Abstract The author Dr. Suluk is the founder of Cahit Suluk IP Law Firm and a member of Istanbul Bar Association. He has been a research fellow at Max Planck Institute for Innovation and Competition in Munich and is currently an Associate Professor in Sabahattin Zaim University. This article Turkey’s first Industrial Property Act (IPA) entered into force on 10 January 2017. Trade marks, patents, utility models, designs and geographical indications that were previously protected separately by the Decree-laws are now covered by the IPA. Traditional product names are also protected for the first time ever under the IPA. The aim of the IPA is to harmonize Turkish industrial property law with the international agreements and EU acquis. However, lawmakers had to diverge from the EU acquis to address domestic issues. Turkey’s new Industrial Property Act (IPA) entered into force on 10 January 2017.1 Trade marks, patents, utility models, designs and geographical indications that were previously protected separately by the Decree-laws2 are now brought together under the umbrella of the IPA. Traditional product names are protected for the first time ever under the IPA. In 1995, Turkey introduced a first reform of its intellectual property legislation, following the country’s accession to the Customs Union with the European Union (EU)3 and implementing obligations arising from the Trade-Related Aspects of Intellectual Property Rights (TRIPS)4 agreement. The new IPA is the second major reform of IP law in Turkey in two decades. The first part of this article discusses the sources and history of Turkish intellectual property law and the enactment of the IPA, before analysing the key changes introduced by the latter. Sources history of Turkish intellectual property law The Turkish legal system is based on continental European law. The Civil Act5 and the Obligations Act,6 which entered into force in 1926, are modelled after Swiss law, while the Commercial Act of 19567 is primarily based on German law.8 The Civil Act of 2001,9 the Obligations Act of 201110 and the new Commercial Act11 were inspired by existing legislation in Germany, Switzerland and the EU. In drafting the IPA, the Turkish legislator based its work on existing EU regulation and relevant international agreements.12 The history of intellectual property protection in Turkey starts in the Ottoman Empire. Early arrangements for the protection of intellectual property rights were drafted in the 1850s. The first copyright law was the Council of Science Act of 1850 (Encümen-i Daniş Nizamnamesi),13 while the Trademark Act of 1871 (Alamet-i Farika Nizamnamesi), which was an adaptation of the French Trademark Act of 1857,14 provided the first system of protection for trade marks. The Patent Act (İhtira Beratı) adopted in 1879, modelled after the French Act of 1844, was the first law in relation to patents.15 After the proclamation of the Turkish Republic in 1923, the country adopted the Code on Intellectual and Artistic Works (Copyright Code) in 195116 and the Trademarks Code in 1965.17 Under the impulse of globalization, Turkey has made some important IP reforms. Following WTO and TRIPS18 obligations, as well as Decision No. 1/95 of the EC-Turkey Association Council,19 the Turkish intellectual property law was harmonized with EU law and international agreements in a very short period.20 As a result, the old legal framework for copyright, patent and trade marks, which originated in the Ottoman era, was completely renewed in 1995. Unfortunately, these fast-track changes did not result in a successful harmonization with the EU acquis. The 1995 regulations on designs, utility models and geographical indications were enacted for the first time. The first regulations on integrated circuit topographies and plant variety protection were implemented in 2004.21,22 Since 1995, Turkey has adopted all the key international agreements on intellectual property, including TRIPS, the European Patent Convention (EPC), the Patent Cooperation Treaty (PCT), the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), The Hague Agreement on Designs, the Rome Convention, the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT). One of Turkey’s biggest concerns during the modernization of its intellectual property legislation has focused on drug patents, which was the only issue raised by Turkey during the nine-year Uruguay Round negotiations on TRIPS. Similarly, the main reason why Turkey, one of the founding parties of the International Patent Institute, did not accede to the EPC until 2000 was its desire to exclude protections for drug patents. With the adoption of TRIPS and the accession to the Customs Union with the EU in 1995, Turkey’s views on drug patents changed radically. As of 1 January 1999,23 there were no outstanding issues that could prevent Turkey from becoming a party to the EPC.24 Despite Turkey’s early legislative attempts to create a system of intellectual property protection, its development was relatively slow for most of the twentieth century (for example, the first copyright collecting society in Turkey was only established in 1986, 34 years after the entry into force of the copyright law that provided the basis for their establishment in 1952). After 1995, however, IP reform in Turkey gained significant speed. Enactment and structure of the Industrial Property Act In 1995, Turkey hastily adopted four Decree-laws concerning trade marks, patents, utility models, designs and geographical indications, amidst the international obligations discussed above. However, the Constitutional Court started to revoke the relevant provisions of the said Decree-laws, stating that intellectual property rights are considered as property rights and can only be regulated by legislative acts, not Decree-laws.25 In 2017, this issue was finally addressed through the adoption of the IPA. The Turkish Patent Institute (hereinafter TurkPatent)26 produced separate draft acts on trade marks, patents and utility models, designs and geographical indications. These drafts, however, were dropped in 2008. The TurkPatent also drafted an Industrial Property Rights Package consisting of 102 articles, submitted to Parliament in 2013. While this package provided significant amendments to the four existing Decree-laws, it was no more than a temporary patch and thus was never enacted by Parliament. In 2016, a draft for a new industrial property act was submitted to the Parliament; indeed, this attempt proved successful and resulted in the new IPA that entered into force on 10 January 2017. The IPA supersedes all the previous Decree-laws and regulates trade mark, patent-utility model, design and geographical indication issues, bringing them under one umbrella. In addition, the IPA protects traditional product names27 and introduces some amendments to the Act No. 500028 on the Establishment and Functions of the TurkPatent, as well as new provisions applicable to trade mark and patent attorneys. Since plant breeders’ rights on new plant varieties29 and integrated circuit topographies30 are regulated by separate acts, they are not included in the IPA. Moreover, the Act on Intellectual and Artistic Works31 No. 5846 was left untouched by the IPA. As of April 2017, a new bill proposing significant amendments to the Copyright Act was in the drafting stage at the Ministry of Culture and Tourism. This bill is expected to be submitted to Parliament soon. Trade marks in the new Industrial Property Act New trade mark types The IPA redefines the notion of trade mark, providing that any kind of sign may be a trade mark provided that it is representable in the registry so as to clearly and precisely reflect the subject matter of the trade mark protection. The IPA eliminated the requirement of visualization by drawing as a condition for registration of the trade mark in question.32 Under the new approach, which mirrors the trade mark law of the EU, non-traditional signs such as colours, sounds, holograms, positions and movements may now be registered as trade marks in Turkey. Recognition of the Letter of Consent procedure In Turkey, both TurkPatent and the courts held that the distinctiveness principle for trade marks falls within the scope of public order.33 This rigid approach has sometimes led to deadlocks, as the need to register two trade marks that are identical or indistinguishably similar to each other arises from time to time in practice. Even if trade mark owners had consented to the co-existence of two identical or indistinguishably similar trade marks, TurkPatent or the courts would have intervened to prevent or invalidate registration. With the adoption of the Letter of Consent procedure in the IPA, the need to reconcile law and practice has finally been met. According to the new law, a trade mark which is identical or indistinguishably similar to another trade mark may be registered in the name of more than one person and may co-exist in the market with a notarized letter of consent of the trade mark owners.34 This solution will provide convenience, especially to enterprises that are interdependent economically or in any other manner. Expansion of the scope of protection With an amendment to the Turkish trade mark legislation in 2009, the online use of a sign identical or similar to a trade mark owned by another person as domain name, metatag, keyword or similar phrase to create a commercial impact was deemed a form of trade mark infringement. In addition to this, the following are considered infringing acts under the IPA: (a) the use of a sign as a trade name or a business name, (b) the use of a sign in business documents and advertisements of a business, (c) the illegal use of a sign in comparative advertisement.35 On the other hand, the consent of a trade mark owner is not required in the following cases:36 the use, by a natural person, of their own names or addresses, use of the sign to provide information concerning the type, quality, geographical source or other qualifications of the goods or services, use of the sign to indicate the purpose of the goods or services, particularly in respect of any accessories, spare parts or equivalent part products. For example, an independent manufacturer of car parts is allowed to use the phrase ‘a subsidiary industry product manufactured for BMW make cars’ on the fenders that it manufactures. Similarly, an independent car service shop is allowed to use the statement ‘we provide service to BMW, Mercedes and Audi make cars’ in its advertisements. In both cases, the consent of the car manufacturers is not required. Cancellation of unused trade marks The IPA has also sought to address the issues arising from the large number of unused trade marks that populate the trade mark registry. The solution adopted by the IPA, following the EU’s approach, can be better explained with the following example. The trade mark ‘Gökkuşağı’ has been registered for shoes and construction materials, but it is used for shoes only. The owner of the trade mark has not used the trade mark for any construction materials and five years have elapsed since the registration of the trade mark. A third party applies for the registration of a trade mark which is similar to the trade mark ‘Gökkuşağı’, to be used for construction materials. If the owner of the trade mark ‘Gökkuşağı’ raises an objection against this application, TurkPatent will demand evidence of the active use of the ‘Gökkuşağı’ trade mark.37 If the required evidence cannot be provided, the objection will be dismissed, the latter application will be accepted and the trade mark will be registered for construction materials while the previous trade mark still exists. It is important to note that TurkPatent has been conducting ex-officio examination,38 rejecting trade mark applications for signs identical or similar to previously registered trade marks on absolute grounds. Thus, the aforementioned requirement of proof of use will only apply to cases examined on relative grounds. In sum, if the following conditions are met, an objection raised by the owner of a registered trade mark against an application for the registration of another trade mark will be rejected and the later trade mark will be registered39: The existing trade mark and the later trade mark are not identical or indistinguishably similar to each other (which conduces to immediate rejection); Five years have elapsed from the date of registration of the existing trade mark and the trade mark has not been used since then; The existing trade mark has not been used in Turkey, without justifiable reason, for the designated goods or services in a genuine manner for five years since the date of application for the later trade mark; The person applying for the registration of the later trade mark has requested the opponent, who is the owner of the existing trade mark, to submit proof of use of the trade mark to TurkPatent. It is important to highlight that the proof of use may be required in actions for invalidity40 and infringement41 of a trade mark before a court, as well as at the stage of objections before TurkPatent. Administrative cancellation Under the previous legislation, the cancellation of a trade mark after its registration had to be requested through legal proceedings before a court. The IPA provides that cancellation of a trade mark may be claimed also before TurkPatent,42 instituting proceedings for administrative cancellation. In any of the following cases, cancellation is now possible within a much shorter time and at a much lower cost than that involved in a court action: (a) the trade mark has not been actively used for five years as of the date of registration, or the use of trade mark has been suspended for the same period, (b) the trade mark has become generic, (c) the trade mark has become misleading for the public, (d) guarantee and collective trade marks are being used in contradiction with the technical regulation. Since this provision is quite a radical departure from the existing legal framework, it will not come into effect until 2024.43 Before this date, claims for cancellation may only be filed in court.44 Shortening of the period of opposition after publication The period for filing an opposition against a published trade mark was three months from the date of publication of the application in the Official Trademark Bulletin.45 In the IPA, this period is reduced to two months.46 The period for registration of a trade mark was also shortened by the IPA. Since 1 July 2015, TurkPatent has been publishing the Official Trademark Bulletins every month only online. From now on, these will be published every fortnight. Loss of right due to acquiescence The principle of loss of right as a consequence of acquiescence, first enucleated by the courts, has now been included in the IPA. Accordingly, if the owner of a trade mark remains silent for five years despite actual or constructive knowledge that another trade mark which is similar to his/her trade mark has been registered after the date of registration of his/her trade mark and is being actively used, he/she may not claim invalidation of the later trade mark, unless it is proven that the registration of the later trade mark was in bad faith.47 The principle of acquiescence is not applicable under the IPA in respect of any infringement case. However, the courts have been applying this principle also in these cases, with the caveat that a specific period cannot be identified a priori: the court determines the period by looking at the circumstances of the case in question.48 Expansion of the scope of trade mark offences In the previous legislation, there were three defined crimes related to trade mark protection:49 these included the acts of manufacturing, marketing and selling any goods or services bearing an infringing trade mark. These acts were punishable with imprisonment from one year to three years and with judicial fines of up to twenty thousand days. The IPA introduced some changes, providing that anyone involved in (a) manufacturing or offering,( b) marketing for selling, (c) selling, (d) importing or exporting, (e) purchasing for commercial purposes, (f) keeping in possession, (g) transporting or warehousing any goods or services infringing a trade mark right shall be punished with imprisonment from one year to three years and with judicial fines of up to twenty thousand days.50 Patents and utility models Biotechnological inventions The IPA, in compliance with article 27 of TRIPS, states that a patent may be granted to inventions in every field of technology, providing that they are new, involve an inventive step and are applicable to industry.51 It is also excludes any discrimination on the basis of the relevant field of technology. On the other hand, no provision corresponding to articles 54(4) and (5) EPC is provided in the IPA. Apart from the EPC, there is no legislation concerning the patentability of biotechnological inventions in the Turkish patent law. However, the IPA employs a range of conventional terms, including plant variety, biological material, etc. In addition, universally accepted exclusions to patentability of biotechnological inventions are set out in the IPA. In this context, according to article 82 of IPA, the following may not be patented: Processes for cloning human beings; processes for modifying the germ line genetic identity of human beings; uses of human embryos for industrial or commercial purposes; processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes; Plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof; The human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene TurkPatent and the courts concede that biotechnological inventions not falling within these exclusions may be patented in Turkey. Abolishment of criminal sanctions for patent infringement The Patent Decree-law no. 551 adopted in 1995 established that infringement of patent rights was punishable with imprisonment from one year to four years.52 The Constitutional Court invalidated the Decree-law, finding it in contrast with the principle of legality in criminal law.53 The IPA now provides only legal sanctions for the infringement of patent right, excluding criminal sanctions. Criminal sanctions remain only for trade mark infringement.54 No criminal sanction has been adopted for the infringement of patents, utility models, designs, geographical indication and traditional product names.55 Post-grant oppositions In the previous legal framework, there was no real system of opposition to patent applications. Article 99 of the IPA provides third parties with the right to file an opposition with the aim of improving the quality of the patent system as well as of reducing the number of lawsuits. Third parties may file an opposition within six months after the publication of the patent registration in the official patent bulletin, in the following cases: If the patent protection criteria are not met; If the invention has not been disclosed adequately; If the subject matter of the patent exceeds that of the original application. This provision is applied to patents but not to utility models.56 Abolishment of the unexamined patent system The search report issued by the relevant Patent Office is the scorecard, so to speak, of the invention. If the scorecard consists of passing grades, the applicant subsequently requests an examination report. If the examination report is positive as well, an examined patent certificate is issued. In the previous system in Turkey, if the ‘scorecard’ contained failing grades (thus discouraging the request of an examination report), the applicant could request the issuance of an unexamined patent certificate. Thus, the applications that failed to meet the conditions for protection used to be granted an unexamined patent certificate. Examined patents were under protection for twenty years, whereas unexamined patents were under protection for seven years. The unexamined patent system is now completely abolished with the enactment of the IPA.57 Search report for utility models Under the previous regime, utility models were not subject to any search and examination.58 Based on these certificates, legal actions could be filed against competitors. This was the weakest link of the system. The IPA has introduced a compulsory search report for utility models.59 Accordingly, within two months of the date of application, the applicant must request the issuance of a search report. Otherwise, the application will be deemed withdrawn. If the search report is positive, the certificate will be granted; otherwise, the application will be rejected.60 Patents and universities As a rule, employers are the owners of the inventions of their employees. In the previous systems, universities were excluded from this rule. In other words, the owners of inventions by academic staff were the academic staff themselves.61 In practice, since academics could not even file a patent application for their inventions due to lack of funds, many inventions used to be abandoned before being granted protection. According to the IPA, academic institutions will now be the owners of the inventions made by their academic staff.62 Inventions made at universities by means of the incentives provided by the Scientific and Technological Research Council of Turkey (TÜBİTAK), the Technology Transfer Offices (TTO) established at some higher education institutions and the techno parks established at university campuses, will be first patented and then commercialized. At least one-third of the revenue from the commercialization of a patented invention will be paid to the relevant inventor, who could be either an academic, graduate or undergraduate student.63 This reform should create a culture of patenting within higher education institutions. Employee inventions By default, employers are the owners of the inventions of their employees.64 Yet, employees may ask for a reasonable payment (compensation) from the employer in relation to the commercialization of the invention in question.65 In calculating the payment, the economic value of the related service of that invention, the position of the employee within the enterprise and the share of contribution of the employer to the invention in question are to be taken into account.66 Public servants generally have the same legal status as private sector employees. However, there are two defined exclusions to that rule:67 (a) with respect to public servants, the provisions of the contracts between the parties are reserved through other legal regulations; (b) the criteria for the calculation of the compensation for public servants differ from those applied to private sector employees. The latter may request a reasonable payment, while the payment for the inventions to be made to the public servants cannot be less than one-third of the revenue. Inventions from research supported by public bodies According to article 122 of the IPA, the owner of an invention derived from a project supported by public bodies and organizations will be the person who receives the support. If the person who benefits from the support claims ownership, he or she will be obliged to file a patent application for the invention. If a beneficiary of the support does not claim a right on the invention, then the invention will be the property of the public body that granted the support. These rules aim to encourage the commercialization of research sponsored by public bodies. The subsidiary rule that confers ownership upon the funding body ensures that the resulting inventions will contribute to the economy in any case. Plant breeders’ right In recent years, the EPO has provided support for the patentability of ‘plant varieties incorporating a technical element’. In line with this tendency, the cumulation between patents and breeders’ rights has begun to gain great importance in practice. The IPA provides that small farmers will be allowed to use the ‘reproductive material’ obtained from the land cultivated by the said farmers by using a patented product for subsequent productions.68 Farmers may also use any ‘patented livestock’ or other ‘animal reproductive material’ for agricultural purposes.69 This right covers use of any ‘livestock’ or other ‘animal reproductive material’ for the purpose of continuing the agricultural activity of the farmer. Finally, if a breeder cannot develop a new plant variety without infringing a patent, the patent will be subject to a compulsory licence.70 Further processing and re-establishment of rights In the previous system, patent and utility model applicants who failed to abide by due payments and actions at the application stage, were sanctioned with a loss of right. The IPA now provides compensatory periods to prevent such losses. Accordingly, an applicant will be able to request further processing of its application by paying the amount due within two months of receipt of the notice of incomplete action.71 This addresses a gap in the previous system. In addition, the IPA provides an additional time period for remedying the deficiencies that cannot be corrected through further processing.72 Thus, if an applicant incurs loss of right due to failure to comply with a period despite his/her due care and diligence, within two months after the end of the cause of non-compliance—which may not be later than one year—he/she may request reinstatement of his/her rights by paying the respective fee. This provision focuses on events of force majeure. It is not necessary to state a reason for the non-compliance with simple procedure periods, whereas the reason for non-compliance with the period in respect of the force majeure events has to be stated. Finally, any person who has been using, or has taken serious and real actions to use, an invention for which an application has been made during an event of force majeure with genuine intensions may continue to use the invention free of charge to meet the reasonable needs of the business he/she owns (ie any person who used an invention in the interim is granted a license as of right). Designs Protection for registered and unregistered designs The previous legal framework dealt with registered designs only. With the IPA, both registered and unregistered designs are protected. The former may enjoy protection for up to twenty-five years, provided that they are renewed every five years after the date of application. In harmony with the EU legislation, the IPA73 also provides protection for unregistered designs to meet the needs of such industries as fashion and textile, where design trends change frequently. Unregistered designs that have not been introduced to the public in any part of the world before, but which are introduced for the first time to the public in Turkey will be protected for three years.74 Designs introduced to public for the first time abroad will not benefit from unregistered design protection in Turkey.75 This practice exists in the EU as well.76 Limitations to the scope of unregistered design protection Mirroring EU law, the protection conferred on unregistered design protection is weaker than that of registered designs. We have already discussed the different term of protection. Differences exist also in relation to infringement: for the infringement of a registered design, similarity between the two designs is sufficient; for unregistered designs, the infringing design must have been copied from the infringed one.77 For unregistered designs, independent creation will not infringe. A future registered design for which an application has been filed will be protected in the same manner as an unregistered design until its publication.78 Upon publication of the application, the design will benefit from the scope of the registered design protection. Exclusion of protection for component parts not visible during normal use Under the IPA, only visible elements will be protected79 in respect of complex products. Visibility of these elements in the course of maintenance, repair and service is not deemed sufficient. Thereby, thousands of parts such as spark plugs, engines, horns, resistances, etc. under the bonnet of a car are left outside the scope of protection. ‘Must match’ parts The use of any parts for repair purposes in order to restore the original appearance of a complex product will not infringe the design right if the use takes place after three years since the first introduction of the design to the market, provided that misleading information is not given about the source of such parts.80 That is to say, the protection period for ‘must match’ part designs that are subject to use for repair purposes is limited to three years. On the other hand, the use of equivalent parts indicated by the Ministry of Science, Industry and Technology within this scope and within three years after the first introduction of the design to the market, will not be considered an infringement.81 This provision is intended to allow for local manufacturing of parts, especially in the automotive industry. With this perspective, frequently changed parts of a car, such as doors, body panels, fenders, etc., may be manufactured by independent spare part manufacturers. Expansion of the scope of multiple applications Under the previous system, it was possible to file designs that fall into the same sub-class as a multiple application format with a single file. Under the IPA, the scope of multiple applications has been expanded: designs that fall into in the same class (and not only in the same sub-class) may be filed with a single file as a multiple application.82 For example, separate applications had to be submitted for saucepans and knives in the past, which is not required any longer under the IPA. For ornamentations, applications may be made in conjunction with the underlying product in a multiple application. For example, glasses fall into class 07. An ornamentation on the glass, however, falls into class 32. In this case, it is possible to use a multiple application. This increases convenience for design owners. Application procedure The IPA reduced the period for filing an opposition to design applications from six months to three months.83 Under the previous regulation, it was compulsory to submit a description for each application. Under the IPA, the submission of a description is optional.84 It is possible to file an application with a visual representation of the design but without a description, if so desired. Registration of original designs through novelty examination Design applications that are found not to be novel by TurkPatent will be rejected ex officio.85 The applicant may contest the rejection decision within two months of its notification. The IPA adopted a system of substantial examination of novelty for designs. In practice, this will certainly increase the number of appeals against decisions of TurkPatent. However, time will show how this change, will evolve in practice. In my view this approach is quite problematic because it is not compatible with simplicity, practical and cost effective feature of design registration. Partial rejection and invalidation Under the previous system, partial rejection and partial invalidation were not allowed. Following the path of EU law, the IPA brings partial rejection and partial invalidation into practice. TurkPatent may now partially accept and partially reject a design application.86 However, it is mandatory to provide the protection conditions for the remaining part and to preserve the previous identity of the design to assure the continuity of the registration after the partial rejection decision. Similarly, in the case of invalidation, it is mandatory to provide the protection conditions for the remaining part and to preserve the previous identity of the design for the continuity of the registration after the partial invalidation.87 For instance, in respect of the design of a pair of shoes featuring a pattern, if the model of the shoes is new but the pattern design is not original, the pattern design is excluded while the model of the shoes is registered. In the opposite case, the entire design is invalidated, which results in the design not preserving its identity. Designs by employees According to the IPA, employers are the rightholders of their employees’ designs.88 In respect of any designs made outside an employment relationship, the rightholder will be determined by the terms of a contract executed between the parties. This rule is also applicable to any designs developed by academics as a result of their scientific studies or researches, as well as by students and interns. Under the previous regulation, the owner of the design was the academic who had developed the design. Employees will be paid a certain amount of money by taking into account the importance of the design they develop. If a dispute arises regarding the amount of compensation, the sum will be determined by a court. If a higher education institution uses a design for commercial purposes, at least half of the proceeds earned from the design will be paid to the designer. Geographical indications and traditional product names Food, agriculture, mining, handcraft and industry products In Turkey, protection for geographical indications was adopted in 1995 by the Decree-law No. 555. Re-regulating the matter, the IPA also provides protection for ‘traditional product names’.89 Thus, any food, agriculture, mining, handcraft and industry products made by blending natural and human elements may be registered as a geographical indication or traditional product name, provided that they meet the required conditions. The aim of this protection model is mainly to contribute to rural development. The records show 200 registrations90 and 300 applications91 for geographical indications within the registry. Antep Baklavası and Aydın İnciri are also registered in the EU. Names that do not fall within the scope of geographical indication and that are proven to have been used traditionally to describe a product in the respective market for at least thirty years may be registered as traditional product names provided that they meet at least one of the following conditions:92 (a) they results from a traditional production or processing method or from a traditional composition, or (b) they are manufactured from a traditional raw material or material, such as pastırma (pastrami) and döner (doner kebab). Improvements in registration procedure and costs Unlike under the previous regime, applicants for geographical indications and traditional product names do not necessarily have to be natural or legal persons; producer groups may also apply for these rights.93 If there is only one manufacturer of a product, then this manufacturer may also file an application for the registration. Any authorized association, foundation and cooperative that works for the public interest or which is authorized to protect the economic interests of its members may also apply for registration. Public professional organizations may also apply. The requirement for the publication of geographical indications in the Official Gazette and in national and local newspapers is abolished.94 Applications will be published only in the Official Bulletin of TurkPatent. The period for filing an opposition to geographical indication applications is reduced from six months to three months.95 Thus, the duration of the registration process is shortened. Filing an opposition to an application has an official fee attached, but no fee will be charged for oppositions filed by public entities and organizations. Foreign applications Without prejudice to the provisions of international agreements, as regards to geographical indications and traditional product names which are the subject of the application: (a) geographical indications and traditional product names should be protected by the origin country or the international community of which said country is a member, (b) audit conditions should be met and (c) the origin country should provide equal protection for Turkey-based applications for registration of geographical indications or traditional product names filed from Turkey.96 Geographical indications and trade marks According to the IPA,97 after the registration of a geographical indication, an application for the registration of a trade mark for any goods or services related to the registered geographical indication shall be rejected and, if such a trade mark has already been registered, it shall be invalidated through legal proceedings. However, if a trade mark which is identical or similar to the geographical indication has been registered in good faith or the right to use that trade mark has been acquired in good faith before the protection of the geographical indication, the powers granted by the geographical indication to the rightholder shall not affect the registration and use of the trade mark in good faith. On the other hand, registration of a sign which is identical or similar to a registered trade mark as a geographical indication or a traditional product name will not be permitted if the owner of the registered trade mark objects to its registration, taking into account the reputation, fame and duration of use of the registered trade mark. Strengthening inspection mechanism The IPA98 establishes a powerful inspection mechanism for both geographical indications and traditional product names. The period to submit an inspection report is reduced from ten years to one year. Additionally, the use of an emblem is compulsory for geographical indications, but optional for traditional product names.99 However, if an emblem is not used, the provisions of the IPA will not be applied. With the use of an emblem, the qualities of a product guaranteed by the registration will be perceived by consumers, thus increasing awareness in this regard. The provisions regarding the obligation to use an emblem will enter into force one year after publication of the law in the Official Gazette.100 Changes in content and ownership There may be some modifications as to the properties subject to registration, due to reasons such as climate change and/or scientific and technological advances, which result in unavoidable changes to the content of the registration of the geographical indication or traditional product name in question.101 Procedures are now in place for filing such changes, as well as any amendment to the ownership of the application or registration. Other provisions Amendment of the name of the Turkish Patent Institute Under the IPA, the name of the Turkish Patent Institute is changed into Turkish Patent and Trademark Office (short name: ‘TurkPatent’). International exhaustion Countries generally prefer national exhaustion. Traditionally, Turkey adopted the principle of national exhaustion, recognizing international exhaustion only for integrated circuit topographies.102 With the introduction of the IPA, however, Turkey is changing its policy substantially, adopting the international exhaustion principle for all the categories of industrial rights.103 Effect of previously dated rights According to Turkish case law,104 if there is an industrial property certificate which belongs to an infringer, this certificate must be invalidated before filing an infringement action. Since an action for invalidation lasts five years on average, in practice, malicious third parties can obtain a trade mark, patent, utility model or design certificate for the purpose of taking benefit from the reputation of a trade mark or from a patent belonging to another person, thus circumventing the industrial property system. When an infringement action is filed against them, they claim that an action may not be filed against them during the validity term of the certificate. Therefore, the industrial property certificates have turned into a safe harbour for malicious third parties. The IPA eliminates this requirement, eradicating such practices. The owner of a trade mark, patent or registered design right will not be able, from now on, to defend himself by relying on a certificate in an infringement action filed by the owner of a right bearing a date older than the date of his right.105 Thus, the registration certificates will no longer serve as a safe harbour against genuine rightholders. Immediate destruction of counterfeit goods In Turkey, litigation can take many years. In the interim, courthouses and depots are filled with goods involved in criminal activity. Pursuant to the IPA,106 adequate samples will be collected from illegal counterfeit goods at the beginning of the proceedings and the rest of the criminal goods will be destroyed if (a) the goods have sustained damage, (b) there is a risk of substantial decrease in the value of the goods or (c) storage of the goods creates a substantial burden. If any of these conditions exists, an expert-witness inspection will be made and the court hearing the case will decide on the destruction of the goods upon request of the public prosecutor during the investigation stage. This immediate destruction procedure is applicable only to counterfeit goods involved in a crime. The procedure will not be implemented for other rights, except for goods seized before 2009. Improvements to TurkPatent With a change in the existing structure of TurkPatent, the following new departments will be established:107 (a) Department of Innovation and Publicity, (b) Department of Geographical Indications and (c) Department of Re-Examination and Assessment. The Department of Innovation and Publicity, in particular, should contribute to technology transfer activities. The new Department of Geographical Indications will take up responsibilities previously held by the Department of Trademarks. It will not only provide awareness-raising activities but also undertake an active control of the subject matter. The IPA ends the distinction between trade mark and patent specialists at TurkPatent, assigning the title of Industrial Property Expert to all of them. In addition, 281 new staff positions were created to increase TurkPatent’s workforce. The main reason for this increase is the new role of TurkPatent as an International Searching and International Preliminary Examining Authority in 2016 under the PCT.108 Establishment of the Intellectual Property Academy Since intellectual property law is not yet a separate discipline in Turkish universities, no education specific to this field can be provided. To address this issue, the IPA109 provides for the establishment of an intellectual property academy. In addition to education with respect to industrial property rights, the academy will also provide training programmes related to copyright. Granting trade mark and patent attorneys legal status Professional rules are set out in the Trademark and Patent Agency,110 which establishes a disciplinary board for the profession. Use of electronic systems for notices Notices from TurkPatent will be sent electronically via mailboxes assigned to users after their consent.111 After the notice is loaded into the mailbox of the recipient, the notice will be deemed served at the first date the recipient logs on to the mailbox or in any case at the end of the tenth day following the loading of the notice into the mailbox. Conclusion In 1995 Turkey completely renewed its intellectual property regulation, which had its origins in the Ottoman-era regulations. After twenty-two years, industrial property rights in Turkey, the seventeenth-largest economy of the world with a per capita income of US$10,000, have been re-regulated under the umbrella of the IPA. The aim of the IPA is to harmonize Turkish industrial property law with the international agreements and EU acquis and to provide solutions for the problems encountered in practice. However, it is hard to say whether the aim of the IPA has been accomplished entirely, since the lawmakers had to diverge from the EU acquis in some instances to solve domestic issues. The primary reasons for drafting the IPA were: (a) to eliminate the inconveniencies stemming from the non-examination system of patent, utility model and design, (b) to accelerate the registration process, (c) to eliminate the problems encountered in practice, (d) to strengthen the structure of the TurkPatent, and (e) to implement the Constitutional Court’s decisions of revoking Decree-laws. In comparison with the 1995 reform, the IPA does not bring a new system, but introduces a number of new provisions and mechanisms. In any case its enactment represents a turning point for Turkish intellectual property law. Footnotes 1 Turkish Official Gazette (OG), 10 January 2017, No. 29944. 2 Patent Decree-law No. 551, Industrial Design Decree-law No. 554, Geographical Indication Decree-law No. 555 and Trademark Decree-law No. 556. These Decree-laws entered into force after being published in the same Official Gazette. See OG, 27 June 1995, No. 22326. 3 Decision No. 1/95 of the EC-Turkey Association Council (EC) 96/142 on implementing the final phase of the Customs Union  OJ L35/1. 4 OG, 25 February 1995, No. 22213 bis. 5 OG, 4 April 1926, No. 399. 6 OG, 8 May 1926, No. 366. 7 OG, 9 July 1956, No. 9353. 8 A. Güriz, ‘Sources of Turkish Law’, in T. Ansay and D. Vallace (eds), Introduction to Turkish Law, 5th edn (Kluwer, Lahey, 2005), pp. 1ff, especially 8–9. 9 OG, 8 December 2001, No. 24607. 10 OG, 4 February 2011, No. 27836. 11 OG, 14 February 2011, No. 27846. 12 For detailed information see H. Pınar, ‘Verfahrensrechtliche Regelungen im Türkischen Patent- und Markenrecht’  GRUR Int. 120; Ü. Tekinalp, Fikri Mülkiyet Hukuku, 5th edn (Vedat Kitabevi, İstanbul, 2012), pp. 87, 354, 523–4; S. Karahan et al, Fikri Mülkiyet Hukukunun Esasları, 4th edn (Seçkin, Ankara 2015), pp. 27–8. 13 Tekinalp, (n. 12), p. 87. 14 H. Arseven, Nazari ve Tatbiki Alameti Farika Hukuku (İsmail Akgün Matbaası, İstanbul, 1951), p. 4. 15 N. Ayiter, İhtira Hukuku (Sevinç Matbaası, İstanbul, 1968), p. 18. 16 OG, 13 December 1951, No. 7938. 17 OG, 12 March 1965, No. 11951. 18 OG (n. 4). 19 Decision No. 1/95 (n. 3). 20 For detailed information see. T. Nal, ‘Probleme des Türkischen Urheberrechts aus der Sicht des deutschen und europäischen Rechts’ (PhD thesis, Max-Planck-Institut für Innovation und Wettbewerb, 2000), p. 11 and ff. 21 OG, 30 April 2004, No. 25448. 22 OG, 15 January 2004, No. 25347. 23 See Decree-law No. 566 - OG, 22 September 1995, No. 22412. 24 OG, 12 July 2000, No. 24107 bis. 25 The Constitutional Court issued a large number of annulment decisions concerning the said decree-laws. Lastly, a new decision in relation to the trade mark law was issued and entered into force after its publication in the Official Gazette just before the enactment of the IPA. See Constitutional Court, 14 December 2016, Case No. 2016/148, Decision No. 2016/189 - OG, 06 January 2017, No. 29940. 26 Article 188 of IPA changes the name of the administrative institution known as the Turkish Patent Institute to the Turkish Patent and Trademark Office. The shortened name is TurkPatent. 27 In the IPA the traditional product name is not considered as industrial property right. See Art 2(i). 28 OG, 19 November 2003, No. 25294. 29 OG (n. 22). 30 OG (n. 21). 31 OG (n. 16). 32 Art 4(1) IPA. 33 For an example of the Turkish Supreme Court decisions see 11th Chamber of the Supreme Court, 5 February 2007, Case No. 2005/14600, Decision No. 2007/1303; 11th Chamber of the Supreme Court, 23 December 2015, Case No. 2015/6134, Decision No. 2015/13829. 34 Art 5(3) IPA. 35 Ibid, Art 7(3). 36 Ibid, Art 7(5). 37 Art 19(2) IPA. 38 Ibid, Art 5. 39 Ibid, Art 19(2). 40 Ibid, Art 25(7). 41 Ibid, Art 29(2). 42 Ibid, Art 26. 43 Ibid, Art 192. 44 Ibid, Provisional Art 4(1). 45 Decree-law No. 556 Art 35(1). 46 Art 18(1) IPA. 47 Ibid, Art 25(6). 48 In a case, the Court of Cassation rejected the infringement lawsuit in light of a ten-month period of acquiescence. See 11th Chamber of the Supreme Court, 21 November 2000, Case No. 2000/9012, Decision No. 2000/9189. 49 Decree-law No. 556 Art. 61(A) amended by Law No. 5833 - OG 28 January 2009, No. 27124. 50 Art 30 IPA. 51 Ibid, Art 82(1). 52 Ibid, Art 73(A). 53 Constitutional Court, 5 February 2009, Case No. 2005/57, Decision No. 2009/19 - OG, 10 June 2009, No. 27254. 54 Art 30 IPA. 55 Pursuant to art. 61 of TRIPS, the member countries should set forth criminal sanction for copyright piracy and counterfeiting goods in their domestic laws. For detailed information on this subject see C. Suluk, ‘Patent İhlaline Cezai Yaptırımın Uygunluğu Tartışmaları’,  Dokuz Eylül Hukuk Fakültesi Dergisi, (V. 14, No. 1/2012) 79; Turkey fulfilled this obligation by setting forth criminal sanction in terms of trade marks in art. 30 of the IPA and in terms of copyright in art. 71 of the Law no. 5846. On the other hand, criminal sanctions are regulated also in art. 66 of Act No. 5042 on the Protection of Plant Breeders’ Rights for New Plant Varieties and in art. 39 of Act No. 5147 on Protection of Integrated Circuits. 56 For utility models, only a third-party opinion is authorized, but opposition after registration is not accepted. After registration, the third parties can only request the invalidity of utility models. See Art 142(9) IPA. 57 Art 191(3) IPA. 58 Art 160 and 162(1) Decree-law No. 551. 59 Art 143(5) IPA. 60 Ibid, Art 143(10). 61 Art 41 Decree-law No. 551. 62 Art 121(1) IPA 63 Ibid, Art 121(8). 64 Ibid, Art 113. 65 Ibid, Art 115(6). 66 Ibid, Art 115(7). 67 Ibid, Art 113(4). 68 Ibid, Art 85(4). 69 Ibid, Art 85(5). 70 Ibid, Art 129(1)-d. 71 Ibid, Art 107(1). 72 Ibid, Art 107(2). 73 Ibid, Art 55(4). 74 Ibid, Art 69(2). 75 Ibid, Art 55(4). 76 D. Musker, Community Design Law (Sweet & Maxwell, London, 2002), p. lviii. 77 Council Regulation (EC) 6/2002 of 12 December 2001 Community Designs  OJ L3/1 Art 19(2); Art 59(2) IPA. 78 Art 19(3) IPA; Art 59(6) IPA. 79 Ibid Art 56(2–3). 80 Ibid, Art 58(4). 81 Ibid, Art (58(5). 82 Ibid, Art 61(7). 83 Ibid, Art 67(2). 84 Ibid, Art 61(3). 85 Ibid, Art 64(6). 86 Ibid, Art 68(5). 87 Ibid, Art 77(2). 88 Ibid, Art 73. 89 Ibid, Art 34(3). 90 http://www.turkpatent.gov.tr/TurkPatent/geographicalRegisteredList/ (accessed 14 March 2017). 91 http://www.turkpatent.gov.tr/TurkPatent/geographicalList/ (accessed 14 March 2017). 92 Art 34(3) IPA. 93 Ibid, Art 36. 94 Ibid, Art 38(5). 95 Ibid, Art 40(2). 96 Ibid, Art 39. 97 Ibid, Art 48. 98 Ibid, Art 49. 99 Ibid, Art 46. 100 Ibid, Art 192. 101 Ibid, Art 42–3. 102 The Act of Integrated Circuit Topographies Art 12. 103 Art 152 IPA. 104 See for instance 11th Chamber of the Supreme Court, 12 October 2004, Case No. 2003/13394, Decision No. 2004/9665; 11th Chamber of the Supreme Court, 17 May 2010, Case No. 2008/13589, Decision No. 2010/5398. 105 Art 155 IPA. 106 Ibid, Art 163. 107 Ibid, Art 169. 108 http://www.wipo.int/pct/en/access/isa_ipea_agreements.html (accessed 14 March 2017). 109 Art 168 IPA. 110 Ibid, Art 181–2. 111 Ibid, Art 160. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)
Journal of Intellectual Property Law & Practice – Oxford University Press
Published: Jan 6, 2018
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