Turkey is preparing to replace its existing decree-laws concerning the protection of trademarks, patents, industrial designs and geographical indications with a draft IP law, which was released for public consultation between February 24 and March 4 2016 and then referred to Parliament for enactment.
Colour, motion and sound marks
Colour and sound marks have been included in the definition of signs that may be trademarked. 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 as absolute grounds of refusal
Trademark applications consisting solely of or comprising a registered geographical indication will be rejected on absolute grounds at the examination phase by the Patent Institute.
Introduction of consent letters
The draft IP law introduces a letter of consent, by which the owner of an earlier trademark may consent to the registration and use of an identical or similar trademark filed for similar goods or services. A letter of consent should be notarised and submitted to the Patent Institute together with the trademark application or on refusal.
Two-month opposition period
The three-month opposition period has been shortened to two months and is still calculated as of the publication date of the application in the official Trademark Bulletin. The bulletin has been published bi-monthly since the start of 2016.
Bad faith as explicit ground for opposition and invalidity
Bad faith is explicitly cited in the draft IP law among the grounds for opposition. The Patent Institute and the courts already considered bad faith in opposition and invalidity actions; this practice and the law will become harmonised.
Madrid Protocol trademark applications
Trademark applications filed via the Madrid Protocol system that designate Turkey will be granted from the first hour and minute of the day on which they are received by the Patent Institute, thereby ahead of any national trademark filing on the same day.
Counter claims of non-use during opposition
The draft IP law enables the applicant of an opposition trademark to require evidence of the use of the trademark on which the opposition is based if the opposed trademark's five-year grace period for non-use has expired. The examination of the opposition will be limited to goods and services for which use has been proven by the opponent. Failure of the opponent to prove use will result in rejection of the opposition.
Mediation during opposition proceedings
In an effort to encourage mediation, the Patent Institute will be entitled to invite parties to settle oppositions through mediation as per the Mediation Law.
Cancellation by Patent Institute
The Patent Institute will implement administrative cancellation proceedings within seven years of the draft IP law's entry into force. These proceedings will include cancellation of a registered trademark on the grounds of:
- non-use;
- becoming generic (as regards the products or services for which the trademark is used);
- deceiving the public (as to the characteristics, quality or geographical source); and
- use of a guaranteed trademark contrary to technical regulations.
Fair-use clause broadened
The 'fair-use' definition has been broadened, whereby the proprietor will be unable 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 required to indicate the intended purpose of a product or service – in particular, as accessories or spare or equivalent parts.
Renewal of trademarks for limited classes or goods\
The draft IP law foresees the possibility of the renewal of a trademark for limited classes or a listing of goods or services. The provisions will be determined in the implementing regulations; nonetheless, a simplified procedure where the trademark owner will opt for the classes and or goods or services to be renewed is expected. At present, there is only one option: the submission of an independent request for limitation of the trademark before the renewal.
Extension of trademark infringement acts
Unlike the existing trademark law, the draft IP law specifically provides that the use of a trademark as an essential part of a company or establishment name or its illegal use in comparative advertisements can be prohibited.
Counter claims of non-use by defendant in cancellation and infringement actions
The draft IP law states that, during the examination of a cancellation action instituted on the basis of the risk of confusion between trademarks, the non-use of the trademark on which the cancellation action is based can be asserted as a counterclaim by the defendant. The draft IP law also states that a non-use counterclaim can be put forward in trademark infringement actions by the defendant.
Invalidity and cancellation
The draft IP law refers only to the grounds of invalidity with retroactive effect, whereas the established jurisprudence makes a distinction between cancellation and invalidity. In line with existing practice, the draft IP law sets the absolute and relative grounds of rejection of a trademark as grounds of invalidity, while grounds such as genericness, deceptiveness, failure to use guarantee or collective marks according to the technical regulations and non-use are grounds for cancellation.
Acquiescence
The draft IP law clearly states that where a trademark owner has known or should have known of the use of an infringing trademark, but did not act against such use for more than five uninterrupted years, the trademark owner will be unable to claim the cancellation of the infringing trademark on the 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 type of products subject to a crime cannot be stored, the court can order the destruction of counterfeit goods at the stage of indictment once the public prosecutor has secured the necessary samples. The provision will be applicable only for trademark counterfeiting.
International exhaustion of rights
The draft IP law introduces the international exhaustion of rights principle to replace the existing national exhaustion principle.
Registered IP rights no longer valid defence against infringement claims
It was accepted that trademark and industrial design rights which had been successfully registered with the Patent Institute constituted a legitimate right against an infringement claim, unless the registered right had been cancelled and removed from the registry. Such case law caused preliminary and permanent injunction requests to be delayed or rejected until cancellation of the infringer's trademark or design right. The draft IP law aims to codify a common provision by which registered trademarks, patents and industrial design registration rights do not constitute a legitimate defence against an infringement claim brought by the owner of the earlier IP right. The provision will evidently require an intensive clearance search before an IP right can be used.
Criminal provision
While the draft IP law introduces criminal provisions for trademark infringements, there are no criminal provisions concerning patent, industrial design and geographical indication infringements.
The draft IP law regulates criminal offences concerning trademarks. Producing goods or providing services for sale, import or export for commercial purposes that infringe registered trademark rights will result in a prison term of between one and three years and pecuniary fines.
Geographical indications and traditional product names
Traditional product names
Traditional product names are included in the definition of 'IP rights'. A 'traditional product name' is defined as a product proven to have been used on the respective market for at least 30 years and which is manufactured using traditional raw materials or via traditional production methods.
Audit of geographical indication and traditional product names
The audit term for the use, manufacture and sale of geographical indications and traditional product names will be effected biannually from the date of registration in the Trademark Bulletin.
The use of an emblem, to be created by the Patent Institute, is required on the product or its packaging, particularly with respect to geographical indications.
For further information on this topic please contact Kerim Yardimci at Deris Attorneys At Law Partnership by telephone (+90 212 252 6122) or email ([email protected]). The Deris website can be accessed at www.deris.com.tr.
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