The New Industrial Property Law, Newsletter 2017/1, dated January 17, 2017
The Industrial Property Law No. 6769 (the “IP Law”) was promulgated in the Official Gazette Dated January 10, 2017 with No. 29944.
The IP Law has replaced the over-twenty years old Decree Laws Nos. 551, 554, 555 and 556, though applications made at the time the Decree Laws were in force shall be resolved as per the provisions of the Decree Laws. By the introduction of the IP Law, protection measures for Trademarks, Patents, Geographical Indications and Industrial Designs are unified with the EU IP regulations and common provisions of the Decree Laws were consolidated, in a way to form clearer, explicit and systematic regulation standard. The name of the Turkish Patent Institute has been changed to Turkish Patent and Trademark Authority and the term of Industrial Designs to Designs.
Major changes related to Trademarks and Patents are summarised below.
Trademarks
- Aligning the EU Trademark Directive, the graphical representation criteria has been 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”.
- The IP Law recognises “co-existence principle”. Accordingly, co-existence agreements and letters of consent will be accepted in relation to identical or indistinguishably similar trademarks from being an absolute and ex-officio ground of refusal by the Turkish Patent and Trademark Authority.
- During the opposition proceedings before the Turkish Patent and Trademark Authority, opponents have to prove genuine use or provide justified reasons for non-use of their trademarks that are the basis for opposition and registered at least for a duration of five years, if requested by the applicant. The opposition shall be rejected if such use or a justified reason for non-use cannot be proven. Relevant request constitutes a defence in an infringement action.
- The opposition term has been shortened to two months from three months.
- The protection of well-known trademarks in the meaning of Paris Convention has been reinstated as a relative opposition and invalidation ground.
- The bad faith is set forth as a separate opposition and invalidation ground.
- Signs that contain geographical indications cannot be registered as a trademark.
- The terminology for distinctiveness criteria has been changed to comply with the EU trademark legislation.
- The cancellation actions due to non-use will be dealt by the Turkish Patent and Trademark Authority, rather than the IP Courts, as was the case at the time of Decree Laws. However, the enforcement date of this provision has been postponed for seven years with an enforceability provision and until 2024, the cancellation actions need to be filed before the IP Courts.
- as of January 1, 2019 employees of private sector employers with 5 to 9 employees
Patents
- A post-grant opposition system has been introduced in line with Article 101 of the European Patent Convention. With the introduction of this system, patent owners shall be entitled to amend the patent during the opposition phase, after the first grant decision.
- The Courts cannot rule upon premature invalidity actions – filed after the first grant decision while the opposition is ongoing before the Turkish Patent and Trademark Authority – until the opposition before the Turkish Patent and Trademark Authority is concluded. However, this regulation applies only to national patent applications. As regards to European patents, third parties will be allowed to file invalidation actions before national courts while the European Patent Organisation is dealing with issues of patentability.
- The vague provisions of the Decree Law on prior user rights, use/work requirement of a patent and service invention have been improved.
- All criminal penalties in case of patent infringement have been removed.
- The grounds for compulsory licensing have been broadened. In particular, the IP Law introduces the provision that compulsory licensing can be demanded even in case the patent is used but “the use is not sufficient to cover the needs of the national market”.