Turkey: The Registration Of Industrial Designs

The Registration Of Industrial Designs In Turkey According To The New Decree-Law No. 554 In Force As From June 27, 1995

By the present, we would like to inform that design applications can now be filed according to the Decree-Law No. 554 entered into force as from June 27, 1995 and pertaining to the registration and the protection of industrial designs in Turkey.

The new Decree-Law No. 554 pertaining to "the Protection of Industrial Designs", modeled after the white paper on the European Community Directive Proposal on the Legal Protection of Designs, permits the registration of same in this country. It is to be noted that, the English translation of this Decree-Law as prepared by the Turkish Patent Institute (T.P.I.) seems to show same discrepancy with the wording of the Turkish text of the Decree-Law.

In this regard, please note that prior to June 27, 1995, the registration of industrial designs was not possible for lack of specific law concerning the industrial designs.

Industrial Designs not registered in Turkey will continue to benefit from the protection of the general unfair competition provisions of the Turkish Code of Commerce according to Article 1, paragraph 2 of the Decree-Law No. 554 which in its paragraph 3 further provides that: "The rights conferred by this law does not in any way invalidate the protection conferred by Law (No. 5846) on the Works of Art and Intellect (as amended with Law No. 4110 of June 7, 1995)".

As part of the harmonization effort which Turkey has undertaken to carry out with a view to full Customs Union with the European Community as from January 1, 1996, the practice in this country is bound to change drastically following the enactment as from June 27, 1995 of a series of Decree-Laws replacing the earlier Patent Act and Trademarks Act No. 551 and bringing new legislation in areas where no particular act existed earlier, namely for the protection of Industrial Designs and Models and Geographical Indications/signs.

The respective Implementing Regulations for these Decree-Laws came into force on November 05, 1995 following their publication in the Official Journal of same date.

The main Regulation dated November 05, 1995 pertaining to Industrial Designs has been amended on a number of points with a further Regulation which came into force on December 31, 1997 following the publication in the Official Journal No. 23217 on the same date.

The following persons are entitled to protection and thereby qualified to obtain registration of their industrial designs in Turkey according to Articles 2 and 4 of the Decree-Law No. 554 reading as follows:

"Article 2 : The protection conferred by this law is available to the citizens of the Republic of Turkey or to natural and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Republic of Turkey, or to the persons entitled to file application under the provisions of the Paris or Bern Conventions or the Agreement Establishing World Trade Organisation.

Natural or legal persons other than those referred in the first paragraph of this Article, who are nationals of states which accord legal and de facto protection to the nationals of the Republic of Turkey shall enjoy, according to the reciprocity principle, design protection in Turkey.

Article 4 : Where the International Agreements having entered into force according to the Laws of the Republic of Turkey contain provisions which are preferential/more favourable to those of this present Decree-Law, the persons referred to in Article 2 may request to benefit from such preferential/more favourable provisions."

According to the definitions retained in Article 3, paragraphs (a) and (b) of the Decree-Law No. 554:

  1. "Design" means the entirety of the various features such as lines, colour, texture, shape, sound, elasticity, material or other characteristics perceived by the human senses in appearance in whole or part of a product or its ornamentation;
  2. "Product" means any industrial or handicraft item, parts of a complex system, sets, compositions of items, packaging, get-ups, graphic symbols and typographic typefaces, excluding the computer programmes and semi-conductor products".

As part of the definition retained in Article 3, paragraph (b) "typographic typefaces" shall be registrable and enjoy protection according to the Decree-Law No. 554 whereas excluded from such protection are chip topographies and computer programs.

According to Article 12 "the term of protection of the registered design is five years from the date of filing of the application" and "is renewable for periods of five years each up to a total term of 25 years".

For a better understanding of the terms and Scope of Protection we are sending in the enclosure the English translation of Articles 5 to 11 of the Decree-Law No. 554 as received from the T.P.I.

To enjoy protection under this Decree-Law, the designs to be registered must be new (Article 6) and must have a Distinctive Character (Article 7). It is to be noted that, the term "Distinctive Character" (Art. 7) meaning in Turkish "Ayird Edici nitelik" has been given in the English translation prepared by the T.P.I. as "Individual Character" which in Turkish means "Özgün Nitelik".

Pursuant to Article 6, paragraph 1 of the Decree-Law No. 554 for design protection, purposes the criterion of "absolute novelty" prevails; whether in respect of "novelty" or in respect of "distinctive character", in that the concerned design shall be deemed to be "new" if no identical design has been made available to the public anywhere in the world prior to the date of filing in Turkey or to the date of priority claimed, if any. In the sense of Article 6, paragraph 1 "designs differing only immaterial details shall be demand to be identical".

The paragraph 2 of Article 6 further rules that :

  • "to make available to the public shall cover all such actions sale, offer for sale use, description, publication, promotion/publicity, exhibition, demonstration and activities for similar purposes."
  • "disclosures, of confidential nature, made to third parties shall not be considered as being made available to the public."

According to Article 8, disclosures made available to the public with the consent of the designer or his successor(s) in title or by third parties in abuse of their relation with the designer or his successor(s) in title, within 12 months preceeding the date of filing in Turkey or the date of priority claimed, if any, shall not be deemed to be destructive of the "novelty" and of the "distinctive character" of the concerned industrial design.

Article 7, paragraph 3 rules that for determining, as of their entirety, the similarity between the concerned designs, their common characteristics shall be taken into consideration in lieu of their differences, with a view to assess the liberty of choice at the disposition of the designer in developing the design in question.

The T.P.I. does not carry out an examination in respect of the criterion of "novelty" and "distinctive character" prior to the registration of the design patent. The design application is examined by the T.P.I. prior to its registration and publication for opposition purposes in consideration of the provisions of Articles 3, 26 and 28. Therefore, this examination, concerns basically the formal aspects/elements of the application. Following the formal examination, the T.P.I. under the earlier practice in effect until December 31, 1997 registered the design, issued the design patent, and thereafter published it for opposition purposes in the Official Industrial Designs Bulletin. With the coming into force of the Implementing Regulation dated December 31, 1997 this practice has been modified in that following the registration of the design, the Turkish Patent Institute shall not issue the the Certificate of Design Patent, as under the earlier practice, but shall notify in lieu thereof that the design has been registered. The Cetrificate of Design Patent shall issue, pursuant to Article 3 of the Regulation of December 31, 1997, after the expiry of the opposition period of 6 months, provided no opposition is lodged within this time-period. Where an opposition is lodged, the Certificate of Design Patent shall issue or the design registration shall be, partially or totally, cancelled, depending on the decision to be rendered by the Higher Council of Examination and Evaluation" of the Turkish Patent Institute in consideration of the opposition lodged. Under the practice effective as from January 1, 1998 the particulars of the design registration shall be published, as under the earlier practice, for opposition purposes in the Official Industrial Designs Bulletin. The application filed shall remain confidential until the publication of the design registration in the Official Bulletin, for opposition purposes.

The opposition as provided in Article 37 of the Decree-Law is a post-registration opposition (and not a pre-registration one) in that, opposition may be lodged against a registered design within 6 months following the publication of same in the Official Industrial Designs Bulletin. In consideration of the opposition lodged, T.P.I. may decide to maintain or to invalidate the design registration, whether totally or partially, pursuant to Article 38, paragraph 3, provided that the opposition is lodged on the basis of the points (a) and (b) of the Article 43. On this occasion, it is to be noted that the translations of Articles 37 and 38 as prepared by the T.P.I. do not seem to reflect fully the text of said articles in Turkish.

As the design patent is registered and issues without a prior examination in respect of novelty, and "distinctive character", if no opposition is timely lodged within 6 months from the publication in the Official Industrial Design Bulletin, the cancellation of the design patent on ground of lack of "novelty" and/or "distinctive character" can be obtained only upon a court decision following the cancellation action instituted to this effect.

According to Article 58, paragraphs 1 and 3, in all court actions (to be) instituted in accordance of the Decree-Law No. 554 and against all decisions of the T.P.I. in implementing the provisions of the Decree-Law No. 554, the competent courts shall be the specialized courts to be established by the Ministry of Justice.

According to the paragraph 2 of Article 58 and Transitional Article 1; until the establishments of such specialized courts by the Ministry of Justice; the Supreme Council of Judges and Prosecutors shall determine from amongst the Commercial and Criminal Courts of First Instance those which will function as specialized courts.

At the moment, for the jurisdictions other than Istanbul, in the jurisdictions having more than one penal and/or commercial court, according to the decision of the Supreme Council of Judges and Prosecutors, the 3rd Penal Court hears the penal actions for all Industrial Property matters whereas the civil actions are distributed amongst the Commercial Courts of the jurisdiction.

As far as the Istanbul area is concerned, with the Decision No. 59 dated January 25, 2001 -published in the Official Journal of February 01, 2001 / No. 24305- of the Supreme Council of Judges and Prosecutors the specialized "Istanbul Court for Intellectual and Industrial Property Rights" has been set up in the city of Istanbul which will be competent in all Industrial and Intellectual Property matters.

One important feature is the possibility given to the applicant to request in the filing petition the deferment of publication for a period not exceeding 30 months from the date of priority/filing of the application pursuant to Article 35 of the Decree-Law. As the request for deferment of publication up to a period of 30 months must be mentioned in the filing petition, specific instructions pertaining to the deferment or not of publication, need to be given prior to the filing of the application.

Another feature of the Decree-Law, consists in the possibility of filing multiple applications according to Article 28. This information must be given in the filing petition. According to Article 8, parag. (f) of the Regulation, in case of multiple applications it is necessary to file a description for each of the designs filed under the same application.

Another point that needs to be addressed is that as indicated on Article 26, paragraph 5, of the Decree-Law No. 554, "The identity of the designer shall be cited in the application. If the applicant is not the designer or not the sole designer, a declaration shall be made in the application as to the grounds/means whereby the right to apply for design patent is obtained".

As this information must also be given in the filing petition, the filing instructions should therefore include information as to the (legal instrument/means according to which the applicant company has obtained from the designer, the right to apply for a design patent.

According to the Decree-Law No. 554 and the resulting current Administrative practice, this information pertaining to the (legal) relation between the designer(s) and the applicant as to the ownership of the design and to the right to apply for a design patent, is to be supplied on a declaratory basis. At present, no documentary evidence is required, to be submitted in support of the declaration (to be) made in this regard.

When the applicant of the claimed priority and the applicant in Turkey are not the same, a declaration must be filed simultaneously with the application as to the (legal) instrument/means according to which the applicant in Turkey has obtained the right to apply for a design patent, the date when such right to apply is obtained and the name of the parties involved.

As the International Classification for Industrial Designs must be indicated in the filing petition, it would be appropriate to quote in your filing instructions the international class(es) according to the Locarno Agreement.

A written description of the design is to be filed with the application as required by Article 26, paragraph 2, of the Decree-Law No. 554.

The length of the description having not been determined whether in the Decree-Law or in the Regulations, the description should preferably be rather concise and may consist of a few paragraphs, obviously depending on the features and complexity of the concerned design(s).

The Regulation of December 31, 1997 provides that :

  • for three dimensional designs, visual representations of, at least, the front view, side view and top view of the design are to be filed (Article 1 (a) parag. 3). These visual representations may be in the form of drawings/photographs embodying the design.
  • a description is to be filed respectively, for each one of, at least, three visual representations embodying the design (Article 1 (e) parag. 1-first sentence).
  • in multiple applications, a set of, at least three visual representations must be filed for each one of the design(s) filed under the same (multiple) application. In multiple applications, a separate description is to be filed respectively for each one of the visual representations filed for each one of the design(s) filed under the same (multiple) application (Article 1 (f)).

The description shall :

  1. specify the design by explaining in detail the visual representations filed to this effect, and
  2. indicate, clearly, the differences between the design as filed and the designs available/known to the public and
  3. mention, clearly, the element(s) and feature(s), of the design, in respect of which protection is being claimed.and
  4. declare the date when, the design is made available to the public by exhibition, distribution for marketing and sales purposes, use, description, publication, promotion or by activities having similar purposes. (Article 1 (e) parag. 1. last sentence) where the visual representation of the design contain element/feature(s) pertaining to trade marks, such element/feature(s) shall be accepted subject to bringing evidence in that the trade mark is registered in the name of the applicant. In the negative such element/feature(s) are to be excluded from the visual representation filed with the design application. Where the visual representation of the design consists in its entirety of element/feature(s) pertaining to trademarks they shall not be accepted as visual representation. (Article 1.(a), parag. 2.)
  5. not describe the design with the terms "as in the visual representation" which shall remain categorically unaccepted: (Article 1 (e) paragr. 2 last sentence)

The date of presentation to the public (in Turkey or throughout world) of the products embodying the design is or upon which the design is applied.

According to the application form prepared by the administration 10 examples in (8 cm. x 8 cm.) of each one of the drawings/photographs embodying the design, in such a form so as to permit the publication thereof must be separately enclosed to the filing petition.

To this effect it would be approriate to enclose to your filing instructions a set of, at least, 20 specimens in (8 cm. x 8 cm.) of each one of the drawings/photographs embodying the design, separately.

As To The Power Of Attorney.

The Power of Attorney does not need to be notarial or otherwise legalized for filing the application. However, the withdrawal of the application or the voluntary cancellation of a desing registration necessitates the filing of a notarial legalized Power of Attorney. (Article 8, parag. (c) of the Regulation).

In addition to the Power of Attorney, according to Article 8, parag. (d) of the Regulation, for the body corporates applying for a design patent it is necessary to file together with the Power of Attorney a "signature circular" which is to be notarial legalized. This "signature circular" is nothing, but an internal document issued by the body corporate citing and giving the names and signatures of the officers of the body corporate authorized/empowered to engage the concerned body corporate and thereby to act and execute documents in the name and on behalf thereof. With this document, the T.P.I. aims apparently to check that the persons having executed the Power of Attorney for the applicant company are duly empowered by said company to act and execute documents on behalf of same.

However, from the talks held with administrative officials, it appears that the signature circular will not be additionally requested in case where the power of attorney is notarial legalized in such a way that the legalization clearly attests the capacity of the person who has executed same to represent the concerned legal person/body corporate and to act and execute documents in its name and on its behalf.

As To The Priority Document -Certified Copy Of The Claimed Priority Application(s)

According to Article 31, parag. 2 of the Decree-Law No. 554 and Article 27 of the Regulation of November 05, 1995 "the priority shall be deemed not to have been claimed, if the priority document (attesting same) is not submitted within three months as from the date of filing of the application (in Turkey).

Pursuant to the Regulation of December 31, 1997 (Article 2 amending Article 12 of Regulation of November 5, 1995. This time-period can be extended for an additional period of one mounth.

In case the certified copy of the claimed priority is not filed before the T.P.I. by this deadline, the application is further prosecuted as a non-convention application, without the benefit of the claimed priority(ies).

According to Article 33 of the Decree-Law and Article 12 of the Regulation, of November 05, 1995, other documents in support of the application can be filed subsequently within three (3) months from the notification of the T.P.I. to this effect. Pursuant to the Regulation of December 31, 1997 (Article 2, amending Article 12 of the Regulation of November 05, 1995) this time-period can be extended for an additional period of one month. Failure to submit within this time-limit the outstanding supporting documents to the T.P.I. will cause the annulment of the design application.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions