The Turkish Industrial Property Draft Code (IPDC) was sent to the Grand National Assembly of Turkey recently. The draft, expected to pass in two months, will bring a number of important reforms, particularly in trademark protection.
New trademark types: In lieu of the condition of being represented graphically in the previous regulation, it has been decreed that every type of sign can be a trademark provided that it can be “represented in the registry” so as to clearly and implicitly represent the subject matter of the trademark protection. This is a flexible approach reminiscent of EU trademark law, so that non-traditional signs such as audio and motion trademarks can be registered. Signs exclusively containing the shape or any “other characteristic” of the product resulting from the nature of the goods will not be registered as a trademark.
Letter of consent: Turkish law adopts the uniqueness principle for trademarks, which is considered within the scope of public order. Under the IPDC, a trademark identical or similar to a previous trademark can be registered in the name of more than one person after the approval of the previous rights holder is given.
Unused trademarks to be considered void: Thousands of unused trademarks have been registered in Turkey, causing disorder in the trademark registry. Considering this fact, the IPDC mandates the ‘cleaning’ of the trademark registry so that in case of an objection before the Turkish Patent Institute (TPI), an applicant may request evidence from the objector that he/she uses the trademark.
The conditions for requesting evidence include: the trademark in question must not be identical with or indistinguishably similar to the previous trademark; five years must elapse after the registration of the previous trademark in Turkey; the previous trademark must not be properly used in the registered goods and/or services for five years after the application or grant date of the trademark in question, or there must be a legitimate reason for non-use; and the subsequent applicant must request evidence of use from the trademark holder.
Evidence of use can be requested in cases, to be filed by the proprietor, of trademark invalidation registered after the previous trademark and in cases of infringement to be filed against the person who uses the trademark thereafter.
Administrative annulment: Another feature of the trademark registry clean-up is administrative invalidity. In Turkish legislation, annulment or invalidation of a trademark can only be claimed in court. Under the IPDC, applications for annulment can also be filed before the TPI. Thus, in a much shorter time and at a low cost, unjustly registered trademarks can be annulled.
Reasons for annulment include: non-use for five years after the registration; being generic; obtaining such a nature as to deceive the public; and the use of guarantee and collective trademarks in violation of the technical regulation.
Being a radical reform, this provision will not enter into force until 2023. Until this date, claims for annulment can be filed only in court.
Shortening the period of oppositions: The period for filing an opposition to the publication will be decreased from three months to two after the publication of the trademark application in the Official Trademark Bulletin. This regulation decreases the registration period as well as the opposition period.
Expansion of criminal acts: The IPDC will expand the statutory definition of criminal trademark infringement beyond “produce”, “carry” and “sell” to include those who “import or export”, “commercially purchase”, “stock”, “transport” or “store” goods and services that infringe a trademark. A person convicted will be sentenced to imprisonment of one to three years and pay a punitive fine.
Adoption of international exhaustion principle: Aside from integrated circuit topographies, under the Turkish legislation the national exhaustion principle is adopted. The IPDC introduces “the international exhaustion principle” for all categories of rights.
Effect of previously-dated rights: In practice, those of bad faith apply for a trademark, patent, utility model or design to benefit from the reputation of a trademark of another person or to use the patented invention thereof. In court practice, the subsequently granted document first should be annulled, and then the infringement case should be filed.
Under the IPDC, the proprietor of a trademark, patent or design cannot plead using his/her own document in the infringement case filed by the proprietors of previously granted rights.
Procedure of immediate destruction of counterfeit goods: Sufficient samples will be taken from the illegal counterfeit goods and the remaining goods will be destroyed if they are damaged, there is a significant risk of losing value, or storage of goods is laborious.
In the presence of any of these conditions, an examination will be carried out by an expert witness and the goods will be destroyed at the beginning of the proceedings by court decision.