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.