The Intellectual Property Review - 1

I. FORMS OF INTELLECTUAL PROPERTY PROTECTION

i. Overview

Turkey is one of the most important jurisdictions for intellectual property (IP) law, litigation and enforcement. It is a transportation hub between Europe and Asia. Most textile companies either have manufacturing facilities in Turkey or outsource the manufacturing of their products to companies in Turkey. Therefore, the protection of IP rights is essential in the country.

In Turkey, IP cases are handled by specific IP courts (IP civil courts and IP criminal courts). These courts are located in most of the large cities, including Istanbul, Ankara and Izmir. Judges in these courts handle solely IP cases, which creates a more predictable litigation and enforcement environment.

Further, Turkish IP law is closely aligned with EU law and international norms. Therefore, Turkey is well positioned for the protection of IP rights both in terms of modern and EU-aligned legislation and in terms of IP litigation. That said, there are many local features, which are explained below.

With regard to the alignment to EU laws, Turkey is a signatory to the following key treaties and conventions, which have all been enacted and are part of local IP law:

a the Paris Convention;

b the Patent Cooperation Treaty;

c the European Patent Convention;

d the Berne Convention;

e the Madrid Protocol;

f the Hague Agreement; and

g the Rome Convention.

Turkey is also a member of the World Trade Organization and is a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights.

ii. Legislation

In Turkey, there are two main laws regulating IP rights: Law No. 6769 of 22 December 2016 on Industrial Property (the Industrial Property Law) and Law No. 5846 of 5 December 1951 on Intellectual and Artistic Works (the Law on Intellectual and Artistic Works).

Patents, utility models, trademarks, industrial designs and geographical indications are mainly protected by the Industrial Property Law. Copyrights are protected under the Law on Intellectual and Artistic Works. According to Turkish law, protection is also possible under general provisions such as those on unfair competition.

Brief descriptions of the commonly recognised IP rights in Turkey are given below. See Sections III and IV for information on how to acquire protection for these rights, the limits of protection and how to enforce these rights.

iii. Trademarks

A trademark is a sign that distinguishes a company’s products or services from those of its competitors. Names, designs, logos, letters and numerals can be registered as a trademark. Trademarks can also include the shape of products or their packaging.

iv. Copyrights

Original works that bear the characteristics and originality of the author are protected by copyright. These works are classified by the Law on Intellectual and Artistic Works as follows:

a science and literature;

b music;

c fine art; and

d cinema.

These categories are numerus clausus, but there are also some subcategories such as computer software, which is listed under ‘science and literature’. Note that, in Turkey, only the author of a work can be its initial owner or, in other words, the individual who is the creator of a copyright in Turkey.

v. Industrial designs

The appearance of the whole or a part of a product can be registered as a design. This includes features such as the product’s lines, colour, texture and shape.

vi. Patents and utility models

A new invention can be protected as a patent or utility model. Both patents and utility models require the invention to be novel and capable of industrial application. The requirements for acquiring a utility model are less stringent than for patents. The registration process for utility models is significantly simpler and faster than for patents. The length of protection is also different for patents and utility models.

vii. Geographical indications

Signs indicating the origin of a product can be registered as geographical indications. Products that have a specific quality, reputation or characteristic attributable to a particular place, area, region or country can have a geographical indication.

II. RECENT DEVELOPMENTS

On 29 December 2022, the Regulation on Electronic Commerce Intermediary Service Providers and Electronic Commerce Service Providers was published in the Official Gazette. This Regulation determines the procedures and principles required to establish an effective and fair competition environment and to ensure the development of electronic commerce. According to the Regulation, a complaint regarding intellectual and industrial property rights violations can be made to the electronic commerce intermediary service providers (ETAHs) via the internal communication system, notary public or KEP (registered email). Subject to the complaint, the ETAH shall remove the product and notify the electronic commerce service provider and the rights holder within 48 hours of receipt of the complaint. This method aims to more efficiently prevent the loss of intellectual and industrial property rights. The Regulation does not prevent complainants from applying to civil and criminal courts in addition to making a complaint to ETAHs.

On 19 August 2022, the Information and Communication Technologies Authority (BTK) issued a press release on .tr network information systems (known as TRABIS). TRABIS operations began on 14 September 2022. Within the scope of the legislation that includes TRABIS, domain name transactions such as applications, renewals, cancellations and transfers can be carried out by registry agencies that have been certified by BTK. Further, the sale of existing .tr domain names, which was previously prohibited, can be carried out three years after TRABIS started operating.

On 4 March 2022, the Turkish Patent and Trademark Office published its Trademark Examination Guide, which has been updated in line with the principles of the likelihood of confusion.

III. OBTAINING PROTECTION

i. Trademarks

All distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, holograms, the three-dimensional form of an item or its packaging and any combination of the above, including sound marks graphically represented, can be registered as a trademark.

Trademark applications should be filed with the Turkish Patent and Trademark Office. Alternatively, as Turkey is a member of the Madrid Protocol, an international application can be filed through the World Intellectual Property Organization by designating Turkey.

It is possible to claim priority based on an earlier application filed in another country, provided that the country where the earlier application is made is a member of the Paris Convention.

The application will first be examined by the Turkish Patent and Trademark Office. The Patent and Trademark Office can reject the application on absolute grounds stipulated in Article 5 of the Industrial Property Law:

a non-compliance with the legal requirements of the Industrial Property Law;

b existence of an identical or indistinguishably similar earlier trademark or trademark application, covering the same or same type of goods or services;

c descriptiveness;

d if the mark has become customary in current and established trade practices;

e if the mark consists of a shape resulting from the nature of the goods or necessary to obtain a technical result or that gives substantial value to the goods;

f deceptiveness;

g no authorisation from the relevant authorities for the use of the mark;

h the mark involves armorial bearings, emblems or hallmarks with historical and cultural value that are of concern to the public and the registration of which is not authorised by the relevant authorities;

i the mark involves religious values or symbols;

j the mark is contrary to public policy and public morals; and

k the mark is composed of or contains a registered geographical indication.

If the Turkish Patent and Trademark Office does not reject the application on absolute grounds, it will authorise the publication of the trademark in the Official Bulletin.

Third parties can oppose the application based on absolute or relative grounds as stipulated in Article 6 of the Industrial Property Law. The time limit for filing an opposition is two months from the publication date in the Official Bulletin.

The relative grounds for refusal are that:

a the application is identical or similar to an earlier trademark registration or application and covers identical or similar goods or services, and there is a likelihood of confusion between them;

b it is an application for an identical or indistinguishably similar trademark by the trademark owner’s agent or representative, to be registered under the agent’s or representative’s own name, without any valid justification or authorisation from the trademark owner;

c there is prior and genuine ownership by a third party of the mark applied for;

d there is a well-known mark under Article 6 bis of the Paris Convention;

e there is an earlier trademark registration or application well known in Turkey;

f the application contains the name, trade name, photograph, copyright or industrial property right of a third party;

g the application is identical or similar to a trademark registration, the protection period for which has ended because of non-renewal, covers identical or similar goods or services, the application is filed within two years of the end of the protection period of the earlier registration, and the earlier registration is put to use within this two-year period; and

h the application is filed in bad faith.

If the application is ex officio rejected or rejected based on a third-party opposition, the applicant will be entitled to object to the rejection within two months of receiving the relevant notification. In this case, the Re-examination and Evaluation Board will examine the objection. The decision of the Re-examination and Evaluation Board is the final decision of the Turkish Patent and Trademark Office. To object to this decision, a court action can be initiated within two months of the notification of the final decision.

If no rejection or opposition occurs, the trademark will be registered after the payment of registration fees. The trademark registration process typically takes approximately seven to eight months, provided there are no objections or opposition. Having said that, protection of a trademark starts as of the first application date and, therefore, during the registration process the trademark is entitled to protection.

The term of protection of a registered trademark is 10 years from the date of filing of the application. Registration is renewable for further periods of 10 years perpetually.

ii. Industrial designs

In Turkey, unregistered designs can be protected under unfair competition and copyright provisions, and are also protected under the Industrial Property Law, provided that the unregistered design is novel, individual and made available to the public for the first time in Turkey.

Unregistered design protection starts from the moment the design is made available to the public in Turkey and lasts for three years.

The application for the registration of an industrial design should be filed with the Turkish Patent and Trademark Office. The industrial design can be registered if it is novel and has an individual character.

A design is deemed novel if it has not been made publicly available anywhere else in the world prior to the application date or the priority date. However, the application can be filed in Turkey up to 12 months after the first disclosure of the design. If the Turkish Patent and Trademark Office finds that the application is appropriate for registration, the industrial design is registered without any further administrative steps. However, third parties may file an opposition to a registration at the Turkish Patent and Trademark Office within three months of the publication date of registration.

Registered design protection starts from the filing date and lasts for five years. It can be renewed for four consecutive periods of five years, for up to 25 years in total.

Some designs may also meet the requirements of copyright protection. In this case, the design in question benefits from protection both as a design and as a work according to copyright legislation (the multi-cumulative protection principle). The ability of design owners to preserve their designs as a work gives them a great advantage. While a design is protected for a maximum of 25 years according to the design legislation, the same design is protected as a work within the scope of copyright legislation as long as the designer is alive, and the protection lasts for 70 years after the designer’s death. While there is a requirement of registration for design protection, registration is not required for works.

iii. Patents

An invention is patentable in Turkey if it is novel, involves an inventive step and is capable of industrial application. The Industrial Property Law stipulates that the following are not considered to be inventions and therefore cannot be registered as a patent:

a discoveries, scientific theories, mathematical methods;

b plans, methods and rules in relation to mental acts, business and game activities;

c computer programs;

d literary and artistic works, scientific works, creations having an aesthetic characteristic; and

e delivery of information.

The Industrial Property Law also stipulates that the following are accepted as inventions but cannot be registered as a patent:

a inventions violating public order or morality;

b plant and animal varieties or species or biological processes for producing or breeding plants and animals, excepting microbiological processes or products of them;

c all treatment methods, including diagnostic and surgical methods on humans or animals;

d simple discovery of one of the elements of the human body, including a gene sequence; and

e human cloning processes, the use of human embryos for industrial or commercial purposes and certain processes for modifying the human genetic code.

The patent claim right belongs to the inventor or the inventor’s successor, and transfer of the right is possible. If the invention has been made by more than one individual, the patent claim right belongs to all of them unless decided otherwise. However, if the invention has been made by two or more individuals independently of each other, the patent claim right belongs to the earlier applicant, on condition of the earlier dated application being published. The first applicant of a patent will be the rightful owner of a patent until proven otherwise.

Patent applications are filed with the Turkish Patent and Trademark Office. Once the Office publishes the patent in the Official Bulletin, third parties can file an opposition within six months of the publication date (post-grant opposition procedure). The grounds of objection can be as follows:

a the patent subject matter does not fulfil the patentability conditions;

b the invention has not been sufficiently disclosed; or

c the patent subject matter exceeds the scope of the application.

The Office shall notify the objection to the patentee. The patentee should present their comments within three months of the date of this notification or make changes to the patent. The objection is evaluated by the Re-examination and Evaluation Board, considering the patentee’s comments and the requests for changes in the patent.

Patent protection starts from the date of the application. The term of protection is 20 years and this term is not renewable.

The rights provided by a patent application or a patent should not be put forward against bona fide third parties unless they are registered in due form.

iv. Copyright

In Turkey, copyrights are mainly protected under the Law on Intellectual and Artistic Works. Registration is not required to establish rights. Cinematographic and musical works and video games (because video games are accepted as cinematographic works by the State Council) must be registered with the General Directorate of Copyrights, part of the Ministry of Culture and Tourism, to exploit these rights and facilitate proof of ownership, but not for the creation of the rights themselves.

There is no need to file any application to gain the copyright protection as it is obtained automatically when the work is created. However, a timestamp is helpful to prove the time of creation. In Turkey, rights holders generally apply to the Ministry of Culture and Tourism for registration of the work, which helps to prove the ownership and creation date of the work. Software, games, books and other intellectual and artistic works can be subject to this optional registration. Certification by a notary public is also common practice in Turkey to prove the creation date of the work.

Copyright protection starts from the creation of the work and lasts for 70 years after the author’s death.

* The content was originally published in The Law Reviews - The Intellectual Property Law Review Twelfth Edition

To read the rest of this article series, please click on The Intellectual Property Review - 2

Tagged with: Özdağıstanli Ekici Attorney Partnership, Hatice Ekici Tağa, Burak Özdağıstanli, Intellectual Property