The Assembly of Civil Chambers of the Court of Appeals recently ruled that trademarks containing identical descriptive phrases give rise to a likelihood of confusion, thereby reversing the first-instance court’s decision that there is no likelihood of confusion between such trademarks. The assembly’s approach grants exclusive rights over descriptive and generic phrases found in trademarks which could legitimise unfair competition between rights holders and render notions such…
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The Supreme Court recently issued its first decision on the patentability of second medical use claims in Turkey, marking a milestone for patent holders.
In 2014 the Istanbul IP Court held that the second medical use claims granted by the European Patent Office (EPO) under the European Patent Convention (EPC) 1973 (ie, before the EPC 2000 entered into force) were null and void, as the legal grounds to support such claims were introduced to the EPC only in new Article 54(4) of…
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As a bridge between Europe, Asia and the Middle East, Turkey continues to attract the attention of both foreign investors and IP infringers. Turkey has been adapting its IP legislation in line with international treaties since the mid-1990s. Its current IP regime largely complies with EU legislation and provides sufficient legal basis to protect the rights of IP owners. Specialised IP courts serve in three major cities (Istanbul, Ankara and Izmir), and the police and customs…
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Cases involving decoding – where retailers alter or remove the identifying marks placed on goods by rights holders – sit at the intersection of IP and competition law and need careful analysis, depending on both the sector and jurisdiction involved
Decoding cases are one of the best examples of the interrelation between IP rights and competition rules, requiring an in-depth analysis of IP protection and free trade with – in most cases – rights holders on one side and parallel…
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In a recent decision, the Third Civil IP Court of Ankara has made a detailed examination of the distinctiveness and descriptiveness of a trademark, and cancelled the refusal of the Turkish Patent Institute (TPI) based on a strong reasoning. Arguably, the decision – in which the court also interpreted the impact of foreign registrations for the same trademark – sets an important precedent for similar cases.
The applicant’s trademark application for AIRCRUISE BIONICS, which is…
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The Turkish patent regime has a pre-grant opposition system and recognises two types of patent: unexamined patents and examined patents. Unexamined patents are granted without a substantive examination and are protected for seven years, while examined patents are granted only after passing the substantive examination and are protected for 20 years. Unexamined patents can also be converted into examined patents if a request for examination is made during the seven-year…
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Legal framework
Turkey is a party to most international IP-related treaties, including the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), which aims to harmonise the legal framework for anti-counterfeiting and anti-piracy. Accordingly, Trademark Decree-Law 556 is almost fully compliant with TRIPs. There are specialist civil and criminal IP courts in the three largest Turkish cities (Istanbul, Ankara and Izmir). In other cities the regular civil…
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In a recent decision (merit number 2014/15516, decision number 2015/327, January 14 2015), the 11th Chamber of the Court of Appeal has upheld a decision of the court of first instance (Ankara Fourth Civil Court of Intellectual and Industrial Property Rights, merit number 2014/17, decision number 2014/136, June 11 2014) in which the court had cancelled a decision of the Re-Examination and Evaluation Board of the Turkish Patent Institute (TPI). The board had rejected the…
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The general practice of the Turkish IP Court is to continue with invalidation proceedings brought against the Turkish validation of a European patent even where the patent is still under opposition or appeal before the European Patent Office (EPO).
Although it is obvious why it may not be effective for a local court to evaluate the validity of the patent before the EPO has issued its final decision, the Turkish IP Court has based this practice on the length of EPO proceedings…
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Within the context of an invalidation action, the Ankara Third IP Court has held that the figurative trademark NEO CARE (depicted below), which covers goods in Class 5 of the Nice Classification, was confusingly similar to the trademark NEXCARE, which also covers goods in Class 5.
The court considers that the device element of the NEO CARE mark was not distinctive and that the main element of the mark was its word element.
Although this is not explicitly mentioned in the…
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The 11th Civil Chamber of the Court of Appeals recently issued a remarkable decision regarding European patents validated in Turkey – specifically, on the status of the validation of a European patent in Turkey where an opposition or appeal is pending before the European Patent Office (EPO).
The Turkish Patent Institute (TPI) operates a pre-grant opposition system and permits no amendments to a patent after the grant decision. The TPI system conflicts with the EPO system…
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General Assembly of the Civil Chambers of the Court of Appeals, Turkey, Merit No 2013/11 – 52; Decision No 2013/1416, 02 October 2013
In a landmark decision, the Assembly of Civil Chambers has determined that a likelihood of confusion will arise between trade marks by accepting the word ‘diamond’ in trade marks subject to comparison as a fundamental element, although it was descriptive of the goods in respect of which the trade marks were registered and used. This note…
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