A. Introduction:
The term 'intellectual property' has two different pillars, one relating to 'copyrights' and the other to 'industrial property', which includes trademarks, patents, designs, geographical indications, integrated circuit topographies, and the like. (General information on the concept and classification of rights, and the place of intellectual property in this classification can also be found HERE.)
Until the Industrial Property Law No. 6769 entered into force in Turkey, each industrial property matter was regulated by the decrees having the force of law in effect at the time.
Throughout the period when the decree laws were in force, there were criticisms in the scholarly literature that it was unconstitutional to regulate criminal sanctions by decree laws, especially those that contained provisions restricting personal freedoms and liberties. The criminal provisions in the decree laws were first annulled by the Constitutional Court in 2008. In the said decision, it was argued that intellectual and industrial property rights should be considered within the scope of personal rights and freedoms and that restrictions on these rights should not be regulated by decree laws. The Turkish Constitutional Court's latest annulment decision was issued only four days before the entry into force of the new Turkish Industrial Property (IP) Law. The annulled article was on non-use of trademarks (Article 14 of the Decree-Law No. 556 on Trademarks). These developments caused a malformation in the legal system that accelerated the entry into force of Turkish Industrial Property Law No. 6769.
In addition to the above, the need to increase harmonization between Turkish legislation and EU legislation revised by international agreements was also a crucial incentive for the entering into force of the stated legislation.
For these main reasons, Industrial Property Law No. 6769 entered into force in Turkey on January 10, 2017.
B. Significant Changes Observed in Trademarks, Designs, and Patents:
Trademarks, patents, utility models, designs, geographical indications, traditional product names, registration, post-registration procedures, civil and criminal sanctions for infringement, and other related matters are brought together in a single legislation consisting of 193 articles and six provisional articles and divided into five chapters.
First of all, it should be noted that with the new Turkish Industrial Property Law, the name of the Turkish Patent Institute (TPI) was changed to the Turkish Patent and Trademark Office. The same law also stipulates that only TURKPATENT will be used as the abbreviation of the name of the Office.
B.1. The following amendments have been made concerning "Trademarks":
• The scope of the signs that can be trademarks has been expanded within the framework set out in the European Union Trademark Directive and Regulation, which is the predecessor of Turkish IP Law.
Article 4 of the Turkish Industrial Property Law No. 6769 stipulates that trademarks may consist of "all kinds of signs such as words, shapes, colors, letters, numbers, sounds and the form or packaging of goods, including personal names, provided that they enable the goods or services of an undertaking to be distinguished from the goods or services of other undertakings and that they are represented in the register in a way that clearly and precisely determines the subject of the protection provided to the owner."
With the amendment made in this context, it has been stated that any sign can be a trademark provided that the trademark can be represented in the registry and the subject of the protection provided to the trademark owner is clearly and precisely understood.
• The principle of trademark coexistence is accepted as an exception to the absolute ground for refusal.
As a general rule and within the absolute grounds for refusal, Turkish Industrial Property Law No. 6769 states that "Signs that are identical or indistinguishably similar to a trademark that has already been registered and/or applied for the same goods and services or goods and services of the same type cannot be registered as a trademark." (subparagraph "ç" of paragraph 1 of Article 5)
Concerning this issue, it is stated in paragraph 3 of Article 5 that "A trademark application cannot be refused according to subparagraph (ç) of the first paragraph if a notarized document showing the prior trademark owner's express consent to the registration of the application is submitted to the Office."
In other words, with the entry into force of the Industrial Property Law No. 6769, two trademarks that are identical and/or indistinguishably similar in the same goods and services can now coexist and survive, provided that a notarized consent from the previous trademark owner is submitted to the Office.
• The publication and objection period has been reduced to two months (three months under the previous Decree Law).
• The registration and application of a trademark in bad faith is not only considered a relative ground for refusal but is also regulated as a ground for invalidation of the trademark. (The scholarly article, which contains a detailed analysis of bad faith trademark applications and registrations in Turkey, can be examined from the link HERE.)
• The burden of proving the use of a trademark is considered a counter-defense and is presented to the trademark applicant and/or defendant in both opposition and infringement proceedings.
• The Turkish Patent and Trademark Office is vested in the revocation of the trademark. (Please note that the articles on trademark revocation through the TURKPATENT will enter into force seven years after the date of publication of the Industrial Property Law. Therefore, until that time (that is to say, January 10, 2024), the Industrial Property courts will continue to decide on revocation requests).
• International trademark applications and their effects are included in the aforementioned Law.
According to the Industrial Property Law No. 6769, an international application filed under the Protocol to the Madrid Agreement on the International Registration of Trademarks will have the same consequences as an application filed directly with the Office.
• In the context of trademark infringement, damages claims, and invalidity claims, five years is expressly provided for loss of rights due to silence.
• The effect of prior rights, which was designed only for patents in the former Decree Law, is regulated as a common article in Law No. 6769 and applies to all industrial property matters, including trademarks and designs.
Law No. 6769 Article 155, titled "Effect of Prior Rights:" stipulates that the owner of a registered trademark may not assert its industrial property right as a defense in an infringement action if it arose after the date of the plaintiff's rights. Thus, unlike the former Decree Law, the defendant's recent trademark application/registration cannot be presented as a defense before intellectual property courts. The same argument can also be asserted in design-based claims and/or lawsuits.
B.2. The following amendments have been made concerning "Designs":
• In the Turkish Industrial Property Law, only the term "design" was used by removing the term 'industrial' which was included in the abrogated decree-law. Thus, not only industrial but also handicraft products are included within the scope of the definition of design.
• Unregistered designs are also included within the scope of design protection if they are presented to the public for the first time in Turkey. (The term of protection of a registered design covers five years from the date of application, which can be extended up to a total of twenty-five years by renewal in five-year periods, while the term of protection of unregistered designs covers three years from the date of the first public presentation of the design for which protection is sought.)
• The Turkish Patent and Trademark Office (TURKPATENT) has tended to conduct ex officio examinations regarding designs. In this context, it is authorized to examine, among other criteria, whether the design application bears the stamp of a novel character.
• The period for appealing against the publication of a design has been reduced to three months (compared to six months under the previous Decree Law.)
• Article 61, paragraph 3 of the Industrial Property Law No. 6769 makes it optional to describe the image. The relevant article is as follows: "The product name, product class, and the information included in the description do not affect the scope of protection."
• Considerable steps have been taken to resolve the uncertainties that have arisen in the past regarding the concept of ownership in design.
Generally, in service relationships, ownership is assumed to lie with the employer. This assumption extends to employees, students, trainees, and instructors at universities. Employees and other specified persons are also entitled to demand compensation for their efforts in creating a design. About instructors' designs, the Law states that at least half of the income derived from the design must be transferred to the instructor.
B.3. The following amendments have been made concerning the "patent/utility model":
• Patents without examination, which used to provide seven years of protection to the holder, were abolished by the Turkish Industrial Property (IP) Law No. 6769.
• Exceptions to patentability have been expanded.
According to the Industrial Property Law No. 6769, "biological processes related to plant varieties or animal breeds or intended to create plant varieties or animal breeds, except for microbiological processes or products obtained as a result of these processes"; "all treatment methods, including diagnostic methods and surgical methods, intended to be applied to the human or animal body"; "the discovery of a gene sequence or a partial gene sequence of only one of the parts of the human body, including the human body, and at various stages of their formation and evolution"; "human cloning procedures, procedures for altering the genetic identity of human heredity, the use of human embryos for industrial or commercial purposes, procedures for altering the genetic identity of human beings or animals in such a way as to cause suffering to animals without significant medical benefit, and animals obtained as a result of these procedures" are excluded from patentable inventions and/or patentability.
• Supplementary conditions have been included, and these applications are considered outside the scope of patent rights.
In this context, the small farmer, as defined in the Law on the Protection of Breeders' Rights to New Plant Varieties (Law No. 5042), has the right to use the reproductive material obtained from the product as a result of production with a patented product obtained from the patent owner or sold with his permission or obtained through another commercial means, to make new productions on his land. Therefore, the practices defined within this scope are excluded from the scope of the patent right. The law also provides that the farmer shall have the right to use for agricultural purposes patented breeding or other animal reproductive material provided by the patentee or sold with his authorization or obtained by any other commercial means. It is further regulated that this tenancy shall cover the use of the animals or other animal reproductive material to maintain his agricultural power and shall be deemed to be outside the scope of the patent right.
• The period for requesting a search report has been reduced to twelve months from the date of application.
• Similarly, according to Law No. 6769, the period for requesting an examination report is set as three months from the date of notification of the search report.
• The Law grants third parties the right to object to the publication of the decision to grant a patent within six months from the date of publication. The same Law No. 6769 also authorizes the Turkish Patent and Trademark Office to issue an invalidity decision after the examination of the objection to the decision to grant a patent.
• With Law No. 6769, the request for the preparation of a search report has also become an obligation for utility models.
• The Industrial Property Law also provides that an action for invalidation of a utility model may be brought against those who are registered as the owner of the utility model during the term of utility model protection or within five years following the expiry of the right. (According to the former Decree Law, it was only possible to claim invalidation of a utility model during the term of utility model protection).
C. Conclusion:
In the periods before the entry into force of the Turkish Industrial Property Law, it is a fact that malicious third parties tried to take advantage of the legal gaps in the decrees in force at the time. Therefore, it would not be wrong to say that the expected results of industrial property protection could not be obtained and the effectiveness of industrial property protection decreased during the period of decree laws in Turkey.
After analyzing the Turkish Industrial Property (IP ) Law no.6769 with a holistic approach, it is observed that the Legislature aims to correct the legal errors and eliminate the legal gaps observed during the former Decree Law period.
The foregoing conclusions can be concretized with the following examples:
Example 1: During the period of decree-law, the most basic defense in trademark infringement cases was: "the defendant had a trademark application or had registered the trademark in its name". At the stage of the proceedings, some courts ruled that a trademark registered under the law and used within this scope would not constitute an infringement of another's trademark and that the uses made until the trademark registration was invalidated were justifiable, and therefore there was no infringement of the trademark right. Even the Court of Cassation has upheld some of these decisions after its examinations.
Example 2: Similarly, during the former Decree-Law period, it was a fact and a common tendency that third parties filed design and/or utility model applications in which they had no interest and which did not originate from their creativity. As there was no obligation for ex officio examination for design applications and the obligation to demand a search report for utility models during the Decree Law period, these applications resulted in registration. Once registered, registrants acting in bad faith filed lawsuits against their competitors in the market. In turn, defendants filed counterclaims to invalidate these registrations. These tendencies resulted in a significant increase in cases and created a heavy workload in intellectual property courts.
Referring back to Example 1 in the paragraph above, with the entry into force of the Industrial Property Law No. 6769, a person who infringes a trademark right in bad faith by applying and registering the same trademark in the same classes will not be able to raise this as a defense during infringement proceedings, as the Law prevents third parties from asserting subsequent applications and registrations. (See Article 155 of the Turkish Intellectual Property Law.) This measure is believed to encourage companies to create and design their original trademarks instead of using and infringing well-known trademarks and other trademarks in the long run.
Likewise, referring back to Example 2 in the preceding paragraph, the fact that the Industrial Property Law No. 6769 authorizes the TURKPATENT to conduct ex officio examinations on the issue of whether a design is novel or not and that the same Law imposes the obligation to request a search report for utility models, indicates that the process of obtaining both design and utility model certificates will not be as easy as it was during the period of decree-laws. Looking at official statistics from the Turkish Patent and Trademark Office (please see the annexes to this article), the number of domestic patent or utility model applications filed after the enactment of Law No. 6769 in 2017 is "8625" (Eight thousand six hundred and twenty-five) and the number of domestic patent or utility model registrations is "3978" (Three thousand nine hundred and seventy-eight). These figures show that more than fifty percent of domestic utility model or patent applications were either rejected or not registered for other reasons. Based on these figures and the aforementioned new provisions, it can be argued that Industrial Property Law No. 6769 has started to prevent possible malicious attempts.
The author of this article believes that although the new legislation has many advantages on the one hand, it also has disadvantages on the other. One should always keep in mind that the workload of the Turkish Patent and Trademark Office has doubled. Since the time constraints have been significantly reduced, the TURKPATENT needs to act faster than before. Furthermore, most of the experts working within the TURKPATENT come from technical backgrounds and have only limited knowledge of the law, which leads us to the problem: lack of legal reasoning. As noted, the TURKPATENT will issue decisions on trademark revocation requests seven years after the publication of Law No. 6769 (that is to say, from January 10, 2024). In this respect, it would be difficult to say that the TURKPATENT has and will have deep knowledge and established case law in such decisions. Thus, it is considered that the decisions of the TURKPATENT will be controversial, at least in its initial decisions, especially in trademark-related disputes (e.g., revocation demands.)
Notwithstanding the pros and cons of the new legislation, the unification of all industrial property matters under a single Law, as well as the determination of common provisions for all industrial property matters on legal proceedings, compensation, infringement, possible lawsuits, statute of limitations, etc., is seen as a development that can eliminate the differences that occurred and were experienced during the former Decree Law period.
Again, it would be fair to say that the Turkish Industrial Property Law No. 6769, at least as of the date of its entry into force, meets the existing legal requirements regarding industrial property.
Prepared by
N.Berkay KIRCI
KIRCI Law Office
Attorney at Law
Trademark & Patent Attorney
FIGURE 1.
Source: Turkish Patent and Trademark Office Statistics (http://www.turkpatent.gov.tr/TURKPATENT/resources/istatistik/patent/Patent_basvuru_orijine_gore_grf.pdf)
Last Checked: September 25, 2018
FIGURE 2.
Source: Turkish Patent and Trademark Office Statistics (http://www.turkpatent.gov.tr/TURKPATENT/resources/istatistik/patent/PFM_tescil_orijine_gore_grf.pdf)
Last Checked: September 25, 2018