Spare parts: exceptions to design rights protection

30-06-2017

Işık Özdoğan and Ezgi Baklacı

Turkey has developed a reputation over the last decade as an important player in Europe’s automotive industry. Significant local investment has supported the country to earn a reputation for having important original equivalent spare parts manufacturers. General legislative trends also suggest a wider policy intention to promote and encourage the equivalent parts segment of the industry.

Turkey has developed a reputation over the last decade as an important player in Europe’s automotive industry. Significant local investment has supported the country to earn a reputation for having important original equivalent spare parts manufacturers. General legislative trends also suggest a wider policy intention to promote and encourage the equivalent parts segment of the industry.

Turkey’s IP regime underwent a major overhaul in January 2017, with the IP Law No. 6769 coming into effect. The IP Law contributes to developing the automotive legislation framework by expanding exceptions to design rights protection. These changes effectively allow increased use of both registered and unregistered designs at an earlier stage.

In principle, registered designs and products including these designs cannot be produced, put on the market, sold, exported, or used for commercial purposes, nor can they be subject to agreements by third parties without the design owner’s consent.

For unregistered designs however, the design owner can only prevent third parties directly using an identical or confusingly similar design.

However, legislation outlines specific circumstances where unauthorised use of a registered design is permitted. Accordingly, using a design for repair services is not deemed to constitute design infringement once three years has passed since it was first put on the market, provided:

The design forms part of a complex product, and the complex product’s appearance depends on the design;

The use is for repair purposes, to restore a complex product in its original appearance; and

The public is not misled over the product’s origin.

The concept of using spare parts for repair purposes continues under the recently introduced IP Law.

The new IP Law extends the scope of exceptions further, to include a list of spare parts which the Ministry of Science, Industry and Technology will announce annually (article 59/5, IP Law). Therefore, if the ministry specifies a particular design in its list, use of the design will not be deemed to constitute design infringement, even within the first three years on the market.

Legislation and disputes

In 2015, the Turkish government began allowing insurance companies to supply certified equivalent spare parts to their clients, as laid out in a communiqué.

From June 1, 2015, local spare parts producers could apply to the Turkish Standards Institute for exclusive, two-year certification of their products. The institute would compare the spare parts with their equivalent original parts, in line with international standards.

The institute’s examination process covers testing, laboratory examination and reporting, resulting in a certification that the part is a confirmed equivalent part. A new barcode and database system is also planned to monitor use of these parts.

Use of equivalent parts is also allowed within the General Conditions of Compulsory Motor Vehicles Liability Insurance.

 "If the ministry specifies a particular design in its list, use of the design will not be deemed to constitute design infringement."

However, an administrative action seeking cancellation of some provisions, including the provision allowing supply of equivalent parts, was filed against the General Conditions. Due to the ongoing action, Turkey’s Council of State suspended use of the equivalent parts provision in October 2016.

Despite suspending the provision, the interim decision clearly indicates that the institute continues to be entitled to accept and review certification applications, in line with the communiqué.

Amendments were made to the Insurance Law in January 2017, to the effect that the General Conditions will now include rules and procedures for using certified equivalent parts for repair, as well as related compensation (Omnibus Law No. 6770).

In effect, the Insurance Law amendments make equivalent parts available to the insurance market again, despite the Council of State’s interim decision to suspend this part of the General Conditions.

The communiqué and Omnibus Law are both limited to insurance companies. However, the general legislative trend suggests a wider policy intention to promote and encourage the use of equivalent parts in the wider automotive sector.

The institute has issued 65 certificates since June 2015. The government’s supportive policy and recent legislative changes suggest that a strong increase in these figures should be expected in the near future.

Işık Özdoğan is a partner at Moroğlu Arseven. She can be contacted at: iozdogan@morogluarseven.com 

Ezgi Baklacı is a partner at Moroğlu Arseven. She can be contacted at: ebaklaci@morogluarseven.com

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