A Review of the Novelty of Designs in Cancellation Actions Regarding TPTO’s Decisions

In 2023, the Court of Cassation General Assembly of Civil Chambers ("the General Assembly") rendered two decisions regarding novelty examination in designs. In both decisions, the General Assembly considered that the novelty assessment should be made ex officio without being limited to the information and documents in the file, even in the actions filed against the decisions of the Turkish Patent and Trademark Office ("TPTO"). In 2013, the General Assembly had held that the novelty assessment in design should be limited to the information and documents in the file, since the cancellation actions filed against the TPTO’s decisions consisted of an administrative review. The fact that the General Assembly has changed its view after 10 years is of great importance.

Legal Process

In the case regarding the decision of the General Assembly numbered 2021/943 E. and 2023/288 K. and dated 29.03.2023, the plaintiff's design application was opposed by a previous design owner for lacking novelty and distinctiveness. The "TPTO" accepted the opposition. The plaintiff requested the annulment of the TPTO's decision. Following an expert examination, it was determined that the design application could be considered new and distinctive within the scope of the information and documents available in the opposition file. However, in the research conducted by the expert regarding absolute novelty, it was argued that the application had previously been presented to the public and was therefore devoid of novelty.

The Ankara 1st Civil Court of Intellectual and Industrial Property Rights ruled that since the subject matter of the lawsuit was the annulment of the decision of the TPTO, the examination was limited to the review of propriety and a decision should be made by examining the evidence submitted during the opposition phase. Accordingly, the lawsuit was accepted on the grounds that ex officio evidence search could not be made except for the evidence submitted regarding the absolute novelty criterion.

The TPTO appealed the decision. During appeal, the 11th Civil Chamber of the Court of Cassation argued that the Decree Law No. 554 ("Decree Law"), which has since 2017 been replaced with the Industrial Property Law No. 6769 ("IPL"), accepted the condition of absolute novelty, and in that context, an ex officio examination had to be made without being limited to the evidence in the file. The appeals court, therefore, ruled that the decision of the first instance court had to be reversed. Upon the first instance court's resistance, the case was examined by the General Assembly.

In the same month, in the decision of the General Assembly numbered 2021/975 E. and 2023/143 K. and dated 01.03.2023, the process subject to the case proceeded in a similar manner. However, the court of first instance continued to resist the reversal decision rendered by the 11th Civil Chamber of the Court of Cassation, contending that it had been made without an expert examination regarding absolute novelty.

The General Assembly reversed the decisions, underlining that the novelty examination by the TPTO both upon opposition to the registration of the design under the Decree Law and during the application under the "IPL" is an absolute novelty examination. It added that the TPTO was not limited to the documents submitted by the opponent and the novelty of a design was a matter of public order.

On the other hand, since the distinctiveness element does not affect public order, it was stated that ex officio examination was not required. Since it was not possible to analyze the element of novelty and distinctiveness with general knowledge or experience or with the legal knowledge required by the profession of the judge, it was also stated in the decisions that the examination had to be conducted by an expert.

Assessments

In accordance with the IPL and its abolished predecessor the Decree Law, designs must be new and possess a distinctive character to mature into registration.

Novelty means the design has not been made available to the public anywhere in the world before the priority date, if any, or the application date, if not. Under the repealed Decree Law, registration decisions were granted after a formal examination without examining the novelty of the designs. In contrast, Article 64/6 of the IPL explicitly stipulates that the examination of novelty must be conducted ex officio by the TPTO.

Distinctiveness is the difference between the general impression made by a design on an informed user and the general impression made by any prior design filed or publicly displayed before the latter design. To examine distinctiveness, the application must be opposed or an invalidity action must be filed after registration.

In the 2023 Design Review Guidelines updated by the "TPTO", it is stated that the absolute novelty review by experts is conducted on the following sources, using keywords and design images:

• Design databases ("TPTO", EUIPO, WIPO etc.)
• Internet search engines (Google, Yandex, Yahoo etc.)
• Social media accounts (Facebook, Instagram, Pinterest, YouTube, Twitter, etc.)
• Design libraries (Shutterstock, Behance etc.)
• E-commerce platforms,
• Networks, news, blogs,
• Websites of the applicant.

The research being worldwide and absolute testifies to its comprehensiveness. While these sources can only reveal public presentations made on the internet, it is unlikely that experts have the necessary technical background. For example, it is certain that research using keywords is limited to several languages, if not only Turkish. For this reason, designs may be registered even though they are not new, and the registration decisions may be appealed.

Before the IPL came into force, a design would receive protection following an absolute novelty examination and its registration could only be challenged by third-party oppositions at the TPTO or invalidation actions at courts. The caveat is that in cancellation actions brought against final decisions of the TPTO, the court's jurisdiction is limited to the propriety of the proceedings, not the actual merits.

Ten years ago in 2013, The General Assembly ruled in a case that the decision rendered by the TPTO had been made within the framework of the grounds and documents in the file and that the review had been limited to the legality of the decision. The General Assembly held at the time that it would not be appropriate to wait for the ex officio investigation and examination of designs made available to the public anywhere in the world in the annulment proceedings.

In 2023, however, The General Assembly reversed the decision it had rendered in 2013, stating that the novelty criterion had a direct impact on public order, and therefore, should be fulfilled ex officio and at every stage by both the TPTO and the courts and should not be limited to the information and documents in the file. It also pointed out that the research had to be conducted by an expert.

Thanks to the decisions of The General Assembly, the incomplete examination of the first instance courts has been prevented and it is expected that experts will be explicitly assigned to conduct an absolute novelty examination.