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Seizure of goods before liquidation directorate: an effective way to combat counterfeiting activitiesTurkey | 06 July 2020
Although customs recordals are one of the most efficient ways to combat counterfeiting activities in Turkey, if goods are smuggled and suspended by customs officers or the police ex officio under the Anti-smuggling Law, IP rights holders cannot act against any suspected counterfeiting activities. However, sales of counterfeit goods may be prevented if IP rights holders are aware of the suspended goods before the directorate general of liquidation and report any suspected infringements expeditiously.
A third party's unauthorised modification or replacement of original packaging, product codes or trademarks to produce misleading claims of origin and eliminate a trademark's origin function is considered trademark infringement by means of rebranding and re-marking in principle, even though the goods are basically original. This article examines these actions within the scope of common trademark infringement and counterfeiting and the legal consequences of re-marking under the Industrial Property Code.
Since the World Health Organisation declared COVID-19 a global pandemic, compulsory licensing has remained a hot topic in the IP world. As of 30 April 2020, Turkey had 120,204 confirmed cases of COVID-19. Although the official authorities have so far made no public announcements concerning compulsory licensing, this article sets out why Turkey has a significant role to play in the discussion.
In an IP context, bad faith is a subjective state based on an applicant's intentions when filing to register a trademark. Trademark practice and law were harmonised under the Industrial Property (IP) Code, which cites application in bad faith as a grounds for opposition. However, as neither the IP Code nor any other Turkish law sets out a precise definition of 'bad faith', the term is open to interpretation.
In a landmark decision, a first-instance court recently ruled on the re-establishment of rights as a remedy for requesting the validation of a European patent where its Turkish translation has not been filed within three months of the date on which the mention of the grant is published. The decision also addressed the recognition of a European patent application as a validly filed national application.
Law 5651 on Regulating Broadcasting on the Internet and Fighting Against Crimes Committed through Internet Broadcasting includes provisions on the responsibilities of content, hosting and access providers to combat online counterfeiting. However, the fact that existing regulations lack specific content liability for online marketing platforms may inhibit consumers and related third parties from enforcing their rights if they purchase counterfeit products.
Turkey has adopted a number of regulations to combat online counterfeiting and determine internet service provider responsibilities. However, the current system is inconsistent due to the different interpretations of whether counterfeiting falls within the scope of Article 9 of the Internet Law.
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.
The Constitutional Court recently handed down an important decision regarding freedom of speech and unfair competition claims following the use of a company's trademark in an online domain name. This decision shows how the court handles cases in which fundamental rights such as freedom of speech and IP rights compete, especially in the service industry sector.
The physical appearance, name, expressions used and other distinctive components relating to or associated with copyrighted works or characters may enjoy trademark protection in Turkey irrespective of whether they are registered there. The aim of this approach is to prevent third parties from profiting from infringing trademarks.
The Supreme Court recently issued a decision regarding non-use cancellation actions and the retroactive enforcement of Article 9 of the Industrial Property Code (IP Code). The decision has clarified the longstanding debate and unpredictability concerning the implementation of the IP Code's non-use provision. The courts will now implement Article 9 against non-used trademarks without hesitation.
With a substantial increase in the number of copyrighted works shared online in today's digital world, takedown requests have gained increased importance in combating online copyright violations. At present, takedown requests are governed by the Copyright Act and require a slow-moving notification procedure. However, the Draft Copyright Act has proposed, among other things, allowing rights holders to request that the public prosecutor block access to infringing content in urgent cases.
Turkey's trademark classification system does not cover the term 'mobile applications' specifically. However, software and computer programs fall within the scope of Class 9 of the classification system. As mobile apps are classified as software or programs, trademark protection under Class 9 only may be insufficient for apps that also cover services in other classes. This article examines how best to protect mobile apps under the Trademark Law.
The absence of a clear reference to small shipments in customs legislation has created doubt over whether customs officers should seize small shipments of counterfeit goods. This unfortunately encourages manufacturers of counterfeit goods to minimise the risk of seizure by using small shipments. However, the government looks set to enact a new Customs Law to regulate small shipments and protect rights holders.
As specialised IP court judges do not have technical backgrounds, expert reports are essential in patent litigation. As a general practice, the courts obtain reports concerning an alleged infringement, invalidity claim or compensation claim from the court-appointed experts during the trial. Given the number of expert reports provided in patent litigation, cross-examination is vital as it allows the courts to gain an understanding of the matter at hand.
The Istanbul IP Court recently dismissed a copyright infringement action involving a compensation claim on the grounds that the plaintiff had not fulfilled the procedural requirement to apply for meditation before filing the court action. The court's decision was based on Law 7155, which requires the implementation of a mediation procedure before instituting a court action. This article examines the effect that mandatory mediation will have on IP disputes.
The popularity of e-commerce websites in Turkey has grown in recent years. However, while e-commerce websites are important for the economy, their relationship with trademark protection is a controversial topic, as e-commerce website owners provide a platform through which other retailers can sell their products rather than producing products themselves. This article examines the steps that holders and e-commerce websites should take to ensure that their trademarks are fully protected.
The Federated European Patent Register provides information regarding the legal status of EU patents. Among other things, the register provides a direct link to national patent registers, which makes it easier to obtain up-to-date information on the status of patents. Although there is room for further improvement, the register provides quick and easy access to the basic post-grant legal status of EU patents.
Turkey exported TV content worth $350 million in 2017, becoming the second largest exporter of TV drama in the world. However, the question of whether TV formats enjoy copyright protection under the Copyright Act has long been debated in Turkey. This article examines the legal doctrine and recent Supreme Court of Appeals case law in this regard in order to examine the copyright protection afforded to TV formats and programmes.
The new Industrial Property Code (IP Code) grants protection through registration for designs that fulfil its novelty and individual character criteria. Under the IP Code, the Patent and Trademark Office is entitled to carry out ex officio examinations of novelty in order to grant protection in this regard. The examination of the novelty of design applications under the IP Code is expected to reduce the amount of third-party oppositions and increase the quality of design registrations.
DyStar recently succeeded in securing the destruction of 3.3 tons of textile dyes that had infringed one of its patents for reactive red dyes. The dyes were detained at the Mersin Free Zone following DyStar's customs application. This is the latest success in the company's anti-counterfeiting programme in Turkey, which has so far resulted in more than 100 tons of infringing products being seized.
Recent case law shows that despite changes to the wording of the new Industrial Property (IP) Code, prior practice concerning goods in transit persists at the administrative (Customs) level and the judicial level (at least at the first-instance level). However, the lack of clear reference to counterfeit goods in transit must to be clarified to avoid potentially inconsistent decisions due to the different interpretation of the new IP Code.
The criminal courts require trademark infringement claims to be supported by objective and convincing evidence. Search and seizure warrants may be issued even where there is reasonable doubt over the existence of evidence; however, 'reasonable doubt' is not legally defined. Given the fact that non-specialised judges evaluate search and seizure warrant requests and the broad interpretive scope of 'reasonable doubt', inconsistent decisions are common in practice.
The European Commission recently released a report concerning Turkey's progress regarding the alignment of its laws with the European Union's acquis communautaire. The report states that the Industrial Property Law's entry into force was a positive step in aligning trademarks and design legislation with EU IP law and updating Turkey's IP rights system in accordance with international agreements and practices.
It is always advisable to register a work to ensure the effective enforcement of rights therein. There are a number of benefits to copyright registration in Turkey, including the possibility for rights holders to apply for banderoles, which are used on licensed copies to prevent piracy. In addition to banderoles, registration certificates can be used to apply to Customs to monitor a copyright, as well as to prove ownership and determine the context of copyrighted works in possible civil and criminal actions.
The new Industrial Property Code has made it possible for trademark applicants to put forward a non-use claim as a defence and settle an opposition via mediation. At present, non-use counterclaims and mediation seem to be available only for national trademark applications. This situation is likely to create a disadvantage for international trademark holders whose marks are extended to Turkey via the Madrid Protocol.
The new Industrial Property Code 6769 has introduced new provisions regarding patent enforcement. The code aims to improve the quality of patented inventions and harmonise Turkish patent law with EU legislation and the international agreements to which Turkey is a party. Although the new IP Code has yet to be fully harmonised with the European Patent Convention, it is expected that these gaps will be filled when parties enforce their patent rights before the courts.
Employee inventions and designs are two of the new Industrial Property Code's main areas of intervention. The recently issued ad hoc regulation introduces the criteria and parameters to determine and calculate fees to be paid to employee inventors, the legal basis for which was missing until now. However, the new code and the regulation contain points which are open to interpretation, which will influence the practice and implementation of these new rules.
The Regulation on Duty-Free Stores was recently published in the Official Gazette. It sets out requirements regarding the establishment and operation of duty-free stores, how goods enter and exit warehouses and record-keeping obligations for duty-free store operators. Under the regulation, the legal and penal penalties regarding the infringement of industrial property and IP rights under the new IP Code and other IP legislation will apply directly.
The new IP Code contains provisions regarding the profession of patent and trademark attorneys, while an ad hoc regulation issued under the new IP Code establishes the code of conduct by which patent and trademark attorneys are bound. The new IP Code and the regulation are set to have a major impact on the profession as they establish new rules regarding the responsibilities of patent and trademark attorneys, especially from a disciplinary standpoint.
Mediation is a cost-effective and efficient procedure to solve industrial property disputes while preserving, and at times even enhancing, the relationship between the parties. The Patent and Trademark Office was recently empowered to propose mediation as an alternative dispute resolution mechanism during the trademark opposition procedure under the new Industrial Property Code 6769.
The new Code of Industrial Property, which repealed the previous decree-laws on patents, utility models, trademarks, designs and geographical indications, recently entered into force. Under the code, the statutory period for using a patent is three years from the publication of the granting decision or four years from the application date, whichever is later. Further, the use of a patent will not be discontinued without a legitimate reason for an uninterrupted three-year period.
Turkey recently adopted the new Code of Industrial Property 6769, which repeals and replaces the decree-laws on patents, utility models, trademarks, service marks, industrial designs and geographical indications. The new code entered into force on January 10 2017, following publication in the Official Gazette. As the code contains provisions regarding the internal organisation of the Turkish Patent Institute and the profession in general, it is set to change the Turkish IP landscape profoundly.
Parliament recently enacted the new IP Law, which will enter into force once it has been approved by the president and published in the Official Gazette. The law is based on the draft IP law released for public consultation between February 24 and March 4 2016 and will introduce some major changes regarding the protection of trademarks, patents, industrial designs and geographical indications.
Decree-Law 551 on the Protection of Patent Rights does not enable third parties to oppose patent grant decisions. In contrast, the draft IP Law proposes the introduction of a new stage of post-grant opposition and details the grounds for opposition and procedural steps for opposing patent grant decisions. The post-grant opposition could provide cost and time-effective protection against competitor patents.
A recent Turkish Patent Institute Higher Council decision determined that the refiling of a trademark that is subject to a cancellation action cannot be deemed to have been made in good faith, and that prior registration does not constitute an acquired right to the new application. The decision is an important and expected development in preventing the accumulation of non-use trademarks in the Trademark Register.
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. Among other things, the proposed changes enable colour, motion and sound marks to be trademarked, introduce consent letters, encourage mediation to settle oppositions and introduce criminal provisions for trademark infringements.
The draft IP law proposes new grounds for absolute refusal regarding registered geographical indications and the Patent Institute's authority to refuse ex officio all indications that comprise or contain a registered geographical indication. Under the draft law, bad faith would also become a clear ground for relative refusal in opposition proceedings.
Cancellation requests based on non-use can be made only before the IP courts; the Patent Institute cannot prosecute such requests. However, the draft IP Law proposes changes that will enable third parties to contest a trademark on the basis of non-use before the Patent Institute instead of a court. Under the changes, the institute will be entitled to decide on the total or partial cancellation of a registered trademark.
Turkey is preparing to replace the existing decree-laws concerning the protection of trademarks, patents, industrial designs and geographical indications with the draft IP Law. The draft has been subject to a public consultation and has now been sent to Parliament for enactment. The main changes relate to patents, utility models and industrial designs.
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 an earlier IP right. The provision will require an intensive clearance search, even where a registration exists, before an IP right can be used.
Under Decree-Law 556 on Trademarks the Patent Institute may not evaluate the use of a trademark during the examination of an objection or opposition to a trademark application. However, a draft IP law proposes that during the examination of an opposition, the Patent Institute will be entitled to ask the opponent to prove the use of the trademark on which the opposition is based.
Decree-Law 551 on the Protection of Patents makes no specific reference to the patentability of biotechnological inventions. In this regard, the draft IP law states that simple discoveries of human gene sequences are not patentable and provides no definition of 'biotechnological inventions', leaving the issue to be defined and shaped by case law.
A new draft IP law includes a provision to clarify ambiguities regarding process patents under Decree-Law 551 on Patents and Utility Models. Under the draft IP law, courts will have the discretion to shift the burden of proof where an infringed patented process is not connected to a new product; whereas if an infringed process relates to a new product, the burden of proof will rest with the defendant.
The Patent Institute recently amended the monthly publication of trademark applications for third-party oppositions. The online publication of trademark applications in the twice-monthly e-bulletin means that there are now two monthly opposition periods; applicants used to one opposition deadline in the middle of each month will need to make allowances for an additional opposition deadline at the end of each month.
The plaintiff in a recent case instituted a court action to cancel a Patent Institute decision to reject its trademark application on the basis of similarity and risk of confusion with the defendant's well-known trademark. The court concluded that the plaintiff's mark was confusingly similar to the defendant's trademark due to their visual, phonetic and semantic aspects, which created a risk of association.
A recent court action was instituted for the cancellation of the defendant's trademark registration due to its similarity with the plaintiff's trademark, which had already been filed as the extension of an international registration through the World Intellectual Property Organisation and had a prior filing date. The court ruled for the cancellation of the defendant's trademark due to filing in bad faith.
There are no specific provisions for second medical use patents in Turkey. However, a European Patent Office Enlarged Board of Appeal decision has recognised second medical use patents and Parliament has ratified the European Patent Convention. This is seen as proof of Parliament's resolve to protect second medical use patents based on international legislation that Turkey has ratified.
In two recent decisions, the Constitutional Court cancelled further provisions of Decree-Law 556 on Trademarks. The decisions have created increased uncertainty about the fate of the decree-laws that regulate IP rights in Turkey and the enforceability of their provisions, particularly with regard to the issues of invalidity and the restriction of rights.
A recent court action was instituted for cancellation of a defendant's trademark registration on the basis of its similarity and risk of confusion with the plaintiff's well-known trademarks, as well as the defendant's bad faith. The court accepted the action on the basis of the plaintiff's claims, despite its institution almost five years after the registration date of the defendant's trademark.
The Turkish patent regime does not provide for opposition of a patent application, but only for full or partial invalidation of a patent in the courts. However, this can cause problems as Turkish patent and judicial practice does not provide for the amendment of claims in the course of a court action.
A recent Supreme Court decision concerning the KLEENEX mark has confirmed that trademarks can be recognised as well known in Turkey even if they are not in use in the country. It also reveals the differences in approach between the Supreme Court and the First Ankara Court of Intellectual and Industrial Rights.
According to a recent Constitutional Court decision, Article 42(c) of Decree Law 556 on Trademarks has been cancelled at the request of the Fourth IP Court of Istanbul. This has caused uncertainty where cancellation or invalidation of a trademark is sought because the trademark has not been put to use within five years of registration.
The Supreme Court of Justice recently approved a decision in an action initiated by Datacolor Holding AG against five defendants that it alleged had infringed its trademark and trade name. The court ruled that the use of a trademark within the scope of Article 12 of Decree Law 556 is limited, and that making slight changes to a mark will not constitute legal use under Article 12.
The First Ankara Court of Intellectual and Industrial Rights ruled on an action instituted by Birlesik Gida Sanayi VE Ticaret Limited Sirketi seeking cancellation of a decision of the Turkish Patent Institute to refuse an application to register 'Morinek' ('Purple cow') as a trademark covering goods in Class 29.
The Ankara Fourth Civil Court of Intellectual and Industrial Property Rights has held that as a trademark was jointly owned and registered, use of that mark with an additional logo or with minor differences constituted part of the trademark use; as different entities used the mark, such use could not be considered to violate the mark owner's rights.
Market conditions have increasingly attracted rights holders to turn their inventions into profit-making assets in Turkey. Therefore, ensuring that patent rights are registrable and defendable is crucial, as is ensuring their enforcement within the market. Such considerations are expected to play a greater role during the next decade as competition becomes fiercer.
Recent economic developments in Turkey have drawn the attention of companies worldwide and encouraged them to shift their R&D and product development activities to the country. Annual patent and utility model filings at the Turkish Patent Institute have increased at a consistent pace. A new draft proposal has recently been announced that proposes to amend the IP legislation and update the law on patents.
The protocol amending the Agreement on Trade-Related Aspects of Intellectual Property Rights has been accepted and enforced in Turkey. It will now be legally possible to export pharmaceuticals manufactured under compulsory licences from Turkey to countries that are unable to produce them. Acceptance of the protocol has been deemed beneficial to increase Turkey's presence on the international stage.