- Industrial Property Law Bill
- September 27, 2016
- Law Firm: Erdem Erdem Law Office - Istanbul Office
Aim of the Bill
With the Industrial Property Law Bill (“Bill”) presented to the Turkish Grand National Assembly on April 6th, 2016, it is intended to protect the rights with regard to trademarks, geographical indications, designs, patents, utility model and traditional product names. As specified in the preamble of the Bill (“Preamble”), in parallel with Turkey's economic development, there has been significant progress in the field of industrial property rights, the applications of patents, designs and trademarks, in particular, have significantly increased. In line with the improvements in the industrial property field, and for the purpose of ensuring compliance with European Union regulations and international agreements, the Bill was drafted and, in this regard, it is expected to bring solutions to the problems encountered in practice, and to contribute to the realization of technologic, economic and social progress.
The Bill combines all separate and ununiformed regulations of trademarks, patents, industrial designs and protection of geographical indications under a single roof. As well, as specified in the Preamble, in the previous two years, the Constitutional Court has decided upon the repeal of certain provisions of Decree-Laws No. 551 and 556 due to the fact that they are contrary to Article 91/1 of the Constitution with the following justification: “Intellectual and industrial property rights that are under the scope of intangible goods are one of the property rights regulated under Article 35 of the second part of the Constitution, entitled ‘Rights and Duties of an Individual,’ and since the first paragraph of Article 91 of the Constitution states that “Without prejudice to the martial rule and state of emergency, fundamental rights, individual rights and responsibilities regulated under the first and second section of the Constitution, and political rights and duties contained in the fourth section thereof cannot be regulated by the decrees.” In this regard, by means of regulating all of the industrial property rights that are under the scope of property rights, one of the fundamental rights by law, the Bill was prepared in order to prevent the cancellation of the Constitutional Court, and to enact the regulations by the law.
Even if it is unclear as to when this Bill would be enacted, it is possible that with the entry into force of this Bill, major developments and changes in industrial property field would be birthed. Some of the major regulations brought by the Bill are briefly examined, below.
What does the Bill aim to bring?
The First Part of the Bill regulates trademarks. With this Bill, more efficient use of registered trademarks in the market, prevention of the registration requests for trademarks that are unlikely to be used, and encouraging the use of trademarks are intended.
The logos that could be used as trademarks are reorganized under the Bill in compliance with Article 15 of TRIPS, the new EU Trademark Directive, and the EU Trademark Regulation. In lieu of the current regulation stating that although the trademarks are required to be any type of logos being represented graphically, the Bill sets forth that a trademark may consist of a sign that may be lodged with the registry, provided that it clearly identifies the subject of the protection granted to the trademark holder. In line with economic and, in particular, technologic developments, the Bill paves the way for registration of many kinds of trademarks, such as the sound and motion trademarks in Turkey, as they are registered in many other jurisdictions. Additionally, the Bill does not adopt the numerus clauses principle in specifying the logos to be used as trademarks.
Absolute and relative grounds for the refusal of a trademark registration are redrafted with the Bill. In paragraph 4 of Article 6 of the Bill regulating the relative grounds for registration of a trademark, the applications for the trademarks of well-known trademarks according to 6bis of the Paris Convention that has identical or similar goods and services may be refused upon opposition. The above-stated regulation that is currently covered under the title of ‘absolute grounds’ in Decree-Law No. 556 is put under the title of ‘relative grounds’ in accordance with the EU and in international practice.
Pursuant to the Bill, any opposition to the registration of a trademark published in the Bulletin shall be submitted by the relevant persons within two months as of the publication of the application. It might be said that the registration period is intended to be shortened by means of decreasing the opposition period from three months to two months.
Article 189 of the Bill specifies the repeal of trademarks by the Turkish Patent Institute (“TPI”) that shall enter into force seven years after the publication of the Industrial Property Law. In accordance with such regulation, if, within a period of five years following the registration, the trademark has not been put to use in Turkey without a justifiable reason, or if the use has been suspended during an uninterrupted period of five years, the trademark shall be repealed. Also, if a trademark becomes a commonly used name for the goods and services that the trademark is registered with as a result of its right holder not taking the necessary precautions if a trademark that is of such a nature so as to deceive the public, such as to the nature, quality, place of production or geographical origin, in the event of misuse against the guaranteed trademark or common trademark technic specification, such trademark shall be repealed.
As per Article 14 of the Bill, an international application rendered within the scope of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Trademarks shall have the same results as the application that has been made directly to the TPI.
Geographical Indication and Traditional Product Name
The Bill provides protection to traditional product name, as well as the geographical indication. EU Regulation No. 1151/2012 on Quality Schemes for Agricultural Products and Foodstuffs has been taken as an example in preparation of the Bill. The products that do not enter within the scope of geographical indication, but which have the traditional characteristics, shall be protected by the registry as the ‘traditional product name.’
Decree-Law No. 555 does not contain any objection procedure that is granted for the applications refused in the examination process. However, in accordance with the Bill, the applicants may object to the TPI on its decision within two months as of the notification date of the decision. Also, the six-month objection process against the applications published in the Bulletin was decreased to three-months, in order to shorten the registration period.
The information contained in the applications for geographical indication in accordance with Statuary Decree-Law No. 555 is published in the Official Gazette, the local newspaper and newspapers with large circulations. Since publication in the newspapers with large circulations is costly, the Bill introduces the publication of the application only in the Bulletin in order to decrease the announcement costs.
Pursuant to the Implementing Regulation under Decree-Law No. 555 on the Protection of Geographical Indications, the reports with regard to the audits that must be conducted by the registrants must be submitted to the TPI every ten years; however, the Bill decreases this period to two years, and aims to activate the auditing process.
Additionally, with the Bill, in order to establish a new head of department having the capacity of meeting the requirements of the country, it is decided to restructure the operations performed by the Head of Department of Trademarks under the Head of Department of Geographical Indications.
Patent and Utility Model
With the Bill, certain regulations on the patent and utility models are introduced, such as, simplifying and fastening the process of granting patents, and utility models for eliminating the problems encountered in practice, abolishing unexamined patent system that causes major legal problems between the right holders and the firms, and is open to misusing, objection to the granted patents following the registration, preparation of research report for the utility model applications, granting the right of ownership for the findings of the university members to the higher education institutions for the purpose of revealing the finding potential of the university members, and integrating them into the economy. In this regard, it is aimed to enhance the structure of the patent and utility model system.
Pursuant to the Third Part of the Bill entitled ‘Design’, it is intended to bring solutions to the problems encountered in practice, and ensuring full compliance with the European Union regulations and international agreements, particularly with the Hague System for the International Registration of Industrial Designs in order to render the legislation systematic and simple for finalizing the transactions in line with the needs of the users quickly, and with minimal bureaucracy.
Although Decree-Law No. 554 includes the ‘Industrial Design’ term, the Third Part of the Bill includes only the word ‘Design’ due to the fact that a product where the design is used or applied to does not need to be produced by industrial means.
In accordance with another embodiment of the Bill, the procedures and principles related to the examination of the application for registration of design is re-defined. The registration requests that are not in conformity with the definition of design and product, this includes any improper use against public order and public ethics, becomes public in terms of religious, historical and cultural values, and the inappropriate use of the logos that are not granted to be registered, and the registration requests that are recognized as not new shall be refused ex-officio by the TPI. Additionally, as to another important regulation embodied in the Bill, the six-month objection process to the design applications published in the Bulletin was decreased to three-months, in order to shorten the registration period.
Moreover, employers shall be the right-holder of the designs devised by the persons deemed as instructors by Higher Education Law No. 2547, persons working in state institutions, and organizations, students and interns who work free of charge and for an indefinite period of time.
In line with the improvements in the industrial property field, and for the purpose of ensuring compliance with European Union regulations and international agreements the Bill has drafted and, in this regard, it is expected to bring solutions to the problems encountered in practice, and to contribute to the realization of technologic, economic and social progress. With the entry into force of the Industrial Property Law, certain provisions of Laws No. 5000 and 5147, Decree-Law No. 551 Pertaining to the Protection of Patent Rights, Decree-Law No. 554 Pertaining to the Protection of Industrial Designs, Decree-Law No. 555 Pertaining to the Protection of Geographical Indications, and Decree-Law No. 556 Pertaining to the Protection of Trademarks shall be abolished.