The Turkish Law on Industrial Property (the “Law”) was published and entered into force on January 10, 2017.
The Law aims to strengthen the protection of intellectual property rights and adopts a similar method and terminology as those used in European Union legislation. Before the adoption of the Law, intellectual property rights were largely regulated by separate statutory decrees on trademarks, patents, industrial designs, and geographical designs, in addition to a predecessor law on intellectual property rights. Even though the decrees and that previous law were designed to be compatible with and fulfill obligations arising from the EU-Turkey Customs Union, certain aspects contradicted the Turkish Constitution on issues related to the limitation of fundamental rights.
In 2016, the Turkish Constitutional Court (the “Court”) – having already annulled other provisions of the decrees as unconstitutional in 2008, 2014, and 2015 on the ground that property rights cannot be limited by statutory decrees – annulled the provision of Decree No. 556 on Protection of Trademarks providing for the cancellation of trademarks due to non-use. The Law was enacted to fill the gap on industrial property rights created by the Court’s rulings and was drafted in accordance with the Court decisions, as well as Turkey’s need for wider protection in the form of intellectual property rights consistent with EU law and practice – specifically on trademarks, geographical indications, designs, patents, and utility models.
The fundamental change in the Law on all trademark, designs, patents, and utility model rights is that it expands the exhaustion principle to international scope, rather than applying this principle only within Turkey.
Key Changes on Trademark
Decree No. 556 prohibited the co-existence of trademarks and considered them as absolute grounds for rejection. The Law has altered this provision and allows notarized co-existence agreements where they contain the explicit consent of the initial trademark owner, which can overcome the presumption of rejection.
Second, in addition to registered well-known trademarks, the Law regulates the protection of unregistered well-known trademarks in Turkey, pursuant to the Paris Convention. Thus, the owner of the unregistered well-known trademark may oppose applications submitted for identical trademarks on the same or similar products and services. The same article of the Law provides protection for registered well-known trademarks; if there is a risk that a subsequent application may dilute the distinctive character or take unfair advantage of the well-known trademark’s reputation, the subsequent application will be rejected.
Finally, the Law provides a new defense mechanism regarding the non-use of trademark for opposed trademark applicants who apply for a resembling registered trademark. Similar to Decree No. 556, the Law provides that a trademark that is not used or suspended for five continuous years will be cancelled. However, due to Decree No. 556, subsequent applicants are not able to challenge the initial trademark owner over an unused trademark but must instead file a claim for nullity of the trademark. The Law provides that, in relatively simple proceedings, if a trademark owner claims to be an initial owner, the subsequent applicant may challenge the initial trademark owner to submit evidence of genuine use of the trademark. Unless the initial owner proves the genuine use, the opposition of the initial owner shall be rejected.
Key Changes on Geographical Indications
The Law requires the usage of emblems on product packages protected by geographical indications in order to raise awareness of consumers.
Key Changes on Designs
The Scope of Decree No. 554 on Protection of Industrial Designs was limited to industrial designs. The Law aims to protect all sorts of designs, regardless of their industrial character.
The Law protects designs only if they fulfill conditions of innovation, distinctiveness, and visibility. Thus, nonvisible accessories of a composite design cannot be registered separately.
Key Changes on Patents
The Law requires an innovation to be new, to involve an inventive step, and to have industrial application. Controversially, Decree No. 551 on Protection of Patents did not require any substantial examination of the innovation for registration, which has led to serious legal issues between owners and companies. The Law reverses this rule, establishing an examination system by the Turkish Patent and Trademark Institution. This system also includes a post-grant opposition system for third parties, who have only six months from the date of publication of a patent application to file an opposition. This development is expected to prevent third parties from blocking legitimate patent applications of rightful owners.
Intellectual property rights have a fundamental place in the economic and social development of a country. Hence, legislation on intellectual property must meet both public and market demands. While the previous regime failed to satisfy these demands completely, the Law on Industrial Property offers hope for strengthening the necessary legal framework.
This article was originally published in CEE Legal Matters, a publication covering law firm news and legal developments in Central and Eastern Europe, and is available in the magazine’s print version and online.
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