In the 1990s,Turkey swiftly prepared and published decree-laws related to IP rights in order to fulfill its obligation of adopting national legislation related to IP rights with EU regulations so to become a member of the Customs Union. Decree-Laws which have the power of law were preferred since the procedure for passing them is less cumbersome and faster.They should have been converted into laws following the membership of Turkey to the Customs Union; however they remained as decree-laws until the publication of the IP Code No. 6769 on 10 January 2017.
Decree-laws have a contradictory nature in Turkish Constitutional Law. Indeed, the Constitutional Court annulled a few provisions of the IP decree-laws based on Article 91 of the Constitution which states that property rights cannot be regulated by decree-laws and instead they should be regulated by codes.The last annulled provision was Article 14 of the Decree-Law No. 556 relating to revocation of non-used trade marks and the annulment decision was published in the Official Gazette just a few days before the publication of the IP Code.The Parliament preferred for the last few years to integrate annulled provisions into the present decree-laws and therefore, there was an intense need for a comprehensive IP Code.
According to the general preamble of the IP Code, it is prepared to adopt recent developments in EU IP law, abstain from the annulment decisions of the Constitutional Court and render the relevant regulations clearer, more understandable and systematic.
The IP Code unites all IP rights, i.e., trade marks, patents, industrial designs, utility models, geographical indications and traditional product names.The code consists of five chapters, 193 articles and 6 provisional articles. Most of the provisions in the IP decree-laws were inserted into the code and revisions were made in line with the Draft Law no. 1/756 which how- ever failed to pass in Parliament and therefore became obsolete in 2013. Book 1 of the IP Code regulates trade marks, Book 2 regulates geographical indications and traditional product names, Book 3 regulates designs, Book 4 regulates patents and utility models and Book 5 regulates common provisions.Article 188 changes the name of the Turkish Patent Institute to Turkish Patent and Trademark Office (TPTO).
When we look at the novelties brought by the IP Code, we see at first that the IP Code uses the term 'industrial property' and in Article 2-(ı), 'industrial property right' is defined as 'Trade mark, geographical indication, industrial design, patent and utility model.' Indeed, even the name of the Code is the 'Industrial Property Code'.
Even though the IP Code repealed the IP related decree-laws, provisions of the repealed decree-laws will be implemented for the pending trade mark and design applications filed before the IP Code entered into force according to Provisional Article 1.
The IP Code introduces the 'co-existence principle' for trade marks. According to Article 5-(3) of the IP Code, the TPTO cannot ex-officio refuse a trade mark application on the grounds that it is identical with or indistinguishably similar to a trade mark registered or previously applied for registration for the same or same kind of goods/services, if a notarized letter of consent from the senior trade mark owner to the registration of the application is submitted to the TPTO. This is important to overcome the present ex officio refusal authority of the TPTO under Article 7/1(b) of the Decree-Law No. 556 which blocked registration of many trade mark applications.
According to Article 26, the TPTO has the right to revoke a trade mark on the grounds that (1) if, within a period of five years following publication of registration, a trade mark has not been put to use without justifiable reason for the registered goods or services, or its use has been suspended for an uninterrupted period of five years; (2) if, a trade mark becomes a generic name for the goods and services within its scope, due to the acts of the trade mark owner; (3) if, as a result of the use made by the trade mark owner or the person authorized by him, there exists likelihood of confusion on the part of the public as to the nature, quality and geographical origin of the goods and services within its scope. However, this provision will only enter into force seven years hence and until then the right to revoke a trade mark in line with the above three situations will belong to the competent IP Courts.
According to Article 19-(2), during the opposition proceedings, the TPTO will demand evidence from the opponent to show genuine use of its trade mark in Turkey which constitutes grounds for opposition for the five years prior to the application date of the opposed application or justified reasons for non- use, on condition that the applicant of the opposed trade mark application requests so and the trade mark upon which the opposition is based has been registered in Turkey at least five years before the application date of the opposed applica- tion. If the opponent cannot prove genuine use of its trade mark, the opposition will be refused. If the opponent proves genuine use of its trade mark only for some of the goods/services within its scope, the opposition will be examined only based on these goods and services.This 'counter non-use claim' can also be used as a defense in infringement and invalidation actions.
There was no clear provision for the time frame of 'loss of right by remaining silent' principle in the Decree-Law No. 556. The Court of Appeal accepts that the right holder can lose his rights by remaining silent for a long time, even if the counter party is in bad faith. It is stated in the Turkish doctrine that the time frame must be determined by taking into consideration the conditions of tangible case and pursuant to the 'Principle of Honesty'. Article 25-(6) states that 'In case a trade mark owner has remained silent for the five consecutive years where he knows or should know that the later dated trade mark is used, he cannot allege its trade mark as an invalidation ground unless the subject trade mark registration was filed in bad faith.' Therefore, a 5 years period is clearly accepted as the time frame for 'loss of right by remaining silent' principle.
Article 163 brings 'fast destruction procedure'. Accordingly, in case the seized counterfeit products are subject to damage, to substantial loss of their value or their preservation constitutes a serious burden, following the expert examination, the Court can decide their destruction upon the request of the prosecutor before a final decision on the merits of the case is rendered.
The other new provisions within the IP Code relating to trade marks are as follows:
" Article 4 brings a new condition for signs to be registered as trade marks which is:'can be shown in the Registry ensuring that the subject of the protection provided to the trade mark owner is clearly and explicitly understandable' and changes the terminology from 'all kinds of signs being represented graphically such as words, including personal names, figures, letters, numbers, shape of the goods or the packaging thereof ' and 'similarly descriptive means capable of being published and reproduced by printing' to 'all kinds of signs such as words, including personal names, designs, colors, letters, numerals, sounds and shape of the goods or their packaging,' so as to be in line with the terminology given in Article 3 of the Directive (EU) 2015/2436 of the European Parliament.
" Signs which contain registered geographical indications cannot be registered as trade marks as per Article 5-(i).
" Bad faith filing is regulated as a separate ground for opposition and invalidation in Articles 6-(9) and 25-(1).
" Timeframe for filing an opposition against an application has been shortened from three to two months with Article 18.
- According to Article 6-(4), trade mark applications identical to or similar with well-known trade marks in the context of Article 6bis of the Paris Convention will be rejected upon opposition in respect of the same or similar goods or services.This is also regulated as a ground for invalidation.This article is important since the protection of well-known trade marks in the context of Article 6bis of the Paris Convention in the Decree-Law No. 556 was cancelled by the Turkish Constitutional Court in 2015.
- According to Article 7-(5) (c), a trade mark owner cannot prevent third parties from using its trade mark on accessories, spare parts or equivalent parts, where it is necessary to specify the purpose of use of the goods or services, provided that such use is compliant with the principles of good faith and commercial life.The terminology for exceptions to the scope of the rights arising from a trade mark registration was changed to be compatible with the terminology of Article 14 of the EU Directive No. 2015/2436.
- The IP Code adopted the principle of international exhaustion unlike the Decree-Law No. 556 which accepted national exhaustion principle of IP rights. According to Article 152, acts related with the products subject to protection of industrial property rights shall fall outside the scope of the rights, where such acts occurred after those goods had been released into the market by the right owner or with his consent. Consequently, exhaustion of IP rights has been limited to the products released to the market and does not apply to next-generation products before they have been released.
- Lastly, contrary to the precedents of the Court of Appeal, having a registration will not automatically mean that there is no infringement, since according to Article 155, the owner of a trade mark, patent or design right, cannot assert its registered IP right as a defense in an infringement action filed by a priority right owner.Turkey is a rising star among the global economies and well-protected IP rights is one of the keystones to having a strong economy.The IP Code brings complete or partial solutions to some of the main problems of the Turkish trade mark law and we will observe the practical impacts of the IP Code following the adoption of the implementing regulations by the TPTO and implementation of the Code by the TPTO and the Courts.
First published by PTMG – Law Lore & Practice, in 01.05.2017
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