TURKEY’S NEW IP CODE

The new Industrial Property Code (’’the IP Code’’) with the number 6769 entered into force from January 10, 2017, merging various IP-related decree-laws into a single code.

As a result, the Decree-Law Nr. 551 pertaining to the Protection of Patent Rights, Decree-Law Nr. 554 Pertaining to the Protection of Industrial Designs, the Decree-Law Nr. 555 on the Protection of Geographical Indications and the Decree-Law Nr. 556 pertaining to the Protection of Trademarks, which were regulating the registration and protection of patents, industrial designs, geographical indications and trademarks before the entry into force of the IP Code, were abolished.

At the beginning of 1990s, Turkey was in the process of becoming part of the EU Customs Union and one of its obligations was to adapt its domestic IP Code to comply with EU regulations. In order to achieve this, Turkey rapidly enacted IP-related decree-laws in 1995. Decree-laws were preferred since they require less procedure and can be enacted faster, while having the force of law. It was expected that they would be transformed into laws when Turkey became a part of the Customs Union; however, they have remained in force as decree-laws so far.
The IP Code shortens and simplifies the registration processes for trademarks, patents and designs compared to the previous Decree-Laws.

The IP Code consists of five chapters, 193 articles and six provisional articles. Book 1 of the IP Code regulates trademarks, Book 2 regulates geographical indications, Book 3 regulates designs, Book 4 regulates patents and utility models, and Book 5 regulates common provisions.

The protection provided by the IP Code shall be available to Turkish citizens, to natural and legal persons domiciled or having industrial or commercial establishments within the territory of the Republic of Turkey, to persons having application rights deriving from the Paris Convention or the Agreement Establishing the World Trade Organization and the persons who are nationals of states thar accord legal and de facto protection to nationals of the Turkish Republic in accordance with the principle of reciprocity.
Article 188 of the IP Code changed the name of the Turkish Patent Institute to the Turkish Patent and Trademark Office (TPTO)

The IP Code changed the name of the Turkish Patent Institute as ‘’Turkish Patent and Trademark Authority’’ shortly called as ‘’Turkish Patent’’. ;
It simplifies proceedings; and adopts a more sophisticated system for protection and enforcement of industrial property rights.

he new IP Code unites trademarks, designs, patents, utility models and geographical indications. According to the general preamble of the IP Code, it aims to comply with recent development in EU IP law, to bypass the annulment decisions of the Constitutional Court; and to make the current legislations clearer, more understandable and more systematic.

Turkey will have a stronger legal environment to combat against counter editing, as the enforceability of the legal sanctions will be more effective. Prosecution of trademarks and designs will be quicker. For instance opposition period for trademarks is shortened to two months from three months and for designs to three months from six months.

The competent body is changed from the courts to the Turkish Patent and Trademark Office for non-use actions. The effective date of this provision, however, is postponed for seven years to enable the authorities to prepare for such a major change. So, until then, Turkish courts will remain as the competent body to deal with non-use annulment actions.

In terms of protection periods, the IP Code mainly stipulates the same protection periods stated under the previous Decree-Laws.

Trademarks

Even though the IP Code abolished Decree-Law Nr. 556 along with other IP-related decree-laws, according to the provisional Article 1 of the IP Code, the provisions of Decree-Law Nr. 556 will be applied to trademark applications filed before the enforcement of the IP Code –which are, applications filed before January 10, 2017.
Among other reforms, the trademark chapter includes changes, which achieve greater compliance with the relevant EU directives. The major changes relate to the trademarks are as follows: The graphical representation criteria for signs to be registered as a trademark has changed to ‘’signs capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’’. So the terminology has been aligned to that of the EU Trade Mark Directive.

- The co-existence principle has been introduced into Turkish Trademark Law. Accordingly, co-existence agreements and letters of consent will be accepted in overcoming senior identical or indistinguishably similar trade marks from being an absolute ground of refusal by the Turkish Patent and Trade Mark Office ex-officio.
Parallel to the EU regulation, annulment of the trademarks by the TP shall enter into force seven years after the date of the publication of the IP Code. Furthermore, trademark applications will not be rejected by the TP if a notarized consent letter, which indicates the express consent of the previous trademark owner to the submitted registration of application.

Consent letters and co-existence agreements for trademarks will be enforceable, thus the principle of uniqueness for trademarks will no longer prevail. Non-use defense in trademark opposition and enforcement proceedings will be available.

- The new legislation also introduces new prison terms and fines for those convicted of marketing counterfeit goods. Prison terms for those who infringe a trademark by producing or selling fake goods or services will vary from one to three years.
- The opposition term has been shortened from 3 months to 2 months. During the opposition proceedings before the TPI, opponents have to prove genuine use or provide justified reasons for non-use of their trade marks that are the basis for opposition and registered at least for duration of five years, if requested by the applicant. The opposition shall be rejected if such use or justified reason for non-use cannot be proven. This request can also be used as a defence against infringement actions.
- The term “Bad faith” has been added into the Code as a separate ground for opposition and annulment.

- Signs that contain geographical indications cannot be registered as a trademark.

- The annulment actions due to non-use will be dealt by TPTO. However, the enforcement date of this provision has been postponed for 7 years with an additional provision. So until 2023, the annulment actions shall be filed before the IP Courts.

- The new IP Code entered into force on January 10, 2017 except some of the provisions of which the enforcement has been delayed, for the trademark applications which were filed before the enforcement date of the new IP Code, the former legislation, the Decree-Laws pertaining to the protection of Trade Marks, will still apply until their registration process will be completed.

Designs

The design chapter includes changes, which seeks to achieve greater compliance with the relevant directives of European Union. The major changes relate to the designs are as follows:

- The name of the related chapter has been changed from ‘’Industrial Designs’’ to ‘’Designs’’.

- All designs shall be protected, regardless of being industrial or not.

- Unseen parts/devices (e.g. parts of an engine) cannot be registered as designs. - Novelty examination has been introduced for design applications. TPTO shall conduct this examination ex-officio and shall decide to publish the application or not.

- The criterion for distinctiveness has been changed to ‘’difference’’ from ‘’significant difference’’.

- The opposition term has been shortened to 3 months from 6 months.

- Opposition grounds have been broadened. The ‘’bad faith’’ argument and ‘’unauthorized use of an IP right’’ have also been added as opposition grounds.

The new IP Code entered into force on January 10, 2017 except some of the provisions of which
the enforcement has been delayed, for the design applications which were filed before the enforcement date of the new IP Code, the former legislation, namely the Decree-Laws pertaining to the protection of Industrial Designs will still apply until their registration process will be completed.

The Turkish Patent has published a draft regulation on the implementation of the new IP Code on January 4, 2017 for public review however it is not clear when the new regulation will be adopted. Until the new regulations come into force, the enforcement of the existing provisions that are not contrary to the IP Code shall continue to take effect.

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