Prior to the entrance of Turkish Industrial Property Law, transactions within the Turkish Patent and Trademark Office (e.g. application, registration, opposition transactions, etc.), as well as legal issues arising from industrial property matters, were regulated according to related Decree-Laws.
The criminal provisions included in the decree-laws were canceled in 2008 with the decision of the Turkish Constitutional Court. It was argued in the stated decision that intellectual as well as industrial property rights should be regarded within the scope of individual rights and freedoms and that restrictions relating to these rights should not be regulated by Decree-Laws.
The latest annulment decision was given just 4 days before the new Industrial Property Law entered into force and it was about the article related to the non-use of trademarks (article 14 of 556 numbered Decree-Law on Trademarks).
These developments caused a malformation in the legal system, which accelerates the inurement of the 6769 numbered Industrial Property Law. In addition to the above-mentioned issue, the need to enhance the cohesion between international treaties revised EU legislation, and Turkish legislation was another important incentive for the enactment of 6769 numbered Industrial Property Law.
By virtue of these main reasons, 6769 Numbered Industrial Property Law entered into force as of January 10, 2017, in Turkey.
B. Notable Changes Observed in Trademark, Design, and Patents:
Trademarks, patents, utility models, designs, geographical signs, traditional product names, registration, post-registration transactions, legal and penal sanctions for the violation, and other related matters are combined in a single piece of legislation consisting of 193 articles and six provisional articles, divided into five chapters.
• With this legislation, the name of the Turkish Patent Institute (TPI) changed into the Turkish Patent and Trademark Office (TURKPATENT).
The below-mentioned changes made regarding “Trademarks”:
• The scope of signs that a trademark may consist of broadened.
Article 4 of 6769 numbered Industrial Property Law states that: “Trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor.”
• Trademark coexistence principle accepted as an exemption of absolute ground for refusal.
As a general rule and within absolute grounds for refusal, 6769 numbered Industrial Property Law stipulates that: “Signs which are identical to or indistinguishably similar to a previously registered and/or applied trademark relating to identical goods and services or to goods and services of the identical type, shall not be registered as a trademark.” (Subparagraph “ç” of paragraph 1 of article 5.)
In paragraph 3 of article 5, clearly states that: “A trademark application may not be refused according to subparagraph (ç) of the first paragraph if a notarial document indicating the clear consent of the prior trademark proprietor for the registration of the application is submitted to the Office.”
In other words, with the entrance into force of 6769 numbered Industrial Property Law, two trademarks, which are identical and/or indistinguishably similar to each other in the same goods and services, can now exist and live together provided that a Notarized letter of consent obtained from previous trademark proprietor and submitted within the Office.
• The duration of publication and opposition period shortened to two months. (Mentioned durations were three months in the former Decree-Law.)
• Registration and application of a trademark in bad faith are not only regarded as a relative ground for refusal but also arranged as a ground for the invalidation of the trademark.
• The proof of use of a trademark is accepted as a counter defense and vested in trademark applicant and/or defendant, both in opposition proceedings and also in trademark infringement proceedings.
• Turkish Patent and Trademark Office vested in the revocation of a trademark. (Please note that articles related to revocation of the trademark via TURKPATENT will enter into force after seven years from the date of publication of Industrial Property Law. Thus, until that period (that is to say January 10, 2024), IP courts will keep rendering decisions about revocation requests.)
• International trademark applications and their effects included in the stated Law.
According to 6769 numbered Industrial Property Law, it is stated that an international application filed in the scope of Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks shall have the same results with an application filed directly to the Office.
• The time duration of 5 years clearly stipulated in loss of rights due to remaining silent in the context of trademark infringement, compensation claims, and also invalidation requests.
• The effect of previously dated rights, which was regulated only for patents in the former Decree-Law, is regulated as a common article in 6769 numbered Law that is applicable for all industrial property matters including but not limited to trademarks and designs.
Article 155 of 6769 Numbered Law that is titled: The Effect of Previously Dated Rights, stipulates that the proprietor of a registered trademark can not claim his/her own industrial property right as a defense justification in the infringement case, where and if those rights arose after the date of plaintiff’s rights. Thus, unlike former Decree-Law, the defendant’s relatively recent trademark application/registration will not be submitted as a defense before IP courts and they will not be subject to dilatory motions. The same argument can also be asserted in design-originated demands and/or lawsuits.
The below-mentioned changes made regarding “Designs”:
• The term “design” is used in the definitions part and thus, not only industrial but also handcrafted products are also comprised within this definition.
• The non-registered designs, in case it is presented to the public for the first time in Turkey, are also comprised of design protection. (Please note that the term of protection of a registered design covers a period of five-year as from the date of filing, which can be prolonged in total up to twenty-five-year by means of renewing in five-year periods whereas, the term of protection of unregistered designs covers a period of three-year as from first presentation date to the public of the design for which protection demanded.)
• Turkish Patent and Trademark Office (TURKPATENT) become inclined to pursue ex officio examination in terms of designs. In this respect, in addition to other criteria, it is vested in examining whether the design application bears the stamp of a novel character or not.
• The term of opposition against the publication of a design shortened to three months. (Mentioned duration was six months in the former Decree-Law.)
• According to paragraph 3 of article 61 of 6769 numbered Industrial Property Law, to submit a description of the visual has become optional. The concerned article states that: “Product name, product class, and the information are given in the description shall not affect the scope of protection.”
• The issue regarding ownership in a design refined.
In general, ownership in service relations and other types of work relations is regarded to be the employer. This assumption comprised the employees, students, trainees, and instructors in the Universities. The employee and other stated persons are also entitled to request a price in exchange for the efforts that he/she exposed in the course of the design creation process.
• As to instructors’ designs, the Law states that at least half of the revenue that would have been obtained from the design should pass on to the instructor.
The below-mentioned changes made regarding “patents/utility models”:
• Patents without examination, which used to give seven years of protection to its proprietor, were abolished with 6769 numbered Industrial Property Law.
• The scope of exceptions to patentability expanded.
According to 6769 numbered Industrial Property Law, “biological processes relating to plant varieties or animal races; or intending to generate plant varieties or animal races with the exception of microbiological processes or products obtained in the result of such processes”; “all treatment modalities including the diagnosis methods which are intended to be applied to human or animal bodies and surgical methods”; “discovering only one of the parts of human body including human body and a gene sequence or a partial gene sequence in the various phases of their generation and evolution”; “the human cloning processes, the changing processes of genetic identity of human inheritance, using human embryos for industrial or commercial purposes, changing processes of genetic identity in a way that may agonize the animals without providing any significant medical avails for human or animals and animals that are obtained in the result of such operations” are excluded from patentable inventions and/or patentability.
• Additional circumstances included and these practices were regarded as out of the scope of the patent rights.
Within this context, a small farmer whose definition is made in the Law on Protection of Breeder’s Rights for New Plant Varieties (5042 numbered Law) has the right, in his own land which they operate, to use the reproduction material that derived from the product in the result of the production made by a patented product provided from the patentee; or sold by his permission; or obtained by another commercial way, in order to do new productions in their own land which they operate. Thus, practices defined within this context are outside the scope of the patent right.
The farmer is also entitled to use the patented breeding or other animal reproduction material provided by the patentee or sold with his permission or obtained by another commercial way for agricultural purposes. This tenancy covers the use of animals or other animal reproduction material in order to maintain their own agricultural strength and is deemed as an exclusion from the scope of the patent right.
• The search report request period decreased to twelve months from the date of application.
• According to the 6769 numbered Law, the duration to request an examination report is three months from the notification date of the search report.
• Third parties are entitled to oppose the publication of the decision to grant a patent within six months from the date of publication. According to the 6769 numbered Law, after the examination of opposition, the Turkish Patent and Trademark Office is vested in rendering an invalidation decision.
• The request for the preparation of a search report also became an obligation for utility models.
• The invalidity proceeding of the utility model may be instituted against those who are registered in the register as the owner of the utility model during the duration of utility model protection or within five years following termination of right. (According to former Decree-Law it was possible to request the invalidation of a utility model only within the duration of utility model protection.)
The main incentives for the promulgation of 6769 numbered Industrial Property Law are stated in the introduction part. In addition to these, one can observe that Legislator' intention is to correct the legal mistakes and fix the legal gaps observed in the former Decree-Law period.
Combining all industrial property matters within one single Law and also assigning common provisions regarding legal transactions, compensation, infringement, possible lawsuits, the lapse of time, etc. for all industrial property matters observed as advancement which might eliminate the discrepancies that occurred and experienced in the former Decree-Law period.
To set an example, with the introduction of 6769 numbered Industrial Property Law, a person who malicious trespass a trademark right by applying and registering the same trademark in the same classes, will not be able to assert this fact as a defense in the course of infringement cases, as the Code prevents third parties from asserting their postdated application and registrations. This precaution will, in the long run, lead companies to create and design their original trademarks instead of using and intruding on well-known trademarks as well as other signs.
Again, in the former Decree-Law period, it was a fact and a very common tendency that third parties were applying for design and/or utility model applications in which they had no relation and do not arise from the span of their creativity. As there were no Ex-Officio examinations for design applications and also no search report demand requirement for utility models in the Decree-Law period, these applications mostly ended up with registration. Once registered, registrants acting in bad faith filed lawsuits against their competitors in the market. The defendants, on the other hand, filed counter lawsuits so as to invalidate these registrations. These facts caused a significant rise in the number of lawsuits and created a workload density on the part of IP courts.
The above-mentioned attempts seem to be prevented by 6769 numbered Industrial Property Law. In casting a glance through the official statistics (please kindly refer to the annexes of this article.) obtained from the Turkish Patent and Trademark Office, the number of local patent and/or utility model applications that were filed after the entry into force of 6769 numbered Law in 2017 is “8625” (Eight thousand six hundred twenty-five), whereas, number of local patent and/or utility model registrations is "3978" (Three thousand nine hundred seventy-eight). These numbers show that more than fifty percent of the local utility and/or patent applications were either be rejected or not registered by virtue of other factors. In other words, one can assert that 6769 numbered Industrial Property Law nip possible malicious attempts in the bud.
Although new legislation has many advantages, on one part, the writer of this article believes that it also has disadvantages on the other hand. It should always bear in mind that the Turkish Patent and Trademark Office’s workload doubled. As time limits significantly decreased, TURKPATENT is now in need of acting more promptly than it used to. What is more, most of the specialists working within TURKPATENT have technical backgrounds and have only limited knowledge of the law, which leads us to the issue: lack of legal discernment. As stated, TURKPATENT will be rendering decisions regarding trademark revocation requests 7 years after the publication of the 6769 numbered Law (that is to say as of January 10, 2024). In this respect, it will be hard to say that regarding these kinds of decisions TURKPATENT has and will have profound knowledge and settled precedents. Thus, especially in trademark-related disputes (e.g. revocation cases), it is believed that TURKPATENT's decisions will be debatable at least at its very first decisions.
That being said although new legislation has its pros and cons, it will be fair to assert that 6769 numbered Turkish Industrial Property Law has met current legal industrial property related requirements.
KIRCI Law Office
Attorney at Law
Trademark & Patent Attorney
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
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