Protecting pastrami and doner kebabs—legal changes in Turkey

Trademarks

Non-traditional marks

Under the Industrial Property Code (IPC) every kind of sign can be a trademark if it clearly represents the protected subject matter, instead of graphically representing it. This is a flexible approach in reference to EU trademark law and allows the registration of non-traditional signs such as sounds, scents and movement as trademarks.

Letter of consent

In Turkish law, the uniqueness principle for trademarks was regarded as part of the public order. Under the IPC, a trademark identical or indistinguishably similar to a previous trademark can be registered for the name of more than one person with a letter of consent.

Unused trademarks

An opposition filed by an owner of an unused trademark against a subsequent trademark application will be rejected if:

a) The subsequent trademark is not identical or indistinguishably similar to the previous trademark;

b) Five years elapses after the registration of the previous trademark and the trademark has not been used during that period; and

c) The person who makes the subsequent trademark application asks the previous trademark owner to submit a proof of use to the Turkish Patent Institute (TPI).

Proof of use can be demanded in nullity and infringement proceedings for the subsequent trademark before the court, as well as oppositions before the TPI, making an unused trademark dysfunctional to a great extent.

Another feature of the revisions in the registry is administrative annulment. In the previous regulation, after registration, annulment or nullity could be claimed only before a court. Under the IPC, administrative annulment can be requested from the TPI for the following reasons: non-use for five years; being generic; obtaining a nature that deceives the public; and the use of guarantee and collective trademarks in violation of the technical regulation. This regulation will not enter into force until 2023.

Shortened opposition period

The period for filing an opposition to a trademark application is reduced from three months to two after the publication in the Official Trademark Bulletin.

Remaining silent

If a trademark owner remains silent for five consecutive years despite knowing (or if it should have known) about the subsequent registration of another trademark similar to its mark, the trademark owner may not request invalidation of the subsequent mark unless that mark is registered in bad faith.

The IPC does not have the principle of remaining silent in terms of infringements. However, the courts apply this principle in infringement cases and determine the period according to the case, as there is not a definitive period.

Trademark offences

The IPC will expand trademark offences beyond manufacturing, marketing and selling to include acts such as manufacturing or providing services, marketing, selling, importing or exporting, purchasing for commercial purposes, possessing, transporting or warehousing any goods or services by infringing a trademark, resulting in imprisonment from one to three years and with a judicial fine.

Patents and utility models

Biotech inventions

Since biotechnological inventions are not specially regulated in the IPC, disharmony with the European Patent Convention (EPC) remains. However, terms such as plant variety, biological material, traditional information, etc, that are related to biotech subject matter are used in the IPC. Since a patent is granted to inventions in all technological fields in compliance with TRIPS, patentability of biotech inventions is also accepted.

Penal sanctions

Before 2009, patent infringements were punishable with imprisonment for one to four years and a judicial fine. Upon annulment of the relevant provision by the Constitutional Court, the penal sanction is abolished. Under the IPC, only trademark offences are regulated and infringement of other industrial property rights is no longer an offence.

"The IPC will expand trademark offences beyond manufacturing, marketing and selling to include acts such as manufacturing or providing services, marketing, selling, importing or exporting."

Opposition after registration

Contrary to the previous regulation, the IPC provides a six-month post-grant opposition period.

Searches

Instead of requiring only formal examination, the IPC mandates a search report for utility models.

Reestablishment of rights

Contrary to the previous regulation, under the IPC, ‘further processing’ and ‘re-establishment of rights’ are adopted in similar fashion with the EPC.

University inventions

Under the IPC, owners of inventions developed at higher education institutions will be the respective institutions, not the academics. However, at least one third of the proceeds from the commercialisation of inventions will be paid to the inventor academics.

Designs

Examination for novelty

Upon determining that a design is not novel, the TPI will reject the application after conducting only a novelty examination, not an examination for individual character.

Unregistered designs

Registered designs will be protected for a maximum of 25 years at most and unregistered designs for three years after their presentation to the public in Turkey for the first time ever.

Invisible designs

Designs of any invisible elements of a complex product are excluded from protection, including parts under the bonnet of a car, such as spark plugs, engine, horn, etc.

Application procedure

The period for filing an opposition to a design application is reduced from six months to three and the requirement to submit a description is abolished. In respect of multiple design applications, it is decreed that in order to submit a multiple application, it will be sufficient for the items to fall into the same class, instead of the same sub-class.

Partial rejection and nullity

A design can be partially rejected during the application process and following a request for nullity. The remaining part of the design must satisfy the conditions for protection and it must preserve its previous identity for the validity of the registration.

Common provisions

Safe harbour removal

In practice, ‘malicious persons’ used to register trademarks, designs and inventions that were owned by other parties. When an action for infringement was filed against them, they used to argue that an action may not be filed during the validity of the granted industrial property certificates. In practice, the registration certificates obtained by such malicious persons had turned into a safe harbour. Under the IPC, malicious trademark, patent or design rights owners will not be able to use their certificates as a protection shield in the legal proceedings instituted against them by the owners of previously registered rights.

Counterfeit goods

Adequate samples will be taken from counterfeit goods involved in a crime at the beginning of the legal proceedings and the remaining goods will be destroyed. Warehouses filled with counterfeit goods will be emptied rapidly.

However, the immediate destruction procedure applies only to counterfeit goods involved in a crime, for the IPC recognises only trademark offences and provides legal protection for other right categories.

Geographical signs and traditional product names

In addition to geographical signs, names proved to have been used traditionally to describe a product in the respective market for at least 30 years can be registered. Such names include baklava, pastrami, cezerye and doner kebab.

Cahit Suluk is the founder of  Suluk IP Law Firm. He has been an active IP litigator since 2001 and his areas of expertise include trademarks, patents, utility models, designs and copyright. He can be contacted at: suluk@suluk.com.tr