Turkey - The New IP Code (Law on Industrial Property No in force since 10 January 2017)

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1 Turkey - The New IP Cde (Law n Industrial Prperty N in frce since 10 January 2017) The new IP Landscape in Turkey is determined by the new IP Cde as well as the establishment f midlevel appellate curts. The new IP Cde has a wide-ranging impact: at the legislative level - with the legislatin f IPRs regarding: - establishment/prsecutin - maintenance - enfrcement at the administrative level - with the changes n the Administrative Structure and functin f the Turkish Patent and Trademark Office (T.P.T. Office) (previusly named the Turkish Patent Institute) at the prfessinal level - with new rules regarding the rganizatin and exercise f the prfessin f Patent and Trademark Attrneys, especially frm a disciplinary stand pint. at the judiciary level - in additin, the legislatin n IPRs gives the T.P.T. Office cmpetences which are in nature judicial : such as cancellatin f trademark registratins n grund f nn-use Establishment f Mid-Level Appellate Curts On July 20, 2016 Turkey added a new layer t its curt system the appellate curts, between the firstinstance curts and the Supreme Curt (Curt f Cassatin). The bjective is t reduce the caselad f the Supreme Curt and achieve quicker, cnsistent, higher-quality jurisprudence. Figure 1 shws the present litigatin prcedure incrprating the new appellate curts. Regarding IPRs, the new IP Cde aims: t replace the fllwing repealed Decree-Laws with an act f parliament: - Patents and Utility Mdel - Decree-Law N Designs - Decree-Law N Trademarks - Decree-Law N Gegraphical Indicatins - Decree-Law N. 555 t further harmnizatin 25 September / 32

2 with the EU legislatin fr trademarks: - EU Regulatin N. 2015/2424 n Cmmunity Trademark - EU Directive N. 2015/2436 t apprximate the Laws f the member states relating t trademarks with the EU legislatin fr designs: - Cuncil Regulatin (EC) N. 6/2002 f 12 December 2001 n Cmmunity designs - Directive N. 98/71/EC f the Eurpean Parliament and f the Cuncil f 13 Octber 1998 n the legal prtectin f designs with the Internatinal Cnventins f which Turkey is signatry t simplify and accelerate the prsecutin with a view t shrten the timeline until registratin t bring structural changes regarding instruments and requirements f prtectin, and f invalidity In respect f the IP legislatin, the new IP Cde has been prepared by taking as basis the prvisins f the repealed Decree-Laws. Accrdingly, the cherent and integrated bdy f Industrial Prperty legislatin that Turkey has enjyed with the repealed Decree-Laws since 27 June 1995, finds itself in the new IP Cde with the amendments brught t it. The cntinuity and amendments brught with a view t further harmnizatin dente in fact the intentin f the Cuntry t keep mdernizing and adapting its IP legislatin and institutins/bdies. 25 September / 32

3 Histrical Cntext Frm the presentatin made n 04 Octber 2008 in PTMG Cnference Istanbul 25 September / 32

4 25 September / 32

5 The New IP Cde cnsists f: Intrductry General-Purpse Articles: Article (1) Purpse and Scpe Article (2) Definitins Article (3) Thse wh will benefit frm Prtectin Bk One Trademarks Articles (4) t (32) - 29 Articles Bk Tw Gegraphical Indicatin and Traditinal Prduct Name Articles (33) t (54) - 22 Articles Bk Three Designs Articles (55) t (81) - 27 Articles Bk Fur Patents and Utility Mdel Articles (82) t (145) - 64 Articles Bk Five Cmmn and Other Prvisins Sectin One Cmmn Prvisins (applicable t patents, designs, trademarks and gegraphical names) Articles (146) t (165) - 20 Articles Article (146) Terms and ntificatins Article (147) Mutual representative Article (148) Legal prcedures Article (149) The requests that may be put frward by the wner f rights whse industrial prperty right is infringed Article (150) Indemnificatin Article (151) Nn-realized incme Article (152) Exhaustin f right Article (153) Nn-prsecutable persns Article (154) Actins with regard t nnexistence f infringement and cnditins therefr Article (155) Effect f previus rights Article (156) Cmpetent Curt Article (157) Prescriptin f time limit Article (158) Actins t be filed by licensee and cnditins therefr Article (159) Request fr interim injunctin and nature theref Article (160) Persns authrized t act and ntificatin Article (161) Fees, perids f payment and effects theref Article (162) Executin f decisins Article (163) Prmpt destructin prcedure Article (164) Prvisins t be applied t traditinal prduct names Article (165) Regulatins 25 September / 32

6 Sectin Tw Other Prvisins Articles (166) t (180) - 15 Articles Cncern the internal rganizatin f the Turkish Patent and Trademark Office These prvisins bring structural changes t the rganizatin f the T.P.T. Office by amending the Law N f n the establishment and duties f the Turkish Patent Institute (by its frmer name) such as the setting up f Intellectual Prperty Academy and Educatinal Center f Industrial Prperty Rights (Art. 168) and f the Department f Gegraphical Indicatins. Articles (181) t (182) 2 Articles Cncern the Prfessin f Patent and Trademark Attrneys - Adptin f prfessinal rules f cnduct (specified under an ad hc regulatin). - Adptin f sanctins against breach f prfessinal rules f cnduct. - Establishment f a new disciplinary bard under the aegis f the Office with pwer t sanctin breach f prfessinal rules f cnduct. Articles (183) t (193) - 11 Articles Cncern the internal staff needs, titles and structure f the Office Als cncern the repealed legislatin as well as transitinal prvisins. 25 September / 32

7 Cmmn Prvisins (Cmmnly applicable t Patents/Utility Mdels, Designs, Trademarks and Gegraphical Indicatins) 1/1- Adptin f internatinal exhaustin f rights (Art. 152/1) Natinal Exhaustin was retained under the repealed Decree-Laws N. 551, 554, 556 Hwever, the Supreme Curt rendered decisins accepting the internatinal exhaustin f rights despite the text f the repealed Decree-Law. The New IP Cde remved this cntradictin and intrduced the internatinal exhaustin f rights principle, t replace the existing natinal exhaustin principle. 1/2- Fr trademarks nly, the rights hlder may stp the cmmercial use f prducts which have been altered r deterirated (Art. 152/2) 2- New frm and (electrnic) means f ntificatin prprietary t the Office (Art. 160/6) Accrding t this prvisin, the Office will nt be subject t fllw the rules f electrnic ntificatin as prvided by the Ntificatin Law N f Prmpt Destructin prcedure (Art. 163) Cncerns gds seized and placed under judicial custdy 4/1- N criminal sanctins fr infringement f: - Patents and Utility Mdels - Design Patents - Gegraphical Indicatins The repealed Decree-Laws N. 551 n Patents and N. 554 n Design Patents and N. 555 n Gegraphical Indicatins prvided criminal sanctins which were cancelled by Cnstitutinal Curt decisins n grunds that criminally punishable acts and criminal sanctins cannt be prvided by Decree-Laws but nly by acts f Parliament. 4/2- Criminal Sanctins nly fr trademark infringement (Art. 30) Imprtant t nte that Law N f n Criminal Sanctins regarding trademark infringements having nt been repealed als cntinues t be in frce. 5- Registered IP Rights N Lnger a Valid Defence against Infringement Claims (Art.155/1) The registered trademarks, patents and industrial design registratin rights d nt cnstitute a legitimate defence against an infringement claim put frward by the wner f the earlier IP right. This prvisin will evidently require an intensive clearance search -even in case f a registratin- befre utilizing any IP right. 25 September / 32

8 The case law accrding t the repealed legislatin accepted that trademark and industrial design rights registered with the T.P.T. Office cnstituted a legitimate defence against infringement claims, unless and until the registered right is cancelled and remved frm the register. This case law caused preliminary and permanent injunctin requests t be delayed r rejected until cancellatin f the infringer s trademark r the design right. 6- Earlier clause n benefiting frm mre favurable prvisin remved frm the new IP Cde The fllwing prvisin f Art. 4 f Decree-Laws N. 551 n Patents/Utility Mdels, N. 554 n Design Patents and N. 556 n Trademarks has nt been included in the new IP Cde. This prvisin has apparently been excluded t avid duplicatin with Art. 90 f the Cnstitutin which cncerns the hierarchy f nrms in the sense that the internatinal cnventins verride the natinal laws with respect t the hierarchy f nrms, as they are deemed abve the natinal laws. Pririty f Applicatin f Internatinal Agreements Article 4: Where Internatinal Agreements having entered int frce accrding t the laws f the Republic f Turkey, cntain prvisins which are preferential/mre favurable t thse f this present Decree-Law, the persns referred t in Article 2 may request t benefit frm such preferential/mre favurable prvisins. The abve prvisin wuld have permitted t claim the applicatin f Art. 54/4 + 54/5 f EPC fr filing a patent applicatin regarding secnd medical use in this cuntry whereas, because f the silence f the new IP Cde n the issue, in case such a request is nt favurably received, the nly alternative wuld be t challenge the administrative decisin n this pint thrugh the curt. 7- Suspensive effect f the appeal n first instance r appellate curt decisins. The new Turkish IP Cde prvides under the Chapter "Cmmn Prvisins" in Article 162 that "in curt actins instituted against the decisins f the "Higher Cuncil f Examinatin and Evaluatin" (f the T.P.T. Office) as well as in invalidatin actins, the decisin f the curt shall nt be executable until it becmes finalized". In ther wrds, fr all such cases the appeal shall autmatically have suspensive effect n the first instance r the appellate curt decisin until the date when the case is finalized. This new prvisin intrduces yet anther regime in respect f the Civil Prcedural Law (Art. 367) fr the cases invlving invalidatin and fr the cases instituted against Office actins such as decisins f refusal r Office decisins/actins regarding pst-grant ppsitins in patent and design patent matters. 25 September / 32

9 Turkey Patents I- Structural Changes Repealed Decree-Law N. 551 n Patents and Utility Mdels prvided: a chice between 3 instruments f prtectin shrt term patent f 7 years with State-f-the-Art Search Reprt full term patent f 20 years with State-f-the-Art Search Reprt + Subs. Exam. Utility Mdel f 10 years with ptinal State-f-the-Art Search Reprt with the pssibility f branching ut (t/frm) between the 3 instruments: n pst-grant ppsitin fr patents and Utility Mdel but third parties can file pinins upn the publicatin f State-f-the-Art Search Reprt 1st Level Structural Change - Ablitin f the shrt-term patent f 7 years The chice is nw between 2 instruments - Full term patent f 20 years with mandatry substantive examinatin - Utility Mdel f 10 years with mandatry State-f-the-Art Search Reprt The branching ut (t/frm) is maintained (Art. 104) 2nd Level Structural Change - Intrductin f Past-Grand Oppsitin (fr patents nly) (Sectin III/Art ) 6 mnths frm the publicatin f the decisin t grant Imprtant impact at the Administrative Level Setting up and peratin f the Appeal Bard with the T.P.T. Office 3rd Level Structural Change - Cncerns Utility Mdels New requirement f mandatry State-f-the-Art Search Reprt - criteria f nvelty and industrial applicability (Art. 142/1) maintained unchanged, - n ppsitin fr Utility Mdel (Art. 143/11), - applicant can raise bjectin t the State-f-the-Art Search Reprt with the pssibility t bring amendments, - third parties can file pinins upn the publicatin f the State-f-the-Art Search Reprt Mre explicit definitin f matter excluded frm Utility Mdel prtectin - in additin t thse cited under Art. 82 (2) (nn-patent eligible subject matter) and Art. 82 (3) (nn-patentable subject matter) - chemical and bilgical substances r prcesses r prducts btained by such prcesses (Art. 142/3-a), - pharmaceutical prcess and substances r pharmaceutical prducts btained by such prcesses (Art. 142/3-b), - bitechnlgical inventins (Art. 142/3-c), - prcesses r prducts btained by such prcesses (Art. 142/3-ç), II- N mentin in the new IP Cde f: Secnd medical use patents. The new IP Cde is silent n the subject despite the recent Supreme Curt case law ruling that the secnd medical use inventins are patentable. Hwever, Turkey affrds prtectin t secnd medical use patents validated thrugh the Eurpean Patent Cnventin f which Turkey is signatry. Supplementary Prtectin Certificates (SPC) - N prtectin affrded in Turkey 25 September / 32

10 III- Bitech Patents (Arts 82/3-b-ç & d + 82/5) These prvisins cite the nn-patentable bitechnlgical inventins as utlined in the fllwing cmparative table shwing the related articles f EPC, Rules and the New IP Cde. The new IP Cde harmnizes the Turkish legislatin with the EPC and the Directive 98/44/EC f the Eurpean Parliament and f the Cuncil f 6 July 1998 n the legal prtectin f bitechnlgical inventins. Article 82 cncerning Patentable inventins and exceptins t patentability cites under paragraphs 3/b-c-ç-d and 5 the nn-patentable bitechnlgical inventins s as t mirrr the prvisins f : EPC Article 53/b-c cncerning Exceptins patentability and EPO Guideline Rule 28 (a), (b), (c), (d) cncerning exceptins t patentability, EP shall nt be granted in respect f bitechnlgical inventins, which in particular cncern and Rule 29 cncerning the human bdy and its elements. Accrdingly, what is nt expressly excluded remains patentable. It is t be nted that the mtivatin f the new IP Cde clearly frames bitech areas/subject matter qualifying fr patent prtectin. In fact it reflects bitechnlgical subject matter retained as patent eligible accrding t EPO Enlarged Bard f Appeal decisins. As n definitin f bitechnlgical inventin is prvided in the act this issue will have t be shaped by case law. The Turkish Intellectual Prperty Curt recently ruled that a claimed prbe and methd fr detecting nucleic acids are patentable as lng as the patentability requirement f nvelty and inventive step are met, whereas the curt in the same decisin ruled t the fact that gene sequences are deemed t be nnpatentable. The decisin is still pending befre the Supreme Curt. Cmparative Table f related prvisins f EPC, Rules and the New IP Cde in relatin "Bitechnlgical Inventins" EPC Cde f Industrial Prperty 6769 ARTICLE 82 - Patentable inventins and Article 53 Exceptins t Patentability exceptins t patentability (3) Patent shall nt be granted fr the fllwing inventins: b) Plant r animal varieties r essentially bilgical prcesses fr the prductin f (b) plant r animal varieties r plants r animals, excluding essentially bilgical prcesses micrbilgical prcesses r the prducts Article fr the prductin f plants r Article theref; 53 animals; this prvisin shall nt 82 (5) Micrbilgical prcess mentined in apply t micrbilgical prcesses subparagraph (b) f paragraph three r the prducts theref; means any prcess invlving r perfrmed upn r resulting in micrbilgical material; essentially bilgical prcess means the prductin 25 September / 32

11 Cmparative Table f related prvisins f EPC, Rules and the New IP Cde in relatin "Bitechnlgical Inventins" EPC Cde f Industrial Prperty 6769 f plants r animals cnsisting entirely f natural phenmena such as crssing r selectin. Article 53 (c) methds fr treatment f the human r animal bdy by surgery r therapy and diagnstic methds practised n the human r animal bdy; this prvisin shall nt apply t prducts, in particular substances r cmpsitins, fr use in any f these methds. Article 82 (3) Patent shall nt be granted fr the fllwing inventins: c) All therapeutic methds including diagnstic methds and surgical methds t be applied n human r animal bdy. Rule 28 Exceptins t patentability Eurpean patents shall nt be granted in respect f bitechnlgical inventins which, in particular, cncern the fllwing: Rule (a) prcesses fr clning human 28 beings; (b) prcesses fr mdifying the Rule germ line genetic identity f 28 human beings; Rule (c) uses f human embrys fr 28 industrial r cmmercial purpses; (d) prcesses fr mdifying the genetic identity f animals which are likely t cause them suffering Rule withut any substantial medical 28 benefit t man r animal, and als animals resulting frm such prcesses. Rule 29 The human bdy and its elements Rule 29 Rule 29 (1) The human bdy, at the varius stages f its frmatin and develpment, and the simple discvery f ne f its elements, including the sequence r partial sequence f a gene, cannt cnstitute patentable inventins. (2) An element islated frm the human bdy r therwise prduced by means f a technical prcess, including the sequence r partial sequence f a gene, may cnstitute a patentable inventin, Article 82 (3) Patent shall nt be granted fr the Article 82 Article 82 Article 82 Article 82 - fllwing inventins: d) Prcesses fr clning human beings; prcesses fr mdifying the germ line genetic identity f human beings; uses f human embrys fr industrial r cmmercial purpses; prcesses fr mdifying the genetic identity f animals which are likely t cause them suffering withut any substantial medical benefit t man r animal, and als animals resulting frm such prcesses. (3) Patent shall nt be granted fr the fllwing inventins: ç) The human bdy including the human bdy at the varius stages f its frmatin and develpment and the simple discvery f ne f its elements, including the sequence r partial sequence f a gene. There is n article r clause that crrespnds t Rule 29 Paragraphs (2 & 3). But the mtivatin f Article 83 cmprises exact phrases that cvers the patentable inventins within the cntext f Rule 29 Paragraphs (2 & 3). In Turkish 25 September / 32

12 Cmparative Table f related prvisins f EPC, Rules and the New IP Cde in relatin "Bitechnlgical Inventins" EPC Cde f Industrial Prperty 6769 even if the structure f that element is identical t that f a natural element. Rule 29 (3) The industrial applicatin f a sequence r a partial sequence f a gene must be disclsed in the patent applicatin. - Law, mtivatin f articles cnstitutes an indivisible and integrated part f the Articles f a Cde. Therefre, Rule 29 Paragraphs (2 & 3) find their way, s as t say in referential way, in new Turkish Cde f Industrial Prperty. IV- Enfrcement: Reversal f burden f prf regarding Prcess Patents (Art. 141/2) The new text aims t remve rm fr interpretatin by retaining that: Where the patented prcess results in a new prduct r substance, thse claiming the cntrary in respect f prducts r substances having the same characteristics, shall have t bring evidence theref. Where the prducts r substances are the same as thse btained by the patented prcess the curt has discretinary cmpetence t ask the defendant t bring evidence that said prducts/substances are btained by a prcess which is different t the patented ne. V- Requirement f Use (Art. 130/2) Intrductin f the applicatin date as an alternative date fr putting the patent t use Statutry time perid fr putting the patent t use as amended is: 3 years frm publicatin f the decisin t grant, r 4 years frm applicatin date, whichever is later (newly intrduced), r Discntinuing use withut a justifiable reasn fr an uninterrupted perid f 3 years The time perid fr putting the patent t use may in fact be much lnger than the abve referred 3 r 4 years as Art 130/2 prvides that use as f the date when the cmpulsry license request has been made is t be evidenced. In ther wrds, any use made after the abve deadlines but befre the request f cmpulsry license, will und the negative effects f nn-use [i.e. heal / cure nn-use] after the abve deadlines until the date when the request fr cmpulsry license is made. This increases flexibility in favur f the patentee. As a result f this amendment it becmes pssible - t ffer fr licence a patent applicatin (Art. 128/1) - t request a cmpulsry licence fr a patent applicatin (Art. 130/2) N cancellatin f patent n grunds f nn-use Sle sanctin fr nn-use: cmpulsry licence VI- Filing with the ffice f declaratin and evidence f use is discntinued Under the frmer Decree-Law N. 551 use needed t be reprted t the Office (T.P.T. Office) by filing apprpriate declaratin(s) and dcumentary evidence(s) t such effect. 25 September / 32

13 The new Law N is silent n the issue as it cntains n prvisin fr cntinuing t reprt use t the Office and t file with the Office declaratin and dcumentary evidence(s) regarding use f patents. Hence the prsecutin f filing with the Office f declaratins and ther dcumentary evidence with respect t the use f patents is discntinued. Cnsequently, n actin needs t be taken with the Office fr reprting and evidencing the wrking f patent(s) in this cuntry as frm 10 January This is a welcme develpment as it streamlines the prcedure by seriusly simplifying and reducing the cst f the prsecutin regarding the maintenance and wrking f patents in this cuntry. VII- Cmpulsry licence maintained by intrductin f: New grunds fr requesting cmpulsry licence Fr acts/behaviur resulting in a restrictin r breach f cmpetitin rules (Art. 129/1-e) (Under the repealed Decree-Law N. 551 it was questin f unfair cmpetitin (Art. 93)) Fr exprtatin f pharmaceutical prducts fr addressing public health needs in ther cuntries. This requirement is intrduced n the basis f the Prtcl amending the TRIPs Agreement Additinal Art 31 bis - Vted n 6 December Amendment tk effect n 23 January TURKEY s Acceptance 14 May 2014 Fr being unable t develp a new plant variety withut infringing a patent A new bdy, the Cmpetitin Bard The Cmpetitin Bard is intrduced alngside the curts/judiciary when the grund fr requesting cmpulsry licence is the restrictin r breach f cmpetitin rules. (Art. 129/2) VIII- Adptin f Reinstatement -Restituti in Integrum- (Art. 107/2) IX- Emplyee Inventins fr: This is ne f main areas f interventin f the new IP Cde. This chapter has undergne substantial structural mdificatins with resulting interpretative uncertainties. The new IP Cde prvides in fact 3 tracks/regimes fr Emplyee Inventins. - fr patentable inventins accrding t their being service inventins benefiting the emplyer r free inventins benefiting the inventr, - fr inventins made in High Educatin Bdies (Art. 121) - fr inventins made under prject supprted/financed by Public Bdies (Art. 122) Fr service inventins fr which the Emplyer claims full wnership, the Emplyer is under the bligatin t file the first patent applicatin befre the T.P.T. Office. (Art. 116/1) Under the repealed Decree-Law N. 551, the Emplyer had the right t apply t the T.P.T. Office fr a patent (Art. 26/1) and culd als file a patent applicatin in a freign cuntry. (Art. 27/1) Inventins made in High Educatin Bdies (Universities), including thse under the Ministries f Defence and Interir. (Art. 121) - Ablitin f the s-called prfessrs privilege n the wnership f the inventins they make while perfrming their functins. 25 September / 32

14 Accrding t new IP Cde, all inventins made by scientific staff (including regular (PhD) students as well as interns in the curse f their functins are deemed t belng t the cncerned High Educatin Bdy (University) with the prvis that in reply t the declaratin f inventin (t be) made by the inventr, the cncerned bdy/university makes a frmal request f wnership n the inventin which is tied t the bligatin t file a patent applicatin which in turn if it des nt materialise renders the inventin free t the benefit f the inventr. - Accrding t Art. 121/1 all inventins made in High Educatin Bdies (Universities) including thse under the Ministries f Defence and f Interir are subject t the prvisins n Emplyee Inventins, t the exceptin f the prvisins prvided under special laws r f this present Article which are reserved. - Accrding t Art. 121/5 the prvisins f Articles 115, 116, 118 and 119/4 shall nt be applicable t inventins made in High Educatin Bdies/Universities). Inventins made under prject supprted/financed by public bdies/institutins (Art. 122) New set f prvisins/rules fr such inventins Within ne year frm the declaratin f inventin the inventr is t make, the latter is t infrm the public bdy in writing whether r nt he/she claims wnership f the inventin. In the case f failure f the inventr t timely claim wnership f the inventin, the public bdy may decide t wn the inventin. N mentin f nn-patentable technical imprvements as a result f which emplyee inventins in the new IP Cde are restricted t patentable inventins nly. (Art. 113/1) The repealed Decree-Law N. 551 made a distinctin between patentable inventins and nn-patentable technical imprvements (Art. 16/1+2 Art. 33) within the Cntext f Emplyee Inventins X- Filing in any fficial language becmes pssible (Art. 90/2) The descriptin, claims, abstracts and drawings, if any, can be filed under the fficial language f any cuntry signatry f the Paris Cnventin r TRIPs r the language f any ther cuntry subject t reciprcity. (Under the repealed Decree-Law N. 551 this was limited t nly English, French and German. (Art. 42/4). XI- Mandatry declaratin in the applicatin f genetic resurces and f traditinal knwledge based n genetic resurces (Art. 90/4). This requirement is intrduced n the basis f Turkey s membership f the Cnventin n Bilgical Diversity and f the Cartagena Cnventin n Bisafety. N need t make this declaratin fr patents validated in Turkey thrugh the Eurpean Patent Cnventin. 25 September / 32

15 XII- Intrductin f Farmer exceptin t the prvisin regarding the Scpe f Patent Right in respect f: - The New Plant Varieties The use f prductin material riginating frm such New Plant Varieties is subject t the Law N n Plant Breeder s Rights. (Art. 85/4). - Patented animal breeding material The farmer has the right t use such material in its peratin. Such rights shall be used in cmpliance with the regulatin. (Art. 85/5). XIII- - Cancellatin f an independent claim causes the cancellatin f the dependent claim(s) with the prvis that each dependent claim, n its wn, des nt meet the patentability criteria (Art. 138/4 last sentence): - Accrdingly, the dependent claims meeting the patentability criteria, independently frm each ther, shall survive. - In this regard, it is imprtant t nte that the new IP Cde nes nt prvide fr the pssibility f amending the claims by bringing them tgether s as t vercme their cancellatin. This stance cnfrms t the practice f the curts s far in retaining r rejecting the claims in their entirety. It is regretful that the new IP Cde has refrained t rganize the amendment f claims in the curse f invalidity actins. XIV- Deadline fr requesting the State-f-the-Art Search Reprt shrtened t 12 mnths frm the filing date f the applicatin (Art. 96/1) (Pririty date nt retained) Under the repealed Decree-Law N. 551, this deadline was 15 mnths frm the applicatin date r pririty date (Art. 56/1+2) XV- Pssibility t amend and t cmment n fficial cmmunicatins f the Examiner befre the substantive examinatin reprt is issued is limited t 3 submissins Accrding t this prvisin a single Substantive Examinatin reprt will issue whereas under the earlier practice up t 3 Examinatin reprts were allwed. This prvisin materializes the lngstanding Office practice under the earlier practice limiting t 3 the number f replies and amendments allwed against ffice actins cncerning substantive examinatin reprt(s). XVI- N yearly annuity fee t be paid fr the 2nd annuity. (Art. 101/2) The yearly fees are due t be paid as frm the end f the secnd year frm the date f filing. 25 September / 32

16 Turkey - Industrial Designs I- Extensin f Prtectin t nn-registered Designs (Art. 55/4) The rights derived frm design prtectin can be used fr nn-registered designs t prevent use by third parties f designs, which are identical r similar t nn-registered designs. Term f prtectin 3 years frm the date when the design was first made available t the public in Turkey Cnditin f prtectin first disclsure t be made in Turkey Enfrcement against unauthrized use when - Identity r similarity with the nn-registered design - Unregistered design btained by means f cpying (Art. 59/2) II- Oppsitin Perid Shrtened t 3 mnths (Art. 67/2) Halving the ppsitin perid frm 6 t 3 mnths frm the publicatin f the decisin t grant aims t reduce the time line until the issuance f the registratin certificate t less than a year. III- Intrductin f Ex-Offici Nvelty Examinatin fr Industrial Designs (Art. 64/6/d) The design applicatin will be subject t Ex-ffici Nvelty Examinatin which is t be cnducted within the frmal examinatin phase f the design applicatin. 25 September / 32

17 IV- Descriptin f the Designs becmes ptinal (Art. 61/3) The filing f the descriptin f the designs is n lnger a mandatry requirement fr prsecutin purpses and the infrmatin prvided therein shall nt affect the scpe f prtectin. This is a welcme change as it will have the effect f substantially simplifying the filing and prsecutin requirements f design applicatins withut adversely affecting the scpe f prtectin. 25 September / 32

18 V - Scpe f prtectin explicitly restricted t Visible Parts f a Cmplex Prduct - Invisible Parts explicitly excluded frm prtectin (Art. 56/2-a) Accrding t this prvisin, nly part(s) which are visible under nrmal peratin/use f the cmplex prduct upn which it has been incrprated shall be affrded prtectin prvided such part(s) meet the criteria f nvelty and individual character. This prvisin in fact mirrrs the case law decisins accrding t which n prtectin shall be affrded t invisible parts under nrmal peratin/use f the cmplex prduct. 25 September / 32

19 VI- - The dergatin f 3 years fr asserting the design right n Spare Parts f a Cmplex Prduct used fr repairing purpses - Becmes nt applicable t listed Equivalent Parts which are thereby excluded frm prtectin (Art. 59) Accrding t Art. 59/4, three (3) years after the design has first been made available t the public, the wner f a registered design cannt assert its rights regarding a visible part f a cmplex prduct prvided that the visible part is used fr the purpse f repair and that the visible part is nt deceptive as t the rigin f the prduct (Art. 59/4). The repealed Decree-Law N.554 n Designs cntained a similar prvisin under Art.22. While keeping the abve prvisin the new IP Cde has extended the dergatin (Art. 59/5) by ruling that the perid f three (3) years shall nt be applicable when the prtected spare part design is mentined amng the list f equivalent parts issued by the Ministry f Science, Industry and Technlgy. This new prvisin has the effect t exclude frm prtectin the listed equivalent parts which aim t cver the s-called must match parts. 25 September / 32

20 VII- Ownership - Ablitin f the exceptin benefiting the teaching staff t wn the designs they develp in the exercise f their functin (Art. 73/3) The University will be the wner f such designs develped by the teaching staff in the exercise f their functin, subjecting it T the general rule accrding t which the emplyer shall wn the design develped by the emplyee unless the cntrary derives frm the special/private cntact r the nature f the wrk. (Art. 73/1) Fr the service cntracts the presumptin, under the repealed Decree-Law (Art. 16) accrding t which the design develped will be wned by the designer has been remved. Fr all such designs, the terms f the cntract will determine the wnership. (Art. 73/4) 25 September / 32

21 VIII- Intrductin f Divisinal Applicatin fr an applicatin filed fr multiple designs (Art. 61/9) The T.P.T. Office may request the filing f a divisinal applicatin by keeping the first filing date. - When the designs, t the exceptin f rnamentatins, filed with the applicatin d nt embdy prducts within the same class (Art. 61/7 + 61/9) - When the number f the designs filed with the applicatin exceed the number f designs allwed by the regulatin. (The draft regulatin cnsiders a maximum f 100 designs per applicatin.) 25 September / 32

22 IX- Distinctiveness Amendment f criterin Frm the (date) when made available t the market t the (date) when made available t the public. (Art. 56/4 (b) + 56/5 (b)) 25 September / 32

23 Turkey - Trademarks Extensin f Scpe f prtectin t Clurs, Mtin and Sund Marks (Art.4/1) Clurs and sund marks have been explicitly included in the definitin f signs which may be prtected as a trademark. All signs including designs, clurs, numerals, letters, sund and the shape f gds and their packaging (Art. 4/1) Mre imprtantly, the requirement f capability t be represented graphically and reprduced by printing is remved in view f existing electrnic means, in rder t pave the way fr mtin marks. II- Amendment f trademark registrability requirement (Art.4/1) New frame fr assessing the registrability f nn-cnventinal marks. New requirement: - Capable f being recrded/inscribed n the register - s as t render clearly and unequivcally understandable the bject f prtectin benefiting the trademark hlder The earlier requirement under the repealed Decree-Law capable f being represented graphically and reprduced by printing is remved. The amended requirement cnstitutes the new frame fr assessing the registrability f nncnventinal marks. 25 September / 32

24 III- Registered Gegraphical Indicatins Cited Amng the Abslute Grunds f Refusal (Art. 4/1- i) Ex-ffici refusal at the examinatin phase. by the T.P.T. Office f trademark applicatins cnsisting slely f r identically cmprising the registered gegraphical indicatin n abslute grunds. In fact, this prvisin aims t strengthen the prtectin f Gegraphical Indicatins and Traditinal Prduct Names against ill willed trademark applicants. 25 September / 32

25 IV- Intrductin f Cnsent Letters-New Exceptin t Abslute Grunds fr Refusal (Art. 4/3) The new IP Cde Law intrduces the Letter f Cnsent, by which the wner f an earlier trademark may cnsent t the registratin and the use f an identical r similar trademark, later filed fr the same r similar gds r services. A Letter f Cnsent shuld be ntarized and submitted t the T.P.T. Office either simultaneusly with the filing f the trademark applicatin r upn refusal. 25 September / 32

26 V- Oppsitin Perid f 2 mnths as f Publicatin Date in the Official Trademark Bulletin (Art. 18/1) The ppsitin perid - which used t be 3 mnths - has been shrtened t 2 mnths, still calculated as f the publicatin date f the applicatin in the fficial Trademark Bulletin. This prvisin aims t shrten the time line fr registratin. VI- Bad Faith Cited as an Explicit Grund fr Oppsitin and Invalidity (Art. 6/9 + 25/1) The act explicitly cites bad faith amng the relative grunds fr ppsitin (Art. 6/9) and amng invalidatin grunds (Art. 25/1). In the practice under the repealed Decree-Law the bad faith issue was cnsidered by the T.P.T. Office in ppsitin matters and by the Curts in invalidity actins. With the new IP Cde, the practice and act becme harmnized. VII- Preferential Treatment f Madrid Prtcl Trademark Applicatins as t the Filing Time (Art. 14/1) The trademark applicatins filed via the Madrid Prtcl system and designating Turkey will be deemed t have been filed at the first hur and minute f the day received by the ffice, thereby getting ahead f any natinal trademark being filedn the same day. VIII- Cunter Claims f Nn-use by the Applicant During Oppsitin (Art. 19/2) The new IP Cde enables the applicant f the ppsed trademark t require, frm the ppnent, evidence f the use f the trademark n which the ppsitin is based, if the ppnent s trademark has cmpleted the 5 years f grace perid fr nn-use. The examinatin f the ppsitin will be limited t the gds/services fr which the ppnent has evidenced use. Failure f the ppnent t evidence use will result in rejectin f the ppsitin. IX- Mediatin During Oppsitin Prceedings (Art. 19/4) The Institute, in an effrt t encurage mediatin, will be entitled t invite parties t settle the ppsitins thrugh mediatin as per the Mediatin Law n Legal Cnflicts N X- Institutin f administrative cancellatin prceedings thrugh T.P.T. Office (applicable after 10 January 2024) (Art. 26/1) The T.P.T. Office will implement administrative cancellatin prceedings after a transitin perid f 7 years frm the entry int frce f the new IP Cde, that is after 10 January (Art. 192/1) Until then, the cancellatin actins will have t be instituted befre the Curts. (Transitinal Art. 4/1) The cancellatin request can be made t the T.P.T. Office n the fllwing grunds. (1) nn-use (2) becming generic (n the prducts / services n which the trademark is used), (3) deceiving public (as t the characteristics, quality r gegraphical surce) (4) use f guarantee trademark cntrary t the technical regulatin. 25 September / 32

27 XI- Fair Use Clause Bradened (Art. 7/5) The fair use definitin has been bradened whereby the rights hlder shall nt be able t prhibit a third party frm using a trademark, in the nrmal curse f trade, fr the purpse f identifying r referring t gds r services, where the use f that trademark is necessary t indicate the intended purpse f thse gds r services, particularly in respect f accessries, spare parts r equivalent parts. XII- Partial Renewal f Trademarks fr Limited Classes/Gds (Art. 23/3) The new IP Cde permits partial renewal f a trademark fr limited classes r specificatin f gds/services. The Implementing Regulatins; will determine the new practice. A simplified prcedure is expected t permit the trademark wner t pt fr the classes and/r gds/services t be renewed. Under the earlier practice, there is nly ne ptin, which is the submissin f an independent request fr limitatin f the trademark t be effected befre the renewal. XIII- Extensin f Acts f Trademark Infringement with the aim t strengthen prtectin (Art. 7/3 + 8/1) Unlike repealed Decree-Law, the new IP Cde specifically prvides that the use f a trademark may be prhibited when it is used: as an essential part f a cmpany/establishment name (Art. 7/3-e) unlawfully in cmparative advertisements (Art. 7/3-f) in the internet envirnment as a dmain name, keywrd, directing cde r in similar ways (Art. 7/3-d) s as t give the impressin f generic use, under printed r electrnic envirnment, in dictinaries, encyclpaedia r ther wrks f reference. (Art. 8/1) XIV- Cunter Claims f Nn-Use by the Defendant in Cancellatin and Infringement Actins (Art. 25/7 & 29/2) The new IP Cde rules that during the examinatin f a cancellatin actin instituted n the basis f similarity and risk f cnfusin between the trademarks, the nn-use f the trademark n which the cancellatin actin is based can be asserted as a cunter-claim by the defendant in relatin the relative grunds f refusal as f Art. 6/1 (Art. 25/7) The nn-use cunter-claim can be put frward in the trademark infringement actins by the defendant (Art. 29/2) The newly instituted cunter-claims prduces effect nly fr defensive purpses but des nt lead t the cancellatin f the plaintiff s nn-used trademark. XV- Differentiatin between grunds f Invalidity vs. Cancellatin (Art. 25/1 + 26/1) The repealed Decree Law refers nly t the grunds f invalidity with retractive effect whereas the current established case law makes a distinctin between grunds fr cancellatin and invalidity. The new IP Cde, in line with current practice and case law, differentiates between the abslute and relative grunds f refusal with reference t Art as grunds f invalidity while anther set f grunds, such as genericness, deceptiveness, failure t use guarantee marks/cllective marks accrding t the technical regulatins and nn-use, are stated t be grunds f cancellatin. 25 September / 32

28 XVI- Explicit rule n Acquiescence (Art. 25/6) The new IP Cde explicitly rules that where the trademark wner has knwn r shuld have knwn abut the use f a later date infringing trademark but did nt take actin against such use fr mre than 5 uninterrupted years, the trademark wner will nt be able t claim the cancellatin f the later date infringing trademark n grund f its prir trademark registratin, unless the later date trademark is registered in bad faith. 25 September / 32

29 Turkey - Gegraphical Indicatins & Traditinal Prduct Names Gegraphical Indicatins & Traditinal Prduct Name I- Structural Change Institutin f a new ad hc prtectin instrument under Traditinal Prduct Names (Art. 34/2 + 34/3) The new IP Cde Prvides 3 Instruments f prtectin under Gegraphical Names - Designatins f rigin (Art. 34/1 (a)) - Appellatins f rigin (Art. 34/1 (b)) - Traditinal Prduct Names (Art. 34/3) Traditinal prduct names have been newly included in the definitin f Gegraphical Names. (Art. 34/3) 25 September / 32

30 A traditinal prduct name is defined as a prduct prven t be traditinally used in the market t identify the cncerned gd fr at least 30 years prvided it is made f traditinal raw material r ingredients and prvided it is prduced by using traditinal mde f prductin r prcessing r traditinal cmpsitins. II- - Tightening f disciplinary cntrls Mandatry annual surveying and reprting n the use f Gegraphical Indicatin and Traditinal Prduct Names (Art. 49/1+49/3) The submissin f the survey reprt shall be effected annually as frm the publicatin date f the registratin in the fficial Bulletin. This term was every 10 years under the repealed Decree-Law. 25 September / 32

31 - Mandatry annual disciplinary surveying and reprting shall cver the prductin, ffer fr sale r distributin and use in the market (Art.49/1) The cntrls shall be carried ut by the cntrl authrity indicated in the applicatin the cmpetence f which is t be apprved by the T.P.T. Office. The cntrl authrity and its remit can nly be changed with the permissin f the T.P.T. Office. Cntrl reprts shall be submitted t the T.P.T. Office annually as f the date f publicatin f the registratin in the Bulletin. Hwever, if there is a cmplaint, the T.P.T. Office may request t receive the cntrl reprts sner. The Gegraphical Indicatin registrant may request that the surveying and reprting expenses be met by thse wh have been surveyed. (Art. 49/5) III- - The New Marking requirement instituted fr infrmatin n the regulatry functin f T.P.T. Office - Mandatry use f the T.P.T. Office Emblem/Sign (Art. 46/2 + 46/3) The use f the emblem/sign, t be adpted by the T.P.T. Office is mandatry n the prduct and/r its packaging. The T.P.T. Office emblem/sign is t be used in cnjunctin with the Gegraphical Indicatin and Traditinal Prduct Name. IV- Oppsitin perid shrtened t 3 mnths (Art. 40/2) Halving the ppsitin perid term frm 6 mnths t 3 mnths frm the publicatin f the applicatin aims t reduce the time-line fr registratin. V- - Simplificatin f the publicatin regime - Applicatin published in the Official Bulletin f T.P.T. Office (Art. 38/5) This is a welcme change as it simplifies and streamlines the labrius and expensive publicatin regime under the repealed Decree-Law (Art. 9/3) accrding t which the applicatin is published in the Official Gazette where texts f legislatin are published as well as in lcal newspaper(s) and with ntices published in newspapers with natinwide cverage. VI/1- - Prtectin f registered Gegraphical Indicatin and Traditinal Prduct Name strengthened in relatin t trademarks Art. 5/1(i) cncerning the abslute grunds fr refusal f trademark applicatins cites amng such grunds the signs which cnsist f r which include a registered Gegraphical Indicatin. Accrding t this prvisin a sign cntaining, even as a secndary element, a registered gegraphical indicatin shall be ex-ffici refused fr registratin as a trademark. 25 September / 32

32 VI/2- - Prtectin ensured fr prir trademark registrants r users in gd faith against later gegraphical indicatin registrants/applicants Gegraphical Indicatin Trademark Relatin (Art. 48) Where a trademark identical r similar t a gegraphical indicatin, has been registered in gd faith prir t the gegraphical indicatin r where the right t use it has been btained in gd faith, the rights affrded t the gegraphical indicatin registrant cannt be asserted against said prir trademark registrant r use made f it in gd faith. (Art. 48/2) Upn the ppsitin f the prir trademark registrant and als by taking int accunt the reputatin, ntriety and usage perid f the prir registered trademark; the registratin f a gegraphical indicatin r Traditinal Prduct Name which is identical r clsely similar t it will nt be allwed if there is a risk f harming the existence f the prir trademark registratin r may be misleading as t the rigin theref. (Art. 48/3) M. N. Aydın Deriş President f Bard/Yönetim Kurulu Başkanı Deriş Patents and Trademarks Agency A.Ş. FICPI Member Turkey [End f dcument] 25 September / 32