Counter-Statement

What Is a Counter-Statement?

A counter-statement is the response submitted by the trademark applicant against an opposition filed to their application. The opponent notifies TÜRKPATENT of grounds that may prevent registration; the applicant answers those grounds.

Filing a Counter-Statement

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What Is a Counter-Statement?

A counter-statement is your defence against an opposition filed by a third party to your trademark application. TÜRKPATENT notifies you of the opposition and allows time to respond. Failing to respond does not mean automatic refusal, but applications left undefended are markedly more likely to be refused.

Defences You Can Raise

  • No likelihood of confusion: the signs differ sufficiently visually, aurally and conceptually
  • Different goods and services: the parties’ fields and target customers do not overlap
  • Non-use defence: where the opposing mark has been registered for more than five years, request proof of use
  • Weak distinctiveness: the shared element is commonplace in the sector
  • Earlier right: you used the mark first and more widely
  • Coexistence: the marks have long coexisted in the market without difficulty

Why the Non-Use Defence Matters

If more than five years have passed since registration of the mark relied on, you may as applicant require the opponent to prove genuine use. If they cannot, the opposition is rejected. In practice many oppositions rest on unused defensive marks, so this defence can decide the outcome.

Frequently Asked Questions

TÜRKPATENT states a period when it notifies you of the opposition. Note the date in the notice carefully; the period should not be allowed to lapse.

The Office decides on the material before it. Without a defence, the opposition is more likely to succeed and the application to be refused in whole or in part.

Yes. A letter of consent or a coexistence agreement between the parties is possible and is usually the fastest and most predictable resolution.

Often, yes. Removing the overlapping classes can eliminate the likelihood of confusion and leave the opposition without object.

You may appeal the decision within two months of notification.
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