Turkey: New IP Law Trademarks – Geographical Indications Prosecution & Enforcement

The new Law entered into force upon being published in the Official Gazette of January 10, 2017. Here are some major changes introduced by the new Law:

Trademarks

Colors, Motion and Sound Marks

Colors and sound marks have been included in the definition of signs which may be protected as a trademark. More importantly, the requirement of capability to be represented graphically and reproduced by printing is removed in view of existing electronic means, in order to pave the way for motion marks.

Registered Geographical Indications Cited Among the Absolute

Trademark applications consisting solely of or identically comprising the registered geographical indication will be rejected on absolute grounds at the examination phase by the Institute.

Introduction of Consent Letters

The Law introduces the Letter of Consents, by which the owner of an earlier trademark may consent to the registration and the use of an identical or similar trademark, later filed for the same or similar goods or services.

A Letter of Consent should be notarized and submitted to the Institute either simultaneously with the filing of the trademark application or upon refusal.

Opposition Period of 2 months as of Publication Date in the Official Trademark Bulletin

The opposition period - which used to be 3 months - has been shortened to 2 months, still calculated as of the publication date of the application in the official Trademark Bulletin.

Bad Faith Cited as an Explicit Ground for Opposition and Invalidity

Among the grounds for opposition, bad faith is explicitly cited in the Law. The bad faith issue was considered by the Turkish Patent Institute in opposition actions and by the Courts in invalidity actions in practice. Now the practice and law will become harmonized.

Madrid Protocol Trademark Applications' Filing Time

The trademark applications filed via the Madrid Protocol system and designating Turkey will be granted at the first hour and minute of the day received by the office, thereby getting ahead of any national trademark filing on the same day.

Counter Claims of Non-use by the Applicant During an Opposition

The Law enables the applicant of the opposed trademark to require, from the opponent, evidence of the use of the trademark on which the opposition is based, if the opponent's trademark has completed the 5 years of grace period for the non-use. The examination of the opposition will be limited with the goods/ services for which the use has been proven by the opponent. Failure of the opponent to prove the use will result in rejection of the opposition.

Mediation During Opposition Proceedings

The Institute, in an effort to encourage mediation, will be entitled to invite parties to settle the oppositions through mediation as per the Mediation Law.

Cancellation by Turkish Patent Institute (will be in force 7 years later)

The Institute will implement administrative cancellation proceedings within 7 years of entry into force of the Law. These proceedings will include cancellation of a registered trademark on grounds of:

  1. non-use
  2. becoming generic (on the products / services on which the trademark is used),
  3. deceiving public (as to the characteristics, quality or geographical source)
  4. use of guarantee trademark contrary to the technical regulation.

Fair Use Clause Broadened

The fair use definition has been broadened whereby the proprietor shall not be able to prohibit a third party from using a trademark, in the course of trade, for the purpose of identifying or referring to goods or services, where the use of that trademark is necessary to indicate the intended purpose of a product or service, in particular as accessories, spare parts or equivalent parts.

Renewal of Trademarks for Limited Classes/Goods

The Law foresees the possibility of renewal of a trademark on limited classes or listing of goods/services. The provisions will be determined in the Implementing Regulations; nevertheless we do expect a simplified procedure where the trademark owner will opt for the classes and/or goods/services to be renewed. In the current practice, there is only one option, which is the submission of an independent request for limitation of the trademark before the renewal.

Extension of Trademark Infringement Acts

Unlike the current trademark law, the Law specifically provides that the use of a trademark as an essential part of a company/establishment name or its illegal use in comparative advertisements can be prohibited.

Counter Claims of Non-Use by the Defendant in Cancellation and Infringement Actions

The Law states that during the examination of a cancellation action instituted on the basis of the risk of confusion between the trademarks, the non-use of the trademark on which the cancellation action is based can be asserted as a counter-claim by the defendant. Likewise, the Law also states that the non-use counter-claim can be put forward in the trademark infringement actions by the defendant.

Invalidity vs. Cancellation

The former Decree Law refers only to the grounds of invalidity with retroactive effect whereas the current established jurisprudence makes a distinction between the cancellation and invalidity. The Law, in line with current practice, sets the absolute and relative grounds of rejection of a trademark as grounds of invalidity while a few grounds, such as genericness, deceptiveness, failure to use guarantee marks/collective marks according to the technical regulations and non-use, are stated to be grounds of cancellation.

Acquiescence

The Law clearly sets that where the trademark owner has known or should have known about the use of an infringing trademark but did not act against such use for more than 5 uninterrupted years, the trademark owner will not be able to claim the cancellation of the infringing trademark on grounds of its prior trademark registration, unless a third party has acted in bad faith.

Simplified Destruction for Trademark Infringements

In case the number, size and kind of the products subject to a crime cannot be stored, upon the Public Prosecutor securing the necessary samples, the Court can order the destruction of the counterfeit goods at the stage of indictment. This provision will applicable only for trademark counterfeiting.

International Exhaustion of Rights

The Law introduces the international exhaustion of rights principle so as to replace the current national exhaustion principle.

Registered IP Rights – No Longer a Valid Defense Against Infringement Claims

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 preliminary and permanent injunction requests to be delayed or rejected until the cancellation of the infringer's trademark or the design right. The Law now codified a common provision by which the registered trademarks, patents and industrial design registration rights do 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.

Criminal Provision

While the Law introduces criminal provisions for trademark infringements, there are no criminal provisions concerning patent, industrial design and geographical indication infringements.

The Law regulates criminal offences concerning trademarks by stating that producing goods or providing services, exposing for sale or selling, importing or exporting, purchasing, keeping, transferring or storing for commercial purposes, by infringing others registered trademark rights upon use of the same or confusingly similar trademark shall be sentenced to an imprisonment term of between one and three years and to pecuniary fines.

Traditional Product Names

Traditional product names have been included in the definition of intellectual property rights. A traditional product name is defined as a product proven to be used on the respective market for at least 30 years and which is manufactured of traditional raw material or material, via traditional production or processes or traditional compositions.

Audit of Geographical Indication and Traditional Product Names

The term for audit of the use, manufacturing and sale of the geographical indications as well as traditional product names shall be effected annually (previously 10 years) as from the publication date of the registration in the official Bulletin.

The use of an emblem, which is to be created by Institute, is required to be used on the product and / or its packaging, particularly with respect to geographical indications.

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”

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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.