection in the relevant countries with a single application.

 

• Registration under the Madrid Protocol: It provides collective application and registration in the member countries (more than 100 countries) that are party to the Madrid Protocol. It is possible to initiate the registration process and receive protection simultaneously in one or more countries selected from the countries listed above. Although the registration process takes about 18-24 months, it is possible to choose the desired country and apply only to those countries. Or, on the basis of the first application, it is possible to add a country with a repeat application in the future. In order to be registered in this system, which is the most preferred system, the trademark to be applied must be applied or registered in the country of origin (Turkey). Since it is necessary to apply on the basis of the application in Turkey, it is not possible to choose a class outside the scope of protection of the trademark in Turkey, and a different trademark sample cannot be added. In addition, since the foreign application is bound to the trademark in the country of origin for 5 years from the date of application, in case the trademark in the country of origin cannot be registered or is cancelled, the foreign registration is also cancelled.

Why is Foreign Trademark Registration Necessary?

In particular, it is inevitable for companies that export goods and services to protect their brands in those countries in which they operate or plan to operate. Because the protection of trademarks is valid for each country separately and it is not sufficient to be registered in only one or a few countries. Even in EU countries, for example, it is not possible for a trademark registered in Germany to benefit from legal rights in France.

For this reason, foreign trademark registration should be done by taking into account the following issues;

• Trademark registration may be mandatory for the sale of goods and services in accordance with the customs legislation of the relevant country,
• In order not to be exposed to legal sanctions, restrictions or obstructions from previously registered similar brands in the said country and countries,
• Preventing similar and imitated brands that may appear in the target market,
• Registration of the internet domain name with the extension with the relevant country code,
• In order to benefit from government support for creating a brand abroad.

What are the Foreign Trademark Registration Processes?

As the summary information is given above, the registration processes change according to the case of applying for trademark registration in different systems. For example, in the case of a national application, although the registration process is usually about 1 year, this process may differ from country to country.

On the other hand, the registration process for trademark registration (EUTM) to be made within the scope of the European Union takes approximately 12-18 months. In case of objection, this process can sometimes take up to 2 years.

The average registration process for registrations under the Madrid Protocol varies between 18-24 months. The examination and evaluation to be made by the Turkish Patent and Trademark Office after the application may take 1-2 months, and the examination and evaluation to be carried out by WIPO may take 5-6 months. After all these processes, as a result of the notification to be made by WIPO to the relevant country offices, the feedback on whether the trademark will be registered or not is expected. This process takes a maximum of 18 months.

The protection of the trademark is valid for 10 years from the date of application and it can be renewed 6 months before the expiry of each 10 years. Thus, the protection period can be extended indefinitely.

What are the Required Documents for Trademark Registration Abroad?

The following documents are required for trademark registration procedures. It is sufficient to send the relevant documents by fax or e-mail.

1. For applications to be made under the Madrid Protocol or the European Union (EUTM);

• Trademark Transactions Agreement: It is sufficient to send it by mail or fax after it is stamped and signed.
• Power of Attorney: Notarization is not required, stamping and signing are sufficient.
  .Application Fee: A receipt showing that the application fee has been paid for which countries or classes will be registered.
• Form MM18 for US applications.

2. For National Applications;

• Trademark Transactions Agreement: It is sufficient to send it by mail or fax after it is stamped and signed.
• Apostille-Consulate-approved power of attorney: The power of attorney valid for the country in which the application will be made must be translated in the language of the relevant country as notarized, and an apostille approval must be made. Consular approvals are made by us. For some countries, a simple power of attorney may be sufficient.
• Application Fee: A receipt showing that the application fee has been paid for which countries or classes will be registered.
• Notarized copy of the trade registry document translated for some countries.