Business brief 2014: Turkey

01-06-2014

Ersin Dereligil and Oktay Simsek

There are three ways to obtain patent rights before the Turkish Patent Institute: (i) by filing a conventional (national) patent application; (ii) by nationalising through the international Patent Cooperation Treaty (PCT); or (iii) by the European Patent Convention (EPC) route.

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

All of these are equivalent in view of the enforcement of the rights on the others and have the same protection term of 20 years. The conventional route takes three to four years as one prior art search and three-tier examination system is applied. Most foreign patent applicants prefer to take advantage of EPC route.

What are the costs for obtaining a patent, and what are the costs of defending it?

The costs for obtaining a national patent substantively change in respect of the scope and volume of the patent specifications due to the translation requirement, availability of a different search and examination authorities (Danish, Austrian, Russian, Sweden and European patent offices), number of the examinations (up to three) and attorney fees.

Official fee for validating a granted European patent in Turkey is about €235 and attorney fees and translation costs should be added thereto.

Where can you find information on existing patents in your jurisdiction?

A free online search service is available on www.tpe.gov.tr. Bibliographic data, actions on the patent file and patent status are viewable through this online service.

Is there anything unusual about the patent law that companies should be aware of, and what are the most common mistakes businesses make?

Turkish patent law is quite rigid as to the deadlines. Unlike that in many countries, the Turkish patent system provides a 12-month grace period for disclosure of the invention before filing the patent application.

A patent applicant may ask for a short-term (non-examined) patent after having the search report for a seven-year protection. This can be converted into an examined patent within the said period if the applicant or any third party pays for the examination costs directly or through an invalidation court action.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

Infringement is a big problem. At the first instance, a notarised cease and desist letter may be sent to the alleged infringer but is not obligatory. In case of no reply or non-acceptance of the infringement and persistence of the alleged infringement actions, the next step should be criminal or civil actions to be filed before the courts.

Have there been any changes to the patent law(s) in the last 12 months?

The only changes that have been made are to the implementing regulations of the Patent Law, making the quality and nature of the documents clearer with respect to change of name, assignment, merger, as well as the powers of attorney for preventing any abuse.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

“The Turkish patent system provides a 12-month grace period for disclosure of the invention before filing the patent application.” 

The trademark procedures cover formal examination, substantive examination on absolute grounds, publication of three-month period and examination on opposition, as well as appeal procedures where refusal has come forward due to substantive examination or examination on opposition. For a straightforward application, a trademark registration can be obtained in 12 to 14 months.

Based on the registered trademark, the right holders take civil or criminal action or initiate the preliminary injunctions dependent on the nature of the case where any infringement of rights occurred.

What are the key threats to trademark owners, and what is the best strategy for dealing with infringement?

The owners of well known trademarks should be careful about bad faith or confusingly similar trademark applications as well as counterfeiting and internet sales of others by monitoring published applications, without limiting the surveillance to the specific classes but keeping it as broad as possible to all similar classes. 

Apart from the civil and criminal proceedings against infringers, one other measure against infringers is to register the trademarks online in the customs registry, enabling the customs authorities to monitor any counterfeiting actions related to the registered trademark.

What are the most common mistakes trademark owners make?

There are four rules of effective trademark protection: register, watch, use and enforce your mark in Turkey. Where the use of a trademark is discontinued for the last five years, a third party can file a case based on non-use and cancel it before the court.

Trademark clearance and availability searches are mostly overlooked by the foreign trademark owners. Besides, if you attempt to register your mark lately, do not forget that a letter of consent is not allowed to overcome ex officio refusals.

Have there been any changes to the trademarks law(s) in the last 12 months?

No major changes but there have been a few on the implementing regulations of the Trademark Law, aimed at harmonising the trademark goods and services according to the Nice Classification (10th) and for making the quality and nature of the documents clearer with respect to change of name, assignment, merger, as well as the powers of attorney for preventing any abuse.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

The main copyright issue is piracy, which has greatly affected original digital works in the software, film and music industries. The key challenges are ensuring correct ownership, assessing independent creation and enforcement of rights.

How should people ensure they are protected against copyright infringement?

Any creative works enjoy protection. Copyright is inherently obtained when the author has created the work and no separate filing or registration before any authority is obligatory.

What is the best way to deal with infringement?

Copyright is best protected through a comprehensive policing and enforcement strategy, including use of cease and desist letters and/or criminal or civil court proceedings.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Turkey’s geographic location renders it a transit point for counterfeit goods. In recent years, Turkey has shown determination to struggle against the counterfeit market by training the judicial, police and customs authorities, enhancing their capacity to take due actions against the counterfeiters and organising various events to raise public awareness of counterfeits. 

What industries are particularly at threat?

Well-known brands of items such as accessories, footwear and clothing as well as electronics and cosmetics. Music and software industries can also be said to be severely affected by counterfeiting.

What are the best strategies for dealing with the problem?

Monitoring the marketplace by watch services and sending cease and desist letters to the infringers where any infringement is determined, and filing customs applications for preventing the entry of counterfeited goods into the country will among the best strategies to tackle the problem. Civil and criminal legal actions should be considered at the last instance if the infringers are persistent in their actions.

General

Patent, trademark and industrial design laws are expected to change in the near future. Draft bills are on the list to be discussed by the legislative body. Those laws bring fundamental changes with respect to the registration procedures and the legal proceedings in favour of the IP holders.

Ersin Dereligil is the managing partner at Destek Patent Inc. He can be contacted at: ersin.dereligil@destekpatent.com.tr

Oktay Simsek is the head of the foreign affairs department at Destek Patent Inc. He can be contacted at: oktay.simsek@destekpatent.com.tr


patents; trademarks; copyright; counterfeiting

WIPR