Selin OZBEK CITTONE
Attorney at Law / Managing Partner, Dual qualified lawyer (Turkey and England & Wales)
17 January 2017
Turkey’s new Industrial Property Law (the “New Law”) has entered into force on January 10, 2017. The New Law reconciles all rules regarding the protection of trademarks, designs, patents and utility models, geographical indications and traditional product names, which were previously regulated under separate pieces of legislation.
The New Law, drafted in line with international agreements and EU legislations, aims to ensure an effective and modern system for industrial property protection, with a view to enhancing the technological, economical and social development of the country.
Trademarks: Trademarks eligible for registration is no longer limited to signs that can be graphically represented. Trademarks in any form, including sound and motion trademarks, may now be registered in Turkey, as long as they are distinguishable.
Joint ownership of trademarks was previously not permitted. A trademark may now be registered in the name of a second person/entity, with the consent of the existing registered owner.
The New Law entitles the Turkish Patent and Trademark Office to revoke trademarks in certain cases. If a trademark is not used for a period of 5 years following its registration without any justifiable cause, or if the trademark becomes a common name for the relevant goods or services as a result of its owner not taking necessary precautions, such trademarks shall be revoked. The Turkish Patent and Trademark Office’s authority to revoke trademarks will become effective on January 10, 2024 and until such date, only courts can rule for revocation.
The protection period for registered trademarks remains 10 years, with an option to renew for additional 10-year terms.
Designs: The scope of designs eligible for registration is also widened with the New Law and no longer limited to industrial designs. Any design (except for computer software) maybe registered as long as it is new and distinguishable.
The protection period for registered designs is 5 years, with an option to renew for additional 5-year terms, up to a maximum of 25 years.
The New Law also provides protection for unregistered designs for a period of 3 years as of the dates they are first introduced to the public. This new rule provides protection for designs in fast changing industries such as textile, fashion and packaging, in which producers do not usually opt for official registration.
Under the New Law, use of spare parts (for repair purposes) in a combined product, will not be deemed an infringement after the expiry of the initial three-year protection period of such part’s design registration.
Geographical Indications and Traditional Product Names: Traditional product names were not previously regulated and therefore did not enjoy any protection. For the purposes of supporting local products, it is now possible for producer groups, public entities, professional groups and associations to register traditional products. An individual application for registration may only be made, if it is proven that there is only a single producer of the concerned product.
Under the New Law, geographical indications and traditional product names are required to be used along with an emblem issued by the Turkish Patent and Trademark Office. This requirement will come into force on January 10, 2018.
Patents and Utility Models: The New Law abolishes the option to register patents without an examination process and now all patent applications are subject to examination. Likewise, the issuance of a research report is required for all utility model applications.
Another new provision is third parties’ right to challenge the patents within a period of 6 months of their issuance. This aims to reduce lawsuits by solving such disputes before the Turkish Patent and Trademark Office.
The protection period is 20 years for patents and 10 years for utility models, which are not renewable.
Common Terms Applicable for all Types of Industrial Property
Protection for Foreign Persons and Entities: The New Law provides protection for (i) persons/entities entitled to make applications under the Paris Convention and the Agreement for the Establishment of the World Trade Organisation and for (ii) residents of foreign countries with which Turkey has legal or de facto reciprocity; as well as Turkish citizens and entities established in Turkey.
Shorter Registration Periods: The New Law significantly shortens and simplifies application and registration processes and provides a more cost efficient approach.
Criminal Liability: The New Law introduces a wider scope of criminal liability as well as higher penalties regarding infringement of industrial property rights, especially trademarks, compared to the previous legislation. Under the New Law, in addition to producers and sellers of infringing products, importers, exporters and persons possessing such products for commercial purposes will also be liable.
Turkish Patent and Trademark Office: The name of the Turkish Patent Institute has been changed as Turkish Patent and Trademark Office. There are certain structural adjustments introduced to meet its heavy workload and to ensure the application of an expedited registration process.
Overall, we believe the enactment of the New Law will ensure an expedited and more secure system for foreign investors in terms of industrial property protection. The secondary regulation to provide mainly for further technical details of application proceedings is also expected to be enacted soon.