Assessing individual character of design applications

Introduction
Informed user
Comment

Introduction

The Industrial Property Code (6769) (IP Code) grants protection to a product's appearance or a part thereof. According to the code, protection is applied to the appearance of all or part of a product or its ornamentation resulting from features such as lines, form, colour, material or surface texture that fulfil the novelty and individual character criteria. In other words, designs which lack novelty and individual character do not fulfil the code's protection requirements.

The novelty requirement acknowledges that no identical design should have been made available to the public anywhere in the world before the registration date. However, the assessment of what constitutes individual character under the IP Code differs from the Turkish Patent and Trademark Office's (TURKPATENT's) novelty examination.

A design is accepted as having individual character if its overall impression could be distinguished by a so-called 'informed user' from a prior design made available to the public. Therefore, if the informed user considers the overall impression of a new design to be different from a design previously made available to the public, the latter design will be considered eligible for protection.

Informed user

The informed user statement set out in TURKPATENT's recent Design Examination Guide, published on 1 July 2019 and clearly referencing European Court of Justice (ECJ) Decision C-281/10 P, reveals that it was prepared in view of EU Intellectual Property Office (EUIPO) practice.

In other words, TURKPATENT will examine the individual character of designs in line with EUIPO practice, under which an informed user should be able to distinguish a new design from previously available designs. According to the ECJ, an 'informed user' is someone who falls between the so-called 'average consumer', comparing trademarks without any special knowledge, and an expert with technical knowledge in the relevant sector.

ECJ Decision C-281/10 P was the first design conflict to discuss and interpret the concept of informed user as falling between the average consumer (for trademark similarity examination purposes) and an expert in the relevant sector. Arguably, an informed user is therefore someone who is more attentive than the average consumer and can make a direct comparison of the designs under review.

In recent years the Turkish Supreme Court has echoed ECJ precedent in this regard, having considered an informed user to be more attentive than the average consumer (ie, having knowledge or experience of using the relevant designs but no expertise in the relevant sector).

Court precedent that reflects EUIPO practice and is applied during third-party opposition filings before TURKPATENT can play a highly suggestive role when determining the individual character of a design seeking protection. Consequently, a third-party opposition mechanism based on lack of distinctiveness would reduce the risk of competitors using products which cannot be distinguished and unjustly profiting therefrom. Registration certificates obtained under false merits and thus easily invalidated could invite unfair complications and extensive legal action.

Comment

The reliability of examining design registrability before TURKPATENT is important for future infringement and invalidity actions. Historically, the need to protect novel and distinctive designs has increased competition and development in relevant sectors, while designs without these features could not benefit from such protection.

Since the IP Code entered into force in January 2017, design registrations suggest that TURKPATENT is closely following EUIPO practice in terms of granting protection.

For further information on this topic please contact Asli Tireli at Deris Attorney At Law Partnership by telephone (+90 212 252 6122) or email (asli.tireli@deris.com). The Deris Attorney At Law Partnership website can be accessed at www.deris.com.tr.