In this section we find generally accepted answers to frequently asked questions. These answers, carries general information purposes only and aims to give an idea about your problem. However, the answer in this section is not a legal opinion or advice.
Here are the questions and answers for all kinds of copyright and enjoyment of our rights office. Copies can be obtained from this site for personal use; except as expressly authorized but not fully or partially quoted, reproduced or published elsewhere.
Published on 01 October 2017
A trademark, in the simplest description, is a combination of all kinds of signs capable of distinguishing the goods or services of an enterprise (real or legal person) from the goods or services of another enterprise. One of the functions of a trademark is to indicate origin. In other words, a trademark being used on certain goods or services informs the consumers of the supplier of these goods or services.
With such function, a trademark is a commercial enterprise’s first message addressed to the consumers and thereby one of its most important assets.
Yes, although the terms trademark and patent are often confused and being used interchangeably, these two terms indicate two different industrial property rights having utterly different functions. Whereas a Trademark, is a sign distinguishing the goods or services of an enterprise (real or legal person) from the goods or services of another enterprise; a Patent protects inventions that surpass the state-of-the-art and have industrial applicability. Both trademarks and patents are registered before Turkish Patent and Trademark Office (“TürkPatent”) pursuant to their applicable legislation.
Hence, the use of the wording “to patent a name” is a terminological error frequently made and the correct wording will be “to register a trademark”.
There is not a general restriction for the signs that may function as trademarks. According to the Industrial Property Law No. 6769, provided that it is capable to distinguish certain goods or services, any kind of signs particularly words including personal names, designs, letters, numerals, colours, sounds, shape of the goods or of their packaging capable of being represented graphically or similarly described, published and reproduced by printing can be chosen and registered as trademarks.
The most important condition here is whether the sign desired to be used as a trademark can fulfill the function of a trademark. In other words, whether it is capable of distinguishing the goods and services of an enterprise from the goods and services of another.
While the signs selected as trademarks are mostly figurative components such as words and/or logos; there is no formal limitation in relation to what sign can be registered as a trademark provided that such sign is distinctive.
Words and logos primarily come to mind as trademarks because these are the most frequently encountered types of trademarks. However, it is seen from both the applicable provisions and practice that the signs that can be selected as trademarks are not limited to those. For instance, NOKIA’s ring tone is protected as a trademark, as this ring tone is identified with NOKIA branded mobile phones, therefore is capable of distinguishing these mobile phones from the phones supplied by different companies. Similarly, product shapes can also be registered as trademarks. For example the COCA COLA bottle shape is protected as a registered trademark.
Some signs are distinctive from the start (inherently distinctive) whereas for some signs, such distinctiveness can be acquired later on, through a certain period of use. However, this does not mean that a sign with a low degree of inherent distinctiveness cannot be registered as a trademark.
While forming a trademark, a company should pay attention to whether the mark is sufficiently distinctive; whether it is descriptive for the goods and services it is going to be used on and whether it can be deceptive.
A sign that is descriptive for certain group of goods and/or services can be distinctive for other group of goods and/or services. For example, whereas APPLE, PEAR etc. words cannot be registered for fruits and vegetables; these can be registered for other goods or services for which these are not of descriptive nature, such as computers.
There is a fine line between descriptiveness and deceptiveness, which shall be paid attention to. A sign can be deceptive for a certain group of goods and/or services, but not descriptive. For example, although it is not possible to say that APPLE, PEAR etc. words are descriptive for fizzy drinks, these phrases can be deceptive for creating an impression in relation to such drink’s ingredients. Therefore, while selecting the trademark, it is advised for the qualities of the goods and/or services, on which the trademark will be used, to be taken into consideration and to divert from those qualities.
In addition to these, prior to filing a trademark application and using a trademark, it is also advised to conduct a trademark availability research to find out whether similar or identical trademarks are previously registered/applied for or used by a third party as the contrary, although unintentionally, may result in infringement or violation of others’ trademark rights . Trademark availability search is not only conducted via official web site of the Turkish Patent and Trademark Office (“TürkPatent”), but also by obtaining assistance from companies providing specialized service on the matter.
Another common wrong belief on this point is that a trademark registered one’s name abroad can be registered in the name of another in Turkey as long as it is not yet registered in Turkey. Even though territoriality is a fundamental principle of Trademark Law, registration in Turkey in the name of a third party, of especially an original mark registered abroad, can be prevented.
Trademark registration is not compulsory for trademark use. An unregistered trademark is also protected under unfair competition provisions of Turkish Commercial Code. However, a trademark registration enables the trademark owner to benefit from the provisions of the Industrial Property Law No. 6769 and provides convenience and priority while defending rights against third parties for the good and services the trademark is registered for.
Obtaining a trademark registration is particularly important to prevent unauthorized third party registrations. Besides, the registration owner is entitled to benefit from more advantageous provisions to prevent unauthorized use of the trademark compared to the one not owning a registration.
In order to avoid problems arising from unintentional violation of third parties’ trademark rights, it is advised for the trademark to be used upon expiration of the 2 month opposition period followed by the publication of the trademark application on the Official Trademarks Bulletin, provided that no oppositions have been filed within such period.
Trademark applications are filed to the TürkPatent, which is the sole authorized body for these registrations, through a properly filed trademark application form and a bank receipt indicating payment of official application fee into the account of the TürkPatent.
The trademark application documents can directly be submitted to the TürkPatent as well as being sent through mail. TürkPatent also enables electronic signature owners to file electronic applications.
It is not required to possess a legal personality for filing a trademark application to the TürkPatent. Therefore, all real and legal persons residing in Turkey or not can file trademark applications.
The real and legal persons resident in Turkey are not required to have an attorney to file trademark applications. However, the real and legal persons without residency in Turkey are required to have attorney(s) to conduct all the transactions before the TürkPatent on their behalf which also includes filing of a trademark application.
A priority right is the right enabling a trademark application filed in Turkey to have priority against previous third party applications, by relying on the filing date of a previous trademark application filed in one of the Paris Convention Member States. In order to benefit from this right, the national application has to be filed within 6 months from the filing date of the application priority right is relied on and the documents presenting the priority right have to be submitted within 3 months starting from the filing of the national application.
Whilst filing trademark application the below are required to be paid attention to:
The information within the registration form shall be accurate and complete,
The trademark sample shall be clear and legible,
The list of goods and services for which the trademark is desired to be registered shall be accurate and complete,
The application fees shall be deposited into the bank account of the TürkPatent.
Yes. Upon filing of the application, the TürkPatent conducts a procedural examination and grants an additional period of time – which cannot be extended- to the applicant for completing the missing documents and/or fees.
An international classification system commonly used in many countries worldwide is used for trademark registrations. This classification system is developed by World Intellectual Property Organization and accepted by all member states under title of “Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement)”.
Pursuant to Council of Ministers’ decision numbered 95/7094 dated July 12, 1995, Turkey has become party to the Nice Agreement and Nice Agreement has become applicable for classification of goods and services thereon. Currently the TürkPatent applies The Communiqué Pertaining to Classification of Good and Services no. 2016/2.
Goods and services classification fundamentally aims to present a systematic tool for determination of the goods and services to be covered by the trademark application and guides the applicants in this sense. However, it is not mandatory to use the exact definitions set forth under the classifications while filing the trademark application. The applicant can define the goods or services the trademark is going to be used on according to their nature and indicate under the relevant class among the classification.
Yes. TürkPatent firstly makes a procedural examination and if the submitted documents are complete or the missing documents are completed; then moves on to an examination based on whether the application satisfies the registration conditions.
TürkPatent’s such examination is called first examination on absolute refusal grounds. Hereunder, TürkPatent could decide on refusal of the application if;
The sign desired to be registered as trademark is devoid of distinctive character,
The sign desired to be registered as trademark is identical or indistinguishably similar to a trademark already registered or previously applied for the same or same kind of goods or services,
The sign desired to be registered as trademark consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service or other characteristics of goods or services,
The sign desired to be registered as trademark consists exclusively of signs and indications used to distinguish specific groups of craftsmen, professionals or tradesmen or have become customary in the current and established practices of the trade,
The sign desired to be registered as trademark consists of the shape which results from the nature of the goods themselves, or is necessary to obtain a technical result or which gives substantial value to the goods,
The sign desired to be registered as trademark is of such a nature as to deceive the public, such as to the nature, quality, place of production or geographical origin of the goods and services,
The sign desired to be registered as trademark contains government escutcheon, escutcheons, logo etc. belonging to official authorities of the government and for this usage permission, has been not obtained from the relevant authorities,
The sign desired to be registered as trademark contains badges, emblems or escutcheons usage of which have not been authorized by the competent authorities and are of particular historical and cultural public interest,
The sign desired to be registered as trademark is identical with a well-known trademark without authorization of the well-known trademark’s owner,
The sign desired to be registered as trademark contains religious symbols,
The sign desired to be registered as trademark is contrary to public policy and to accepted principles of morality.
On the other hand, even though it was not taken into consideration during the first examination stage, if TürkPatent detects presence of an absolute refusal ground later on but still before the registration, the trademark application can still be refused at this stage.
Yes. The fact that a trademark application passes the first examination on absolute refusal grounds indicates that the application satisfies the conditions for registration as a trademark. However, third parties can still file oppositions against this trademark application based on their prior rights.
Pursuant to Article 18 of the Industrial Property Law No. 6769, the trademarks, which have passed TürkPatent’s procedural examination and first examination on absolute refusal grounds, will be published on the Official Trademarks Bulletin pending for third party oppositions pending for a period of two months.
In third party oppositions, third parties’ prior rights on the trademark desired to be registered, which cannot be taken into consideration by the TürkPatent itself, are argued. Additionally, presence of an absolute refusal ground overlooked by the TürkPatent during the first examination stage can also argued.
Yes. Pursuant to Article 5 of the Industrial Property Law No. 6769, registration of two identical or confusingly similar trademarks on the same or same kind of goods and services is permitted on the condition that the proprietor of the previously registered trademark submits a notarized document verifying his/her consent for the registration of the relevant application to TürkPatent.
Yes. Concept of “identical or indistinguishably similar trademark” is set forth under absolute refusal grounds and indicates trademarks that cannot be distinguished from each other at first glance.
The concept of “similar trademark” on the other hand indicates trademarks that do not have a similarity that powerful to be detected at first glance, but in case of use on similar or related goods, would be likely to create confusion on part of consumer.
Even if a trademark application passes TürkPatent’s first examination on absolute refusal grounds as the application is not found to be “identical or indistinguishably similar” to an earlier trademark registration or application; the earlier trademark owner can still demand refusal of this trademark application upon its publication of the Official Trademarks Bulletin on account that the application is similar to its trademark.
It is possible to file appeal against decisions rendered by the Trademarks Directorate before Re-Evaluation and Examination Board within the definite period of two months as of notification of the decisions.
Decisions rendered by the Re-Evaluation and Examination Board are final for the administrative stage and Board decisions can only be challenged through annulment actions filed before Ankara Civil Court of Intellectual and Industrial Property Rights within the definite period of two months as of notification of the Board decisions.
No. The two month deadlines set forth for filing appeals and actions against decisions of Trademarks Directorate and Re-Examination and Evaluation Board are definite and non-extendable.
The main points that shall be paid attention to while filing oppositions/appeals before the TürkPatent are as follows:
Grounds for opposition are filed in writing within the legal deadline.
The official fee for the opposition or appeal shall be paid within the legal deadline and the payment notification shall be sent to the TürkPatent within the legal deadline.
Incompliance with these two points will result in the oppositions/appeals being regarded as unfiled.
A trademark is registered approximately within one year upon the trademark application provided that the documents submitted are complete and the application is not subjected to refusal or oppositions.
A registered trademark will be protected for 10 years starting from the date of the application. At the end of this period, the trademark registration can be renewed for a 10 year period, indefinite number of times each by paying the renewal fee at the end of these periods.
In principle, the trademark registration provides protection for the goods and services covered by the registration only. Therefore, registration and use by other of enterprises of the same trademark on different goods and services is possible.
The only exception to this is that signs identical or similar to trademarks which have reached well known status among the public cannot be registered for different goods and services as well as the similar ones.
There is not a definitive definition for well-known trademarks. There are different definitions at different levels. A trademark is not required to be recognized worldwide in order to be regarded as a well-known trademark. A trademark is regarded as well-known if it is known by the relevant part of the public in the country for the goods and services it seeks registration, even though it is not recognized worldwide.
Below stated conditions are taken into consideration in determining the well-known status of a trademark:
Duration of trademark registration and use,
National and international registrations,
Market share, annual sales, volume and market intensity of the goods and services the trademark is being used on,
Promotional work undertaken in relation to the trademark,
Presence of the trademark through the media like newspapers, magazines, television etc., exhibitions at fairs,
Court decisions indicating well known status of the trademark, pending unfair competition actions and opposition/appeals,
Distinctive character/originality of the trademark,
Public opinion researches made in relation to recognition of the trademark,
Qualities of the trademark owner company,
Whether the good and services the trademark is being used on indicate a certain level of quality or status or not,
The awards and prizes won in relation to the goods or services the trademark is being used on or by the trademark owner company,
The distribution channels, import and export opportunities of the goods or services the trademark is being used on,
The financial value of a trademark that has been subjected to sale or assignment,
The wide scope of the goods or services the trademark is registered for,
Frequency of trademark applications that are similar to the trademark, whether the mark is used within the market by third parties,
Whether the trademark owner is harmed by the quality of the goods or services the trademark is being used on or potential or actual users.
On 22.07.1997, TürkPatent published a Special Official Trademark Bulletin in relation to “PROTECTED TRADEMARKS” and “WELL KNOWN TRADEMARKS” that were under protection in our country under international agreements and certain marks were recorded as “WELL KNOWN TRADEMARKS” before TürkPatent.
With this Special Official Bulletin published in the year 1997, among the registered trademarks, TürkPatent decided rerecord of some of these as “WELL KNOWN TRADEMARKS” based on an evaluation conducted on the TürkPatent’s own account; however, terminated this practice later on. Currently, TürkPatent does not conduct an examination regarding “WELL KNOWN TRADEMARKS” on its own account however gives trademark owners the opportunity to have their trademarks recorded as “WELL KNOWN TRADEMARKS”. In this respect, the trademark owners apply to the TürkPatent with a petition containing the information and documents proving that their trademark satisfies the conditions to be recorded as a “WELL KNOWN TRADEMARK”. The trademarks that are considered as “WELL KNOWN TRADEMARK” by the TürkPatent are recorded under “Trademarks with Special Protection” and recorded within TürkPatent’s official web site with “(özel(special)/….)” number. This record provides convenience to trademark owners in proving well known status of their trademark, also taken into consideration by TürkPatent in the examination conducted and thus, unauthorized registration by third parties of a trademark which is recorded as “WELL KNOWN TRADEMARK” is prevented. However, although rerecord of a trademark as a “WELL KNOWN TRADEMARK” by the TürkPatent provides convenience as a matter of proof, Courts may demand establishment of well-known status in each case. Accordingly, even if the trademark is not recorded as a “WELL KNOWN TRADEMARK” by the TürkPatent, this does not necessarily mean that the trademark is not a well-known.
Yes. It is possible to prevent entry into Turkey of counterfeit products bearing a trademark registered before TürkPatent imported from abroad with an application to be filed to the Customs General Directorate.
Under Turkish Trademark Law, a trademark does not have to be in use to be able to be registered. However, this does not mean that there is no obligation to use the trademark after its registration either. The Industrial Property Law No. 6769 grants a period of 5 years to the trademark owner to use its trademark and if the trademark has never been used during this time or has been used for a certain period of time but abandoned later on in order to protect interests of the enterprises willing to use the trademark, a cancellation action based on “non-use” can be filed. For cancellation of the trademark based on non-use, the mark must have not been used for a subsequent five years from the date of the registration or the use must have been interrupted for a subsequent five years.
However, even if this is the case, the trademark does not become invalid on its own at the end of the 5 year period. The trademark can be cancelled upon a cancellation action filed by third parties with a legal interest in cancellation of the trademark.
Use of the trademark by the trademark owner within the last 3 months prior to the cancellation action is not taken into consideration as use of the trademark.
Under Turkish Trademark Law, the trademark shall be genuinely used in relation to goods and services covered by the trademark registration. Whether the use is genuine or not is evaluated on a case by case basis.
Additionally, the Industrial Property Law No. 6769 conveys that the registered trademark will also be deemed as used under the below stated situations:
(a) Use of the trademark with different components however without altering the distinctive character of the registered trademark,
(b) Use of the trademark merely on goods or packaging with exporting purposes only,
(c) Use of the trademark with permission of the trademark owner,
Trademark owners can license their trademarks to third parties and it is not compulsory to have the license recorded. The trademark is accepted to be used if use is proved also in cases where there is not a license record. However, if the license is not recorded, then the licensee cannot claim rights against the third parties acquired the licensed trademark in good faith thereby has become the new trademark owner.
After a trademark application is filed, no changes can be made in relation to the type and wording of the sign and the goods or services covered. Merely, little typos can be corrected by paying the related fees and changes in the goods or services list can be made only if TürkPatent requests a clarification.
However, information on the trademark application/registration owner can be changed. Changes on the title, company kind or address of the trademark owner, can be recorded before the TürkPatent by paying the related fees and submitting the required documents. Also, the changes that occur upon assignment of the trademark or merger of the applicant with another company, these changes can be recorded before TürkPatent by paying the related fee and submitting the required documents as well.
Cancellation of a registered trademark can be demanded under the below stated grounds:
Incompliance with the absolute refusal grounds, TürkPatent’s first examination is based on,
Presence of relative refusal grounds third party opposition/appeals are relied on such as prior third party rights,
The trademark has not been used for subsequent five years as of its registration or for a period after the trademark’s registration,
The trademark becomes a generic name for the goods and services covered as a result of the acts of or lack of measures taken by the trademark owner,
The trademark becomes deceiving on the part of public in relation to the quality, kind, place of manufacturing and geographical origin of goods and services covered by the registration, as a result of its use.
Cancellation of a registered trademark can not only be demanded for the entirety of the goods and/or services covered, but also for some of those good and/or services.
However, partial cancellation of a registered trademark can only be demanded in relation to good and/or services covered. Therefore partial cancellation of one or more of the components (like word and device elements) of a trademark is not possible.
No. Not filing an opposition against a trademark application during the registration process does not prevent one from filing a cancellation action once the application is registered.
The period foreseen to file a cancellation action is regulated under Article 25/6 of the Industrial Property Law No. 6769. According to the referred provision, “If a trademark proprietor remains silent for five consecutive years although he/she is aware or must be aware of use of a subsequently registered trademark, he/she shall not be entitled to put forward its previously registered trademark as a ground for cancellation unless the subsequent trademark is registered in bad faith.
Madrid System is a system enabling the applicants to file trademark applications in 98 member states and European Community through one office (WIPO – World Intellectual Property Organization) and one application.
The greatest fallacy with regard to the international registration system is the wrongful thought that the trademark is automatically registered in all of the designated countries after the trademark application is filed with the WIPO.
Nevertheless, after the application is filed, the local offices of the designated countries examine the applications in accordance with their own domestic legislation and decide whether the trademark will be registered in their country or not. Therefore, international registration system is not an automatic registration system, but a mechanism enabling trademark applications to be filed and followed up in a number of countries through one application.
In order to file an international registration under Madrid Protocol, firstly a trademark application or registration before the TürkPatent shall be present. After the trademark application is filed, even if the application is not registered yet, it will be possible to file an international registration designating countries party to the Madrid Protocol by filing an application to the WIPO based on this application filed to the TürkPatent.
After the application is filed to the WIPO, notifications are sent to the national trademark offices of the designated countries for recordal of the application. National trademark offices examine the application under their own legislations and decide whether the trademark can be registered or not.
The national trademark offices are granted a period of 12 or 18 months to examine the trademark application and if the trademark application is not rejected within that period, the application is regarded as registered. No national trademark certificate is provided by the designated countries in the international registration.
If the international registration is refused by the national trademark offices of the designated countries, this refusal decision is notified to the applicant or its attorney. The applicant can appeal the refusal decision through a local attorney in the country where the application is refused.
The deadline for filing the appeal against the refusal decision is determined under the legislations of the relevant country and such deadline is indicated within the refusal notification.
If the office of origin sends the application to WIPO within 2 months upon the application date, the protection date starts as of the date the application is filed to the office of origin. On the other hand, if the application is sent to WIPO by the office of origin after two months, the protection date starts as of the date the application is received by WIPO.
The international trademark registrations filed under Madrid Protocol are dependent on the basic national application/registration before the office of origin for 5 years. If the basic trademark application is rejected or registration is cancelled within this 5 year period, the international trademark registration is also cancelled.
Invention; achieve a product of the solution of the technical problem in the industrial fields including agricultural area or improvement of a method.
Patent; the inventor of the invention invented by sales, marketing, reproduction, protection and privileges to bring in areas such as the production of a similar purpose is an official document issued by a state with institutions.
Inventions meeting the criteria of novelty in the world, surpassing the state-of-the-art and applicability in industry shall be granted patents.
For the protection of a patent, the invention should meet the criteria of being novel, surpass the state-of-the-art and be applicable to the industry.
On the other hand, utility model protection is granted to inventions, which are novel and applicable to the industry; except the chemical substances and methods that can be the subject of a patent.
The protection period of an invention granted by a utility model is ten (10) years while this period is twenty (20) years for a patent.
A patented invention gives to the patent holder the right to exclude all others from the production, sale, import and export of the invention without the permission of the patent.
Since patent protection is limited to the country in which the patent has been filed, the Paris Convention (to which Turkey is party) provides for a 12 month priority right period for applications for protection filed in other member states. After a patent application has been filed in Turkey, additional applications can be filed with any signatory states claiming the filing date of the Turkish patent application as the priority date. The priority designation prevents both the filing of competing patent applications in other countries for the same invention, and the applicant from losing patentability due to a later application in another country.
If the title, company type or address of the patent change, these changes are recorded with the Turkish Patent and Trademark Office paying the relevant fees and submitting the required documents. On the other hand, when the patentee assigns his patent right to another firm or merges into another firm, these changes are also recorded with the Turkish Patent and Trademark Office paying the relevant fees and submitting the required documents. These changes can be made after an application is filed or a patent is granted.
PCT System is a system affording the benefits of filing a patent application in 152 countries, party to the Treaty via only one form and using one language after Turkey becomes party to the Patent Cooperation Treaty in January 01, 1996.
There is no obligation to use or submit a declaration of use for a patent during the granting phase. However, if no declaration of use is submitted within three years as from the date of grant of a patent and publication thereof in the relevant bulletin; the patent may be subject to compulsory license.
The patent holder must submit the declaration of use which will be issued by the patent holder itself or the competent authority and will be certified by the chambers of commerce and industry, other relevant professional organizations and other organizations, wherein he/she declares to use the subject matter patent, and which will prove use of the invention to TürkPatent. In the case of importation activities, the certified import document shall be submitted as the certificate of use.
The protection period of the patents starts from the application date and the protection period of a patent is twenty (20) years. During the protection period of the patents beginning from the third year as of the application date, annuities should be paid every year. Patents cannot be renewed after their protection dates expire and at the end of this period patents become public property.
The patent protection may end upon the expiry of the protection period; the patent’s waiving from his rights, not paying the annuities and additional fees within the deadlines and upon a final invalidation decision of a court. If the annual and additional fees are not paid, a notification shall be made to announce that the patent rights have expired. Where the restoration fee is paid within two months as from the notification date, the information proving such payment shall be submitted along with the request form to the TürkPatent. Notification of expiry of the patent rights shall be made until end of the one-year period beginning from the expiry date, at the latest.
A design is the integrity of various components and characteristics such as lines, devices, form, color, texture, material and flexibility of an entire product, a part of that product or its fretwork, which are perceivable by human senses. Product refers to a composite product or components thereof in addition to any object which is industrially or manually manufactured, except computer programs, as well as the objects such as packages, presentations of more than one object which are perceived as a whole, graphic symbols and typographical characters. The referred composite products are composed of parts which can be altered or renewed through disassembly or assembly. Accordingly, what is protected with a design is perceivable appearance of an entire product or some part of it.
Subject of an industrial design is perceivable appearance of an entire product or some part of it. Thus, it completely differs from a trademark, which serves to distinguish a good or service from another. However, there might be some similarities between designs and 3D signs as they can be registered as trademarks as well. But, in order for a 3D sign to be registered as a trademark, it needs be of distinctive character as per the goods and/or services the registration would cover; such distinctive character may arise usually after some time. However, a sign needs to be new in order to be protected as a design.
Design and patent and utility model may be confused, as well. In fact, patents and utility models protect a certain technical development, whereas designs merely protect appearance of the product rather than its technical function.
Yes. Turkish law adopts the “multiple protections” principle; accordingly a design can be protected under Code of Intellectual and Artistic Works, as well, provided that it has the characteristics of “WORK” pursuant to the same code.
In order for a design to be protected, the design should be NOVEL and DISTINCTIVE from other designs.
Even though these two conditions occasionally refer to a single condition, they actually do refer to different subjects.
“NOVELTY” of a design means that an identical design was not offered to public anywhere in the world, prior to the design application date or priority date. Accordingly, with regard to the novelty criterion absolute novelty is necessary.
The Industrial Property Law No. 6769 states that certain events do not affect novelty of a design. Pursuant to the provision, novelty of a design shall not be harmed in case the design was offered to the public, by the designer, his successor or by a third person under their consent, or it was offered to the public in amusement of the relation with the designer or his successors within the 12 month period prior to registration application date.
“DISTINCTIVE” character is defined as the difference between the general impression of a design in the informed user’s mind and the general impression of previous designs in the informed user’s mind. In other words, it is examined during the distinctiveness evaluation, whether the design is significantly different from other designs as of general impression. In the evaluation, common features of the designs are regarded rather than their differences and the level of designer’s freedom as to develop the design is kept in mind.
In order to protect a design, these two conditions must co-exist at all times. In respect of the designs of the composite product components, there are two criteria for acceptance of a design as novel and distinctive. Firstly, when the relevant component is assembled into the composite product; it should be visible when the composite product is in normal use. Secondly, the visible properties of the part should be novel and distinctive.
Application for industrial design registration is filed with the Turkish Patent and Trademark Office, the sole authority on registration, after the form provided by the TürkPatent is duly filled.
Application for industrial design registration can be filed with the Turkish Patent and Trademark Office directly or via postal services. In addition, an application can be filed via internet in case the applicant has an electronic signature.
While filing a design registration application;
– The information requested on the registration form should be completely filled in.
– The visual description being subject to the claimed design should be given in detail. For three-dimensional designs, images illustrating the design in all its aspects, in a clear way should be presented so that the subject matter industrial design can be understood better.
– A description explaining the subject matter design shall be presented.
– The fees payable for registration applications should be deposited and proof of payment shall be presented to TürkPatent along with the application.
If the applicant is not the designer or not the sole designer, the identity of the designer shall be cited in the application. In addition, an explanation shall be supplied on the means whereby the right to apply for registration is obtained.
For design registration applications, a global classification system has been used in various countries around the world. This classification system is based upon the “Locarno Agreement Establishing an International Classification for Industrial Designs” which is administered by the World Intellectual Property Organization and therefore, the referred classification system is known as the “Locarno Classification”.
Within the framework of the Locarno Classification, the product groups are assigned codes to be taken into consideration for design registrations.
TürkPatent examines the designs applications to ensure that the application is complete and performs a preliminary examination to find out whether the design applications are novel and distinctive, or not.
In addition to the procedural review performed by TürkPatent, it should be determined whether the claimed design is in compliance with the public order and general principles of public morality.
Design applications are recorded in the Register upon completion of the examinations performed by TürkPatent and published in the Official Design Bulletin. Applicants are entitled to request deferment of a design publication. Accordingly, publication of a design can be deferred for a period not exceeding 30 months from the date of the filing the application or priority date, if any. The deferred design shall not be published and shall not be open to public inspection. The relevant design shall be published and opened to public inspection only at the expiry of the deferment period.
Oppositions can be filed against designs within 3 months from their publication in the Official Design Bulletin. The oppositions to designs shall be filed directly before the Re-Examination and Evaluation Board.
In cases where the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same sub-class or to the same set or composition of items, application of several designs may be combined in one application.
If no situation constituting an impediment for registration is detected following the first examination to be performed by TürkPatent, designs shall be published in the Official Design Bulletin. Upon publication of a design in the Official Design Bulletin and expiry of the 3-month opposition period; it shall be decided to register the relevant design in the absence of an opposition from a third party.
The term of protection of a registered design is 5 years from the filing date of the application. The term of protection is renewable for periods of five years each up to a total term of 25 years, upon the design proprietor’s request.
If the conditions under the unfair competition provisions of Turkish Commercial Code (“TCC”) are duly fulfilled, a design shall be protected after expiry of its protection term. On the other hand; if the design is also regarded as an “ARTISTIC WORK”, a design shall continue to be protected as an “ARTISTIC WORK” under the provisions of the Law on Intellectual and Artistic Works even if the protection period granted by the design registration has already expired.
The holder of a design has exclusive rights with respect to the use of the relevant design. Third parties, without the consent of the design right holder, cannot produce, put on the market, sell, offer, and import, put to commercial use or keep for these purposes the product in which such a design is incorporated or to which it is applied.
Creating, producing, releasing into the market or possessing a design being identical with or highly similar to a registered design, without the consent of the design right holder shall constitute infringement of a design right. A design right holder whose rights have been infringed may appeal for prohibition and prevention of the acts of infringement of the rights arising from a design or remedies of infringement and compensation for the pecuniary and non-pecuniary damages incurred. The damages incurred by the design right holder include not only the value of the actual loss but also the income lost due to infringement of the design rights. The loss of income shall be calculated by one of the following calculation methods, at the option of the design right holder who has suffered damages: – Based on the possible income which the design right holder would have generated but for the unfair competition created by the infringing party
Based on the income generated by the infringing party through use of the design
Based on the license fee which would have been paid if the infringing party had rightfully used the design under a valid license agreement.
Additionally, the holder of the registered design rights may also request the court to impose a preliminary injunction.
As a rule, third parties are not allowed to use a registered design without the right holder’s consent. In addition, it is regulated that the acts listed herein below shall fall outside the scope of the design right:
Acts being limited to special purposes and performed without any commercial purposes
Acts performed for trial purposes c) Acts of reproduction for training or reference purposes provided that such acts are compatible with the principles of good faith, do not unnecessarily endanger the ordinary use of the design and the source of the design is referred d) The equipment on vessels and aircraft registered in foreign countries and being within the boundaries of the Turkish Republic temporarily, as well as the spare parts and accessories imported to be used for repairing such crafts and performance of repair works.
Holders of design registrations may grant a license to third parties to use their designs. Although it is foreseen as a requirement as to form that license contracts shall be in writing, registration of a license is not obligatory. However, in cases where a license is not registered, no right may be claimed against the new design holder if the licensed design is transferred to a third party acting in good faith.
If the title, type or address of the applicant or design right holder, these changes may be recorded before TürkPatent upon payment of the relevant fees and submission of the necessary documents. On the other hand, if the design right holder transfer his/her rights to another undertaking or it is merged with another undertaking, these changes can also be recorded before TürkPatent upon payment of the related fees and submission of the necessary documents.
Invalidation of a registered design can be claimed on the following grounds:
The registered design does not satisfy the conditions of novelty and distinctiveness;
The design has been registered in the name of a party other than the actual right holder; – The filing date of an identical or similar design, which has been made public at a later date, is prior to the filing date of the registered design.
Where the grounds for invalidity involve only part of the application or of the registered design, partial invalidity shall be ruled in respect to the product or products effected by the part declared invalid. . The protection shall remain valid for the product or products relating to the part which has not been affected by the partial invalidation.
No. Failure to file an opposition to a design upon its publication in the Official Design Bulletin does not prevent filing of an invalidation action later.
Declaration of invalidity may be requested during the term of protection or within five years following termination of the right.
The Hague System for the International Registration of Industrial Designs provides a practical business solution for registering designs in 83 countries in total, African Intellectual Property Organization and Turkey Hague Convention and European Community through filing one single international application before a single office (WIPO – World Intellectual Property Organization). Turkey Hague Convention is governed by the Geneva Convention and thus, Turkey is entitled to file applications in the countries being members to the referred Convention.
The concept of “Artistic Work” is defined in the Law on Intellectual and Artistic Works. Accordingly, “Work” refers to any intellectual or artistic product bearing the characteristic of its author, which is deemed a scientific and literary or musical work or work of fine arts or cinematographic work. According to the Law on Intellectual and Artistic Works; for an intellectual and artistic work to be defined as a “WORK” within the given meaning, it is supposed to bear the characteristics of its author and to fall into the scope of one of the work types (scientific and literary, musical, fine arts or cinematographic work).
The ownership of rights to a work arises at the publication date thereof, without the need for any further notification or registration. The term of protection shall last for the lifetime of the author and for 70 years after his death. The term of protection for works that have been first made public after the death of the author shall be 70 years after the date of death. This period starts on the first day following the author’s death.
Film producers that make the first fixation of films and phonogram producers that make the first fixation of sounds shall have their productions containing cinematographic and musical works recorded and registered for the purpose of preventing violation of their rights, facilitating proof of right ownership and tracking the authority to exercise economic rights, and without the aim of creating any rights. Additionally; since they contain motion and audio videos within the framework of a mise-en-scene and scenario, computer games are also recorded and registered by the right ownerships with the aim of determining the vested rights and facilitating proof of right ownership.
For the groups of works other than the aforementioned ones which are subject to obligatory recording and registration procedures; the authors may record and register their works by submitting the necessary documents along with an application form, a letter of undertaking evidencing the ownership of rights to the relevant work or production and attesting that any legal and criminal liability is accepted should the contrary be proved and a bank receipt for the recording and registration fees.
Geographical signs are signs indicating the geographical origin of a product. There are two different types of geographical signs, which are Designation of Origin and Geographical Indication.
It is essential for Geographical Indication that the product originates from a specific region, district or country –under special circumstances; all or fundamental qualities or characteristics of the product originates from the natural and human elements specific to the relevant region; its manufacturing, processing and all other procedures shall be carried out within the boundaries of this region.
For Geographical Indications; it would be sufficient if at least one of manufacturing, processing and other procedures is carried out within the boundaries of the designated territory, area or region.
Names and signs which do not answer to the description of geographical sign, names and signs which have become generic name of products, any plant species, animal species or similar names which may be misleading about the actual origin of a product, signs which are against the public order and public morality, names and signs which are not protected or the protection term of which has expired or which are not used in the member countries to the Paris Convention and the Agreement Establishing the World Trade Organization cannot be registered as geographical signs.
Names which do not fall into scope of the designation of origin and geographical indication, and which is proved to have been traditionally used for minimum thirty years as the to describe a specific product in the relevant market, are defined as traditional product names.
Names and signs which do not answer to the description of traditional product name, names which have become generic name of products, any plant species, animal species or similar names which may be misleading about the actual origin of a product, signs which are against the public order and public morality, names and signs which are not protected or the protection term of which has expired or which are not used in the member countries to the Paris Convention and the Agreement Establishing the World Trade Organization, names which is partially or fully homonymous with a geographical sign cannot be registered as traditional product names.
Integrated Circuit refers to the intermediate or final products which are designed to serve an electronic function along with other functions, which has one active element in minimum, and some or all interconnecting components of which are combined in and/or on a single component.
Integrated Circuit Topographies refer to three-dimensional configurations of electronic circuits embodied in integrated circuit products or layout designs, which are prepared for manufacturing purposes and fixed in any format and which illustrate the whole surface at any stage of the integrated circuit production, or a part thereof.
Protection term of integrated circuit topographies expires upon completion of the tenth (10th) calendar year beginning from the first release date or the registration application thereof by the right owner or by a third party which has received the prior consent of the right owner, across the world.
Domain names are the names defining the IP (Internet Protocol) number which is used to identify website addresses.
It is not required to submit documents for generic domain names. However, submission of documents which may change according to the domain name extensions may be requested for registration of the domain names with country domain extensions.
The relevant plant variety is required to be novel, distinct, unique and stabile.
Protection term of the plant breeders’ rights is 25 years beginning from the registration date. This term is 30 years for trees, grapes and potatoes.
Registration of plant breeders’ rights is important since it grants various rights including the right to manufacture, reproduce, sell, import or export the relevant plant varieties to the registration holder.