Turkey: New Code Fights the Fakes

Turkey’s share of global physical counterfeiting amounted to US $1.7 billion in 2016, according to a report by The Global IP Center, an affiliate of the U.S. Chamber of Commerce.

And in an article for WIPR, Oktay Simsek of Destek Patent in Turkey said the counterfeit market in Turkey is “huge.” He added that, geographically, Turkey is at a crossroads between Europe and Asia and “this puts Turkey in a critical position regarding counterfeited goods traffic.”

But Habip Asan, president of the Turkish Patent and Trademark Office, says that Turkish law provides “effective protection to combat counterfeiting.”

The new Industrial Property (IP) Code, which entered into force in January this year, introduces several major changes that are expected to ensure the country establishes a structured legal framework to prevent counterfeiting, he adds.

There are other changes too—for example, more flexibility for nontraditional trademarks. “The requirement for representing signs graphically is abolished and instead it has been added that signs are represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to their proprietor,” says Mr. Asan.

“The letter of consent, through which the owner of an earlier trademark may consent to the registration and use of an identical or similar trademark later filed for the same or similar goods or services, has also been added to the Code. In addition, the period of opposition is reduced to two months from three.

“The Office now has the authority to invite parties to make a friendly settlement with the new Code, which aims to reduce disputes before they are transferred to court.”

Another change brought by the Code is the requirement for an opponent to submit evidence proving that it genuinely used its trademark for the goods and services relating to the opposition. Mr. Asan explains that this change is aimed at preventing oppositions in bad faith.

“Additionally, legal protection provided for industrial property subject matters was enhanced by adopting measures for effective enforcement of rights and eliminating problems and uncertainties related to the judiciary processes,” he says.

The Fight Against Fakes

With the new Code, the authorities have more advanced tools required to fight counterfeiting.

“For example, Article 163 on the Fast Destruction Procedure now allows judges to order the immediate destruction of infringing goods even before a verdict, as long as certain conditions are fulfilled,” Mr. Asan explains.

According to law firm Gün + Partners, the Fast Destruction Procedure can take place only if the counterfeit nature of the goods has been confirmed by an expert report.

Mr. Asan adds: “Furthermore, the yearly control reports introduced by the Code will ensure the protection of producers and consumers of geographical indication products against counterfeit or imitated goods.”

He says that the Office does not have the capacity or authority to monitor statistical changes in the field of enforcement, but it hopes that the new measures introduced in the Code should ensure a more effective fight against counterfeiting and prevent it from increasing in the future.

“The Code has been adopted in a comprehensive and collaborative way. It took many hours to consider and design all the sections, in consensus with all shareholders of intellectual property rights issues,” he says.

“The new Code has been designed to include all types of IP rights in order to eliminate the inconsistencies between different rights, by including common provisions for areas such as definitions and indemnities.”

The Need for the New Code

According to Mr. Asan, the earlier Decree Laws contradicted a number of principles outlined in the Turkish Constitutional Law, which put the Decree Laws at risk of being cancelled by the Turkish Constitutional Court.

“This damaged legal predictability in the IP rights field,” he says.

For this reason, it was necessary that the new legislation was passed as quickly as possible.

The Code came with some challenges, however, and Mr. Asan explains that one of the difficulties was that four different legal texts had to be integrated into one Code. This proved to be a real challenge, especially in drafting the common provisions.

The next issue, he explains, was the size of the Code, which could have taken months of discussion at the National Grand Assembly.

“Thanks to our inclusive policy that extended to all political spheres and stakeholders, we were able to ratify the Code in much less time than foreseen due to the high level of acceptance by all parties,” he says.

The new Code, according to Mr. Asan, is designed to ensure compliance with international treaties and EU legislation in order to achieve a contemporary IP system that operates more efficiently and effectively.

This is all in the hope that Turkey will become a more attractive and predictable place for investors—and a less attractive place for counterfeiters.