Turkey: The New Turkish Industrial Property (IP) Law No. 6769

As of 10 January 2017, the New Turkish Industrial Property (IP) Law No.6769 has entered into force, combining trademarks, patents, utility models, designs, geographical signs, traditional product names, registration, post-registration transactions, legal and penal sanctions for violation and all other rules of these in a single piece of legislation consisting of 193 articles and six provisional articles, divided into five chapters.

Although the new law has abolished the IP-related decree-laws, according to provisional Article 1 of the law, the decree-laws will apply to applications filed before January 10 2017.

The Industrial Property Law changed the name of the Turkish Patent Institute as "Turkish Patent and Trademark Office" (TPTO) and the short name of the authority was defined as "Turkish Patent".

Main Notable Changes Brought to the Law

Trademark Changes

• Scope of definition of trademarks broadened to encompass sounds, colors, packaging and product shape by eliminating the former graphical representation requirement. The Law clearly recognizes sounds and colors as a registrable sign,

• Use of Letters of consent and coexistence agreements are allowed to overcome ex officio refusals of identical or confusingly similar trademark applications protecting the same or similar goods or services provided that such notarized documents of the owner of senior trademarks are submitted to the TPTO,

• Bad-faith listed among absolute grounds for refusal and it can be directed in any
  oppositions/appeals before the TPTO and invalidation actions before the IP Courts,

• An opponent should prove genuine use of a trademark which forms the basis of an opposition if the non-use grace period (5 years) has expired and if requested by the applicant; such requests are also valid for a plaintiff's defense in infringement proceedings.

This change aims: to encourage the use of registered trademarks in the Turkish market, to prevent applicants from filing and to register their marks for goods and services that are not intended to be used and to stop misusing the opposition mechanism,

• Opposition period and response period to ex officio refusals has been shortened to two months (which was previously three months) following its publication date. Although this creates a more effective and prompt process for the registration of trademarks, right holders must note this important shift,

• The new Law regulates cancellation of trademarks by the Turkish Patent Authority upon the request of third parties whereas Turkish courts remain as the venue for the nullity requests. Administrative procedure for the cancellation of registered trademarks at the TPTO, in parallel with the EU regulation, will be effective in 2024,

• National Exhaustion principle has been replaced with International Exhaustion, i.e., after the first sale in Turkey, products can circulate freely on the Turkish market regardless of where it originates and without the need to obtain permission from the rights holder. Rights holders could not prevent parallel imports of related products, provided that they are original and have not been altered or damaged since they entered the market,

• New examination rule on trademark applications designating Turkey under the Madrid Protocol; preventing Turkey extensions from being rejected based on the existence of a national trademark which was filed after the international trademark's application or priority date,

• Renewing trademarks only for requested classes (of all registered classes) was not available while the Law entitles registrants to partially renew their trademarks for some of the registered goods or services,

• The law accepts "five-year period" as the timeframe for the principle of loss of rights by remaining silent and excludes trademarks filed in bad faith from its scope. The five-year term for filing an invalidation action is also regulated under a separate provision,

• Existence of goods/services in the same and/or different classes does not constitute presumption of similarity/differentness of them,

• The Law orders proving the use of the lapsed trademarks within the related additional two years in order for their protection against latter trademark applications.

Design Changes

• One of the major amendments to the design rights regulated is that the "Industrial design" title renamed to "design" in order to broaden the scope of protection. Thus, a design may be subject to protection regardless of the industrial character of it,

• Registration process has been shortened to 3 months (from 6 months),

• Novelty search to be carried out for each design application at the TPTO,
• Among the other rejection reasons, pursuant to the Law design registration applications which are not compatible with the definition of design or product; or which are against the public order and public morality; or not novel shall also be rejected by the Turkish Patent Authority,

• Design descriptions are no longer required and scope of protection will not be effected by such description if it is filed,

• No official fees for opposition proceedings against a published design application at the TPTO,

• The new law provides for the protection of unregistered designs for three years after they have become publicly available in line with Article 11 of the EU Community Designs Regulation,

• Only visible parts of a complex product shall be protected provided that they meet novelty and individual character criteria (in accordance with EU regulations),

• Some exceptions to component parts of a complex product eligible for three years' protection for repair purposes by the Ministry of Science, Industry and Technology,
• Professors' privilege removed: right to register a design crafted by scientific staff while at work deemed to belong to universities; thereby entitling scientific staff to claim for at least half of the income deriving from such design commercialization,

• Only civil proceedings are available for designs.

Patent & Utility Model Changes

• Patent-without substantive examination system which provided protection of 7 years has been abolished,

• Utility model applications are subject to novelty search and applicants can file amendments during the registration proceedings; no substantial examination,

• Third parties are allowed to file oppositions within the 6-month period after a patent has been granted (post-grant opposition system),

• The due date of annuity payments has been changed as the third anniversary of the application date, while it may also be paid with fine within six months following the due date. Further processing is available in the case of non-payment in the grace period; it is 2 months as of the notification date of the TPTO,

• Obligation to submit evidence of use to the TPTO removed while "use requirement" remained in force in case a third party demands a compulsory license,

• The TPTO has recently been accepted as an international search and examination Authority by WIPO,

• Only civil proceedings are available for patents & utility models.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.