Selin OZBEK CITTONE
Attorney at Law / Managing Partner, Dual qualified lawyer (Turkey and England & Wales)
18 January 2017
The scope of protection is expanded with a wider definition of design
The Law extends the scope of protection by providing a generic definition for design. Design means the appearance of the whole or part of a product or the ornamentation on a product, materialising from the entirety of various features such as lines, shape, colour, material, texture or other characteristics. Except for computer programmes, there is no limitation in terms of the function of the product, and industrial designs or hand-made object designs shall both be within the scope of design under the Law. However, as in the previous regulations, in order for a design to enjoy legal protection, the Law requires that such design shall hold a new and distinctive character.
Unregistered designs may be protected under the Law
In case a design is registered according to the provisions of the Law, it shall be protected as a registered design. In case the first release of the design to the public takes place in Turkey (without any registration under the Law), the design has the protection of the Law as an unregistered design. This new regulation aims to protect designs for a limited period (as further explained below) in sectors such as textiles, clothing and packaging which are subject to rapid changes and therefore, producers do not prefer to make a registration application.
The protection term for registered designs remains the same; i.e. 5 years. This term may be renewed for additional period of 5 years up to a total of 25 years. According to article 69(2), the protection term for unregistered designs is 3 years as of the date when such design is first presented to the public.
There are supporting provisions regarding the automotive supply industry
As per Article 59, after three years from the date on which a design has been released to the market, the use of parts which are connected to the appearance of a combined product shall not be considered as a violation of the right of such design, if they are used for purposes of repair in order to provide an original appearance to the combined product and provided that no confusion is created as to the origin of the parts.
Moreover, the use of equivalent parts published by the Ministry of Science, Industry and Technology will not be considered a violation of the right to design for a period of three years from the date on which the design is released to the market. These provisions aim to support the automotive supply industry and give an opportunity to consumers to access these products at a cheaper price. As per Article 56, invisible parts of a combined product are also out of the scope of protection.
Announcement and objection processes are shortened
The Law shortens previous objection term of 6 months. According to article 67, applicants may object to the TP’s decisions within 2 months and third parties may object to design applications within 3 months as of the publication date of registration.
The regulation on the right of employee designs is based on whether there is an employment relationship between the employer and the designer
In the regulations prior to the enactment of the Law, it was stipulated that the employer would be entitled to the rights over the designs developed by the employees within the scope the performance of their duties. Differently from the previous legislation, according to article 73, rights shall belong to the employer over designs developed by employees outside the scope of the employment relationship by using information and tools in the workplace, only if the employer has made a request to that effect.
The provisions of the Law regarding designs of employees shall also be applicable for designs developed as a result of scientific studies and research conducted by students, trainees and instructors in higher education institutions. This provision aims to reveal the design potential in universities and include them in the economy. As per article 74, the employee has the right to claim a fee from the employer regarding the developed design. In case the parties cannot agree on a fee, courts shall resolve the issue. In the event the employer is a higher education institution, the fee shall be at least half of the income obtained by the design.
Rightsholder of any design developed within the framework of agreements other than employment agreements, shall be determined by the agreement of the concerned parties. In light of this provision, the terms of such agreements are of utmost importance and rights arising from the designs developed during the contractual relationship should be regulated clearly and in detail.