Turkey takes off
With international investment growing, Nigar Guliyeva offers a summary of the country’s changing IP laws.
As international investment into Turkey grows, Turkish Intellectual Property Law is of increasing relevance to global companies. It has been now two years since Turkish IP Law was dramatically updated and consolidated by the introduction of the Industrial Property Code No. 6769 (the “IP Code”).
The new IP Code came into force in January 2017. It replaced a patchwork of laws and decrees with a single, clear framework. Many of these older decrees came into being in the early 1990s. As Turkey negotiated to enter into a customs union with the EU, it rushed to harmonise its IP laws with European Union Law. The EU-Turkey Customs Union came into effect in 1995, and remains in force today. As a result, Turkish IP rights are broadly harmonised with the EU’s “acquis communautaire”.
As a candidate state for EU membership, and as a country keen to encourage foreign direct investment, Turkey has a strong interest in ensuring that it operates a modern and reliable IP regime. All investors need to be confident that their IP has strong protection. However, this tends to be a particular concern for those operating in the technology, pharmaceutical and communications sectors.
The 2017 IP code did not merely consolidate existing Turkish IP Law. It also updated Turkish IP Law with important new provisions, including the introduction of the co-existence principle. In addition, it made a
number of significant procedural and other changes to the law, including by introducing provisions to bring Turkish Patent Law into line with the European Patent Convention.
The IP Code operates alongside the Law on Intellectual and Artistic Works No. 5846 – which codifies Turkish Copyright Law – and Turkish Commercial Code No.6102 – which prohibits unfair competition, including by unlawfully benefiting from a competitor’s IP. These domestic laws in turn sit alongside the many relevant international agreements to which Turkey is a signatory. These include the Paris Convention, the Berne Convention, the Madrid Protocol, The Hague Agreement, the Patent Cooperation Treaty and the European Patent Convention.
Protection for unregistered IP
As is common internationally, Turkish IP law offers protection to both registered and unregistered IP. In terms of unregistered IP, Turkish Law recognises copyright in respect original works generally. Registration of such works is not necessary. However, copyright can be registered with the General Directorate of Copyrights, which is part of the Ministry of Culture and Tourism.
The new IP Code also contains a specific provision for unregistered design rights for novel designs of individual character. This protection lasts for 3 years from when the design was made public.
However, while there is protection of unregistered IP, it is of course far preferable to register IP rights. For instance, while protection of an unregistered design lasts 3 years, a registered design will receive protection for 5 years – renewable every five years to a maximum of 25 years.
Another advantage of registration is that it is easier to enforce registered IP rights, such as trademarks, patents and utility models. Each of these forms of registered IP are treated differently in Turkish Law, in terms of registration, duration and the enforcement options available.
The registration of a trademark in Turkey is valid for 10 years from the date of application. A trademark can be renewed indefinitely for additional ten-year periods upon each renewal.
The process for applying for a Turkish trademark is to submit a completed trademark application form, with the relevant fees, to the Turkish Patent and Trademark Office.
The application form is in the Turkish language and, if the applicant is based overseas, they must use an authorised Turkish trademark attorney. Multi-class applications are permitted. An initial review is conducted to determine whether the initial procedural requirements are met. If this is the case, the application then proceeds to an ex officio examination, which results in a determination as to whether the application is sufficiently distinctive and meets the absolute requirements. If so, the application is published for opposition.
A third party may oppose an application on absolute grounds, such as that the trademark is identical or indistinguishable from a similar earlier trademark for similar goods, or that it is misleading. A third party may also oppose an application on relative grounds, for example by arguing that, if granted, the trademark is likely to cause confusion; or that the application is made in bad faith.
If no opposition is raised within two months, the application is granted and proceeds to registration. In the case of an unopposed application, the entire process from application to the granting of a trademark would typically take around 9 to 12 months. If a trademark application is opposed, opposition proceedings may take an additional 6 to 8 months.
If an application is not granted, it is possible to appeal the decision. An appeal must be filed within two months of notification of a refusal, or of an adverse opposition decision. If a trademark application is ultimately granted, that decision is published in the Official Trademark Bulletin, and the trademark is valid for ten years from the date of application.
It is possible for trademarks to be cancelled if they have not been used for 5 years. Any third party claiming a prior right to the trademark can also make an application to the courts to cancel a trademark. However, if they have not done so within 5 years of the granting of the trademark, any rights they have may well be deemed forfeited, depending on the circumstances.
In order to obtain a patent in Turkey, an applicant has to prove the novelty of their design, that it involves an inventive step, and that it is capable of industrial application.
Certain categories are excluded from patent protection. These include scientific theories, mathematical methods artistic works, or inventions having an aesthetic characteristic. Particular inventions, including human cloning processes, surgical or diagnostic treatment methods are also excluded from patent protection. Inventions deemed to violate public order or morality are similarly excluded from protection.
The process for applying for a patent is not dissimilar to the application process for a trademark. An application must be made to the Turkish Patent and Trademark Office with the appropriate fees. If a decision to grant a patent is made, this is published in the Official Bulletin. Third parties then have six months to object. The grounds for objection include that the patentability conditions have not been met and that sufficient details of the invention have not been disclosed. Once granted, a patent lasts for 20 years.
The IP Code lists specific acts as constituting patent infringement. These include imitating a patented product by manufacturing it without a licence. Knowingly selling, offering for sale, keeping for sale or distributing products so manufactured are also infringements.
Registering a utility model is an alternative way to protect a new invention. Like a patent, a utility model requires an invention to be new and capable of industrial application. However, a utility model does not need to involve an inventive step. These less onerous requirements make utility model registration easier to obtain. The registration process is accordingly simpler and quicker. However, one disadvantage is that utility model registration will only protect an invention for 10 years, whereas a patent lasts for 20 years.
Signs indicating the geographic origin of a product can be registered in Turkey under the IP Code. This means that products which have a reputation for quality linked to an area, region or country can obtain protection. Terms such as Scotch Whisky and Champagne have been registered under this provision.
Registered Design Rights
A design is capable of registration if it is deemed novel and of individual character and has not been made publicly available more than 12 months before the application to register it. As mentioned above, protection for registered design rights last 5 years – and this is renewable every five years to a maximum of 25 years.
The process for application is broadly similar to that for a patent or trademark and applications are handled by the Patent and Trademark Office. However, if the initial application is granted, the design is registered immediately, but on a temporary basis, subject to it being opposed.
Licences for the use of IP may be registered with the Patent and Trademark Office, however this is not compulsory. Registering a licence can however make it easier and quicker for a licensee to enforce their rights.
Specialised courts are available to hear cases of patent and trademark infringement. The Courts of Industrial and Intellectual Property Rights are based in Ankara, Istanbul and Izmir. Elsewhere in Turkey, the Civil Courts of First Instance deal with IP infringement actions. A patent holder must take legal action within 10 years of the infringing act. A trademark holder should ordinarily take legal action within five years of the infringement. However, if the infringement is made in bad faith, there is no limitation period.
The available remedies include preliminary injunctions, damages, seizure of goods and court orders prohibiting infringing acts.
There are no criminal provisions in the Code relating to patent, industrial design and geographical indication infringements. However, general protection is offered by the Turkish Commercial Code No. 6102, which prohibits unfair competition. The definition of unfair competition specifically includes by unlawfully benefiting from the IP of a third party. Such conduct can result in both civil and criminal penalties under the Commercial Code.
There are also specific criminal remedies available for trademark infringement. Anyone commercially selling infringing goods is liable to a prison sentence of between one and three years and a fine. A person infringing a trademark may avoid punishment if they disclose to the authorities the source of the infringing goods, and this information leads to the seizure of goods and the identification of those responsible.
While Turkish Intellectual Property Law is broadly aligned with EU Law and the international norms, it does have particular requirements, which require local knowledge. It is vital that international companies and investors doing business in Turkey are aware of the nuances of Turkish IP Law in order to ensure their IP remains protected.
Nigar Guliyeva, Senior Associate
This article was published in Intellectual Property Magazine