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The new Code of Industrial Property, which repealed the previous decree-laws on patents, utility models, trademarks, designs and geographical indications, recently entered into force.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.