The Decree Laws No. 556 for Trademarks and 554 for Industrial
Design does not have any provision in this respect whereas the
Decree Law No. 551 for Patents, regulates this matter under the
heading of "Effects of Patents of Prior Date" in
Article 78, by stating that the holder of a Patent, cannot invoke
the Patent registration in his defense in infringement actions
instituted against him based on other Patents that have an earlier
date of priority.
Proposed Changes by the Draft IP Law
Article 155 of the Draft states that, the owner of a Trademark,
Patent or Industrial Design right cannot invoke these Industrial
registration rights as a defense against an infringement action
filed by parties, who own a prior right or prior application
Although the Decree Law No. 556 or 554 did not include any
regulation in this matter, according to the well established
Supreme Court decisions, it was accepted that the Trademark and
Industrial Design rights which have been successfully registered
before the Turkish Patent Institute would constitute a legitimate
right against an infringement claim unless the registered right is
cancelled and removed from the Registry. Such case law, caused the
preliminary and the permanent injunction requests to be delayed or
rejected until the cancellation of the infringer's trademark or
the design right.
The only exception this case law was a relatively recent Supreme
Court decision, ruling that the registered Industrial Design right
should not constitute a legitimate ground for use, if the
registration has been filed in bad-faith.
The Draft IP Law, now aims to codify a common provision by which
the registered Trademarks, Patents and Industrial Design
registration rights to not constitute a legitimate defense against
any infringement claim brought by the owner of the earlier IP
right. The provision will evidently require an intensive clearance
search – even in the existence of a registration-
before utilizing any IP right.
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.
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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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