The practice of the Turkish Patent Institute (TPI) regarding the registrability of trademarks for retails as a service has recently been reviewed in particular with regards to the specification of the type of retail concerned. Previously, class 35 was generally described as “services of bringing together a variety of goods, enabling customers to conveniently view and purchase those goods” which was used to provide a wide coverage for a trademark without any limitations to a certain group of services within the same class. As a consequence, it was not required to specify in what activities services in class 35 exactly consist, nor was it required to indicate the type of establishment undertaking the retails sales. The implications of this is that if a trademark is already registered in class 35, no applicant will be able to register an identical or similar trademark for the same services even if both marks deal with retailing and sale of totally different goods.
However, based on the new revisions, the TPI 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. 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 trademark for retail services of specific goods, it will be possible for other trademark owners to register the same trademark for retail services of other goods. The reasoning is that the protection for marks claiming retails services is exactly not conferred to the actual act of sale of those goods. The TPI will of course draw the appropriate conclusions from these principles when it comes to examining the confusing similarity between the marks. Conflicts between trademarks claiming retail services for different goods will continue to be judged according to the normal criteria.
By way of background, the current approach of other Trademark Offices from our region regarding the registrability of trademarks for retails services is not the same. Some Offices accept “retail services” as a plain term (such as the Trademark Offices of Algeria, Egypt, Jordan, Kuwait, Libya, Morocco and Tunisia), while others (including the Trademark Office of the UAE) insist on a formulation like “the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase these goods”.
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