Turkish Intellectual Property Law ‘ An Overview
Turkish Intellectual Property Law is closely aligned with EU Law and international norms. However, it has many unique features which those doing business in Turkey need to be mindful of, to ensure their IP remains secure. Nigar Guliyeva is an Associate at K?l?n’ Law & Consulting, an Istanbul-based commercial law firm, and she provides a fascinating overview of the market today.
Turkish Intellectual Property Law was dramatically updated by the introduction of the Industrial Property Code No. 6769 (the ‘IP Code’) in January 2017. The new IP Code replaced a patchwork of older laws and decrees. The Code also made significant procedural and substantive changes. These included provisions bringing Turkish Patent Law into line with the European Patent Convention.
The IP Code operates alongside the Law on Intellectual and Artistic Works No. 5846, Turkish Commercial Code No. 6102 and the relevant international agreements to which Turkey is a signatory. These include the Paris Convention, the Berne Convention, the Madrid Protocol, the Hague Agreement and the Patent Cooperation Treaty.
Turkish IP laws are broadly harmonised with the EU’s ‘acquis communautaire’. As a country keen to encourage foreign direct investment, Turkey operates a modern and robust IP regime. Both registered and unregistered IP are protected. As regards unregistered IP, Turkish Law recognises copyright in respect original works. The IP Code also protects unregistered design rights for novel designs of individual character for 3 years from when the design was made public.
However, it is preferable to register IP rights. For instance, while an unregistered design is protected for 3 years, a registered design is protected for 5 years, renewable to a maximum of 25 years.
The registration of a trademark in Turkey is valid for 10 years from the date of application. A trademark can be renewed indefinitely for additional ten-year periods.
An applicant must submit a completed trademark application form, with the relevant fees, to the Turkish Patent and Trade Mark Office.
The form is in the Turkish language and, if the applicant is based overseas, they must use an authorised Turkish trademark attorney. Multi-class applications are permitted. An initial review is conducted to determine whether the procedural requirements are met. The application then proceeds to an ex officio examination, resulting in a determination as to whether the application meets the absolute requirements. If so, the application is published for opposition.
A third party may oppose an application on absolute grounds, such as that it is insufficiently distinctive. An application may also be opposed on relative grounds, for example by arguing that the trademark is likely to cause confusion.
If no opposition is raised within two months, the application is granted and proceeds to registration. In this case, the entire process would typically take 9 to 12 months. If opposed, opposition proceedings may take an additional 6 to 8 months.
If an application is refused, it is possible to appeal within two months. If a trademark application is granted, it is published in the Official Trademark Bulletin.
Trademarks can be cancelled if they have not been used for 5 years. Any third party claiming a prior right can also make a court application to cancel a trademark. However, if they have not done so within 5 years of the granting of the trademark, any rights they may have may be deemed forfeited.
In order to obtain a patent in Turkey, an applicant has to prove the novelty of their design, that it involves an inventive step and that it is capable of industrial application.
Certain categories are excluded from patent protection. These include scientific theories, mathematical methods and artistic works.
The patent application process involves applying to the Turkish Patent and Trademark Office with the appropriate fees and documents. If a decision to grant a patent is made, this is published in the Official Bulletin. Third parties then have six months to object. The grounds for objection include that the patentability conditions have not been met and that sufficient details of the invention have not been disclosed. Once granted, a patent lasts for 20 years.
Registering a utility model is an alternative way to protect a new invention. Like a patent, a utility model requires an invention to be new and capable of industrial application. However, a utility model does not need to involve an inventive step. These less onerous requirements make utility model registration easier to obtain. The registration process is simpler and quicker. However, a disadvantage is that utility model registration will only protect an invention for 10 years, whereas a patent lasts for 20 years.
Signs indicating the geographic origin of a product ‘ such as Champagne or Scotch Whisky – can be registered in Turkey under the IP Code. This means that products with a reputation for quality linked to a region or country can obtain protection.
Licences for the use of IP may be registered with the Patent and Trademark Office, but this is not compulsory. Registering a licence can however make it easier and quicker for a licensee to enforce their rights.
Specialised courts are available to hear cases of patent and trademark infringement. The Courts of Industrial and Intellectual Property Rights are based in Ankara, Istanbul and Izmir. Elsewhere in Turkey, the local civil courts deal with IP infringement. A patent holder must take legal action within 10 years of the infringing act. A trademark holder must ordinarily take legal action within five years of the infringement. However, if the infringement is in bad faith, there is no limitation period.
The available remedies include preliminary injunctions, damages, seizure of goods and court orders prohibiting infringing acts.
Further general protection is offered by the Turkish Commercial Code No. 6102, which prohibits unfair competition, including unlawfully benefiting from the IP of a third party. Both civil and criminal penalties are set out.
There are also specific criminal remedies for trademark infringement in the IP Code. Anyone commercially selling infringing goods is liable to a prison sentence of between one and three years and a fine.
As international investment increases, Turkish IP Law is increasingly relevant to global companies and anyone selling products into Turkey, or doing business there.