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.
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.