CLIENT ALERT

January 2017

   

 

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Dr. Çağdaş Evrim Ergün
Partner, Ankara
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New Industrial Property Law

The Industrial Property Law abrogating the patchwork of decrees that governed intellectual and industrial property rights has been published in the Official Gazette and entered into force on January 10, 2017.

Background

Turkish Patent Institute was established through adoption of the Decree No. 544 in 1994 with a view to provide effective protection of patents, trademarks, industrial designs and other intellectual and industrial property rights (“IP Rights”) and harmonize Turkey’s legislation on IP Rights with acquis communautaire of the European Union. Therefore, several decrees were adopted in 1995 (“IP Decrees”) following the establishment of Turkish Patent Institute. However, some of the provisions of the IP Decrees were annulled by Constitutional Court’s decisions in 2008[1] and 2014[2] stating that IP Rights are amongst property rights set out under Second Chapter of the Constitution (Fundamental Rights and Duties) and therefore cannot be regulated by decrees except for martial rule and state of emergency. Therefore, in order to prevent any further annulments and forfeiture of rights, adoption of a law on IP Rights had become vital. Furthermore, revision of the current provisions was also needed in order to further align with the EU legislation and international agreements and achieve a more effective industrial property system in Turkey.

What the Law Brings

Trademarks

Turkish Patent and Trademark Authority

The Law No. 6769 (“Law“) changes the name of the Turkish Patent Institute as Turkish Patent and Trademark Authority (“Authority”) which will have a new organisational structure in order to be able to implement the new Law and perform its new tasks more effectively. The Authority will also be referred to as “TURKPATENT”.

A More Flexible Aprroach Towards the Scope of Trademarks

One of the most important novelties brought by the Law is that the signs which can be used as a trademark are given a wider scope in line with Article 15 of TRIPS, the EU Trademark Directive 2015/2436 and the EU Trademark Regulation 2015/2424. Accordingly, the Law stipulates that any distinctive sign including names, words, figures, colors, letters, numbers, sounds and goods or their packaging can be registered as trademarks unlike the abrogated degrees which provided that only the signs that can be graphically expressed could be registered as trademarks. Therefore, registration of scents, sounds and motion trademarks are permissible under the Law.

Protection of Well-Known Trademarks

Unlike the IP Decrees, the new Law grants protection for well-known trademarks that are not registered in Turkey in line with Article 6bis of the Paris Convention. Therefore, the owner of a well-known trademark that is not registered in Turkey shall be able to oppose to trademark applications for a sign similar or identical to the well-known trademark of a similar or identical services and goods. Likewise, the Law provides protection for registered well-known trademarks where there is a risk of damaging its distinctive character or reputation or gaining an unfair advantage from its reputation regardless of the application being submitted for identical, similar or different goods or services provided that the application has not been made based on a fair ground.

Non-Use Claim

The Law introduces a new form of protection for trademark applicants which allows them to challenge the oppositions for trademarks that are not being used. The Law enables the applicant to require the opponent to submit evidence for genuine use of trademark and unless such genuine use of the trademark is proven, the opposition will be rejected. Non-Use claim can also be used by defendants in trademark revocation and infringement actions and the case will be rejected without examining the merits unless such genuine use of the trademark is proven by the claimant.

Consent Letters and Co-Existence Agreements

The IP Decrees did not expressly provide concepts such as consent letters and co-existence agreements in order to overcome provisional refusals due to a prior trademark. One of the major improvements the Law has brought is the introduction of a statutory basis for consent letters and co-existence agreements as a method to overcome such refusals. Therefore, co-existence of confusingly similar or identical trademarks are permissible and protected under the Law if there is a consent letter or an agreement in this regard.

Administrative Cancellation of Trademarks

The Law grants authorisation to the Authority for cancellation of trademarks instead of Turkish courts in line with the EU legislation which will ease the clearance of vast amount of trademarks that have not been used for five years without interruption. Nevertheless, this provision will enter into force after seven years as of the publication of the Law in order to enable the Authority to take necessary measures to prepare its organisational structure for such major change. Jurisdiction of Turkish courts with regards to cancellation of trademarks will continue until entry into force of the mentioned provision.

Five Year Period for Forfeiture of Trademark Rights

Article 25(6) of the Law stipulates that in the event the owner of the trademark does not take any action for consecutive five years even though it knows or should have known that a later-registered trademark has been used, it cannot rely on its trademark for revocation of the later-registered trademark provided that registration of the latter trademark does not constitutes bad faith. This provision will put an end to the inconsistent precedents of the Court of Appeals pertaining to the length of the period that trademark owner fails to take any action.

Exhaustion of Trademark Rights for Grey Market Good

Grey market goods are legal, non-counterfeit goods sold outside normal distribution channels which may have no relationship with the producer of the goods and import of grey market goods is illegal in most of the jurisdictions. Even though the principle of national exhaustion was accepted in the IP Decrees, the precedents of the Court of Appeals[3] were evolving towards international exhaustion which allowed the importation of grey market goods. Therefore, in order to address the inconsistentcy between practice and law, the principle of international exhaustion has been given a legal basis through adoption of the Law as it removes the word “in Turkey” from the provision on exhaustion of trademark rights.

Patents and Utility Models

Improved Procedure for Patent and Utility Model Applications

The new law sets forth a more simplified and efficient application procedure for patents and utility models which is expected to shorten the whole application procedure. Moreover, the Law abandons the unexamined patent and utility model system which was unable to provide sufficient protection. Accordingly, the applicant will be required to request the preparation of an examination report in order to obtain a patent or utility model. In the event the applicant fails to submit such request in due course, its application shall be deemed to be withdrawn. In addition to the foregoing, the Law also introduces a compulsory innovation examination procedure for utility models.

Administrative Cancellation of Patents

One of the most important novelties brought by the Law is the introduction of administrative cancellation of patents which is aimed at improving the quality of the patents as well as reducing the amount of cancellation cases before courts. With the entry into force of the Law, the Authority will be able to cancel patents upon submission of oppositions by third parties within six months following the publication of the patent in the patent bulletin. However, such administrative cancellation will not be possible for utility models and their validity can only be challenged before courts once utility models are published in the utility model bulletin. Third parties will be required to pay a fee in order to challenge the validity of a patent before Authority.

Removal of Penalties

The highly criticized penalties of imprisonment and fines, which used to be imposed on applicants unlawfully applying for patents and utility models or infringing the rights of the patent or utility model owners, have been lifted under the new Law. Accordingly, the Law only envisages legal protection for the infringements of patents that used to be subject to imprisonment and fines. The Law, however, keeps the imprisonment and fines for trademark infringements.

Designs

A Wider Scope of Protection

The Law has changed the term “industrial designs” as “designs” in order to widen the scope of the designs that will benefit from the protection provided under the Law. Furthermore, the Law also envisages a three year protection for unregistered designs free from any charges in order to protect the design owners abstaining from registration due to its costs. Furthermore, the Law sets forth a more simplified and efficient application procedure for registration of designs as well.

In addition, the Law provides that only visible parts of a complex product will be subject to protection under the Law and invisible parts of a complex product will not be protected.

Shorter Opposition Period

The new Law shortens the time period from six months to three months in which third parties can oppose to a design. Accordingly, the Authority will be able cancel a design only if an opposition is submitted within three months following its registration date.

Removal of Penalties

Similar to the patent infringements as expleined above, the highly criticized penalties of imprisonment and fines, which used to be imposed on applicants unlawfully applying for registration of a design or infringing the rights of the design owner, have been lifted under the new Law. Accordingly, the Law only envisages legal protection for the infringements that used to be subject to imprisonment and fines.

Conclusion

Legal framework that used to govern the IP Rights were inadequate to meet the requirements of the modern practice. Contrary to what its title suggests, the new Law also covers IP Rights and aims to ensure that Turkey’s legislation on IP Rights is better suited to the needs of the market practice. Furthermore, as explained above, legal uncertainties and further forfeiture of rights due to annulment of the IP Decrees by the Constitutional Court are expected to be eliminated. However, uncertainties with regards to the implementation of the Law are expected to be clarified upon issuance of the relevant regulation, a draft of which is available on the website of the Authority, but has not been issued yet.

[1] Constitutional Court, dated 3.1.2008, E. 2005/15, K. 2008/2. (http://www.resmigazete.gov.tr/eskiler/2008/07/20080705-11.htm)

[2] Constitutional Court, dated 9.4.2014, E. 2013/147, K. 2014/75. (http://www.kararlaryeni.anayasa.gov.tr/Karar/Content/4053188c-38cb-4e47-9d26-7996ac7523aa?excludeGerekce=False&wordsOnly=False)

[3] Court of Appeals 11th Civil Circuit, dated 6.11.2000, E.2000/7381, K.2000/8746 and dated 26.5.1999, E.1999/2086, K.1999/4505 and dated 14.6.1999, E.1999/3243, K.1999/5150.

 

This information is provided for your convenience and does not constitute legal advice. It is prepared for the general information of our clients and other interested persons. This should not be acted upon in any specific situation without appropriate legal advice. This information is protected by copyright and may not be reproduced or translated without the prior written permission of Ergün Avukatlık Bürosu.