The first Industrial Property Law (IPL) in the history of the Republic of Turkey, which has been expected for many years, was published in the Official Gazette on 10.01.2017 and entered into force. This Industrial Property Law No. 6769 has replaced the existing Decree Laws No. 551, 554, 555, and 556.
There are many changes in the new IPL, but in this article, I would like to list the most important and easily understandable issues as much as possible without using legal language.
It is also worth mentioning that all the changes below, except for certain exceptions, are valid for applications made after January 10, 2017, and all applications before this date will be processed according to the provisions of the repealed legislation.
General Changes
- The separate laws for patents, trademarks, industrial designs, and geographical indications have been consolidated into a single text. Thus, a simpler but more effective text has emerged.
- The name of the Turkish Patent Institute has been changed to the Turkish Patent and Trademark Office.
- Since a law was prepared instead of a decree-law, compliance with the existing legal system was achieved. The annulments of articles originating from the Constitutional Court were completely prevented.
- The publication and deadline periods were reduced, thus shortening the registration processes. Generally, 6-month periods have been reduced to 3 months and 3-month periods to 2 months, provided that exceptions do not break the rule.
- An Intellectual Property Academy will be established to carry out training, consultancy, and research activities related to intellectual and industrial property rights.
- Disciplinary penalties are introduced for Trademark and Patent Attorneys who do not work in accordance with ethical rules. TOBB and a patent association with the most members will be consulted in the implementation of these penalties.
- At the point of exhaustion of rights, a transition from national exhaustion to international exhaustion has been made, thus allowing parallel import.
- The institutional capacity of the Turkish Patent and Trademark Office has been increased. New departments such as Geographical Indications, Innovation-Promotion, and Re-examination have been established.
- A high degree of compliance with international legislation (TRIPS, EU Trademark Directive, European Patent Convention) has been achieved.
Some Changes Regarding Patents and Utility Models
- The unexamined patent, a problematic protection instrument, has been abolished. From now on, all patent applications will be processed as examined patents.
- A requirement for novelty search in utility model applications has been introduced.
- All patent searches will be conducted by experts within the newly named Turkish Patent and Trademark Office. Thus, both the durations and costs here are reduced.
- The possibility of “Continuation of Proceedings” and “Re-establishment of Rights” for Patents and Utility Models is provided to applicants. Thus, the invalidation of a document due to a missed official deadline is largely prevented.
- The evaluation of objections to published Patent and Utility Model applications by the newly named Turkish Patent and Trademark Office has become mandatory. An objection right within 6 months after registration for patents has also been introduced. Thus, it will be possible to cancel an application without a court process through an objection.
- Additional obligations have been introduced for those who receive public support and come up with an invention as a result of this support. Accordingly, except for the inventions in R&D-Design Centers and Technology Development Zones, inventions resulting from Publicly Supported Projects must be reported to the public institution providing the support and a claim for rights must be made. Failure to properly implement the procedure here may result in the right passing to the Public Institution providing the support.
- Academicians are also included in the scope of “Employee Invention”. Accordingly, the ownership of inventions made by academicians will belong to the university.
- The new IPL makes it mandatory to give rewards to the inventors of patent or utility model applications, which was optional in the old law. Even how this reward will be calculated will be systematized with a regulation.
Some Changes Regarding Designs
- The concept has been shifted from Industrial Design to Design. Thus, especially the fashion industry has found a place in the relevant legislation.
- The use of equivalent parts published by the Ministry of Science, Industry, and Technology within three years from the date of the first marketing of the design will not be considered an infringement of the design right.
- A novelty search will be conducted for Industrial Design registration applications as well. Thus, the registration of commonplace designs will be prevented to some extent.
- The possibility of unregistered design has been introduced. Now, even if a design registration application is not made, it will be automatically protected for 3 years after being presented to the public.
- Parts of combined products that are not visible during normal use will not be subject to design.
Some Changes Regarding Trademarks
- If the party objecting to a published trademark cannot prove the use of the trademark they are objecting to, their objection may be rejected.
- In accordance with the EU Directive, the cancellation (administrative cancellation) of a trademark that is not used within 7 years by the Institute will be possible.
- The possibility of coexistence in trademarks is coming. Thus, the same trademark can be registered in the name of another person for the same goods and services, provided that written consent is obtained from the trademark owner.
- Clear additions have been made to the legislation for the registration of new types of trademarks (sound, color, motion, packaging shape).
In summary, while the new IPL provides the produced intellectual values with the protection they deserve, the rising registration barrier largely prevents unfair registrations and the resulting unfair competition. Since issues related to invalidity will be resolved on the administrative side (Turkish Patent and Trademark Office), the burden on courts in this regard is alleviated.
All these show that our new IPL will contribute very positively to the innovation and intellectual property ecosystem in our country.
Of course, it is of great importance that all businesses become more aware in the field of Industrial Property during this process. As professionals of this profession, we are also intensively conducting these awareness-raising activities.
