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COMMUNICATION BREAKDOWN


Naturally I asked my colleagues what was going on. T ey sent me the WIPO document showing that the transfer was done for registration 967909, but since there was change of ownership for just one specifi c country, WIPO gave an A-B-C type number to the registration. Number 967909 became 967909A for Turkey. It complied with WIPO’s regular practice. However, when I entered the number 967909A into the TPI records, nothing came out; the online record said that there was no such registration.


Obviously, there was something wrong. When I looked at WIPO records for 967909A I noticed a remark saying “Declaration that a change in ownership has no eff ect”. T is meant that the change of ownership was refused/not recorded by the TPI. Why? I called the assignments department of the TPI. When I started to explain the issue, the examiner interrupted me, saying: “I think they fi led a change of ownership application and WIPO gave an A-B-C type number to the registration for Turkey. We do not accept such numbering and do not record such changes here.”


I pointed out that Turkey is a member of the Madrid Protocol and, like other member states, should follow WIPO rules. Also, WIPO’s actions were of a procedural nature to aid effi ciency. When I asked what were the legal grounds of this TPI practice, I could not get a satisfactory response.


Aſt er discussions with my French colleague, I called WIPO and explained the problem. T e examiner in Geneva looked at the records of 967909A and underlined that they said that such change has no eff ect in Turkey. I asked why the TPI would issue a refusal in this instance. While the examiner could not explain the TPI’s position, she pointed out that cancelling 967909 for Turkey would solve the problem.


But of course, this was not an acceptable solution. We can’t cancel registration for Turkey whenever we are faced with the same type of problem. What would be the point of designating Turkey through the Madrid system if there is a risk of cancelling the mark in the future because of procedural obstacles? Moreover, contradictions in practice about this procedural matter between the International Bureau and the National Offi ce made no sense. Unfortunately, the WIPO examiner had no solution.


“MOREOVER, CONTRADICTIONS IN PRACTICE ABOUT THIS PROCEDURAL MATTER BETWEEN THE INTERNATIONAL BUREAU AND THE NATIONAL OFFICE MADE NO SENSE. UNFORTUNATELY, THE WIPO EXAMINER HAD NO SOLUTION.”


As to the 2010 national application: since the owner of the 2010 application and registration 967909 became the same company, namely SCA Limagrain, there were no grounds for partial refusal any more, the opposition was accepted and the application would be published in the Offi cial Bulletin of November 2011.


So what was my solution? I had no intention of leaving the fi les as they were, not only out of professional pride but also because I wondered what the legal base of the TPI’s practice was. With the prior consent of my French colleagues, I contacted one of the head offi cers of the TPI’s Trademark Department, asking for information as to the legal base of TPI’s approach to this issue. He promised to check the fi les.


Meanwhile, the deadline for opposing the partial refusal decision for the client’s 2010 national application was approaching. To keep the client’s application alive, we fi led the opposition, explaining all the facts.


I received no reply from the offi cer, so I contacted him again. Eventually he told me that he had checked our fi les and noticed that apparently there was a communication problem between WIPO and the TPI examiners. He also said that normal policy was to accept changes of ownership and that he couldn’t explain the breakdown in communication.


Shortly aſt er, we received two offi cial notifi cations from the TPI’s Appeal Board indicating the following:


As to registration 967909: since the owner of 967909 and 766286 became the same company, namely SCA Limagrain, there was no ground for a partial refusal decision, so the opposition was accepted and the application would be published in the Offi cial Bulletin of November 2011. Even though 971178 was not mentioned in the decision, that part of the problem was solved.


56 World Intellectual Property Review January/February 2012


Özlem Fütman is the founding partner of OFO Ventura, which is celebrating its 10th anniversary this year. Fütman has a Master’s degree in IP from Franklin Pierce Law Center. She has experience in every aspect of IP prosecution and litigation. She represents her multinational clientele in trademark, copyright, industrial design, domain name, licensing and passing off matters.


On the TPI records, the registration numbers 967909A and 971178A are now ‘visible’. As you see, there were no legal grounds for the TPI’s practice and it was merely a communication problem. Mutual understanding and cooperation solved the problem, especially from clients LE and SCA Limagrain and my colleagues at Cabinet Regimbeau. It is also worth noting the cooperation and eff ective working style of the TPI. ■


Özlem Fütman is the founding partner at OFO Ventura. She can be contacted at: ofutman@ofoventura.com.tr


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