INDUSTRIAL PROPERTY LAW; A NEW ERA AT TRADEMARKS (FEBRUARY 2017)

The statutory degrees dated 27 June 1995 have been annulled via publication of Industrial Property Law numbered 6769 (“Law”) which entered into force on 10 January 2017. The new Law regulates applications, registrations, transactions after registration and legal or criminal sanctions due to violations regarding trademark rights, geographical indication, design, patent, utility model and traditional product name.  

The Industrial Property Law which regulates all provisions and amendments regarding industrial property rights in Turkey has changed the name of “Turkish Patent Institute”, the administrative regulatory on Industrial Property Rights, as “Turkish Patent and Trademark Office”(TPMO). Civil and Criminal Courts for Intellectual and Industrial Rights have been clearly stated as authorized jurisdiction court on conflicts arisen from intellectual property rights in Turkey under Industrial Property Law. Hence, the jurisdiction conflicts between courts have been explicitly solved.  

The definition of signs to be a trademark has been made explicitly under the new Law. With regard to the trademark registrations, “Signs have not any distinctive character” and “Signs composed or consisted from registered geographical indication” have been included to absolute grounds for refusal reasons. Objection has been foreseen as a statutory procedure for rejection of trademark applications regarding same or similar goods or services due to sameness or similarity with well-known trademark (relative grounds for refusal).  

Export and import of the trademark labelled goods, which has wider range compared to enter of goods into customs, has been regulated in definition of prohibition by new Law, though using the rights related with the registration of the trademark have been limited with trade area. The prohibition on usage of trade name or company name or taking a part in comparative advertisement of the sign of trademark have been clearly stated under the new Law. It has been also stated under the new Law that usage of the trademark on accessories, spare parts or equivalent products shall not been prohibited by the owner of the trademark. The import of the trademark labelled good has been detached from the aspects of usage of the trademark.  

The Industrial Property Law has made amendments on transactions related with the registration of the trademark besides the rights arising from the trademark. The objection period which was three months’ period from the date of publication of the trademark application in bulletin has been decreased to two months’ period.  

Submission of documents certifying usage of the trademark by the complainant became an obligation for trademark objection procedure. Since objection to the publication is public, condition of suffering from damage became a statutory condition in order to object to the decisions of TPMO. The renewal of trademarks shall be executed within 6 months’ period (instead of the end of the calendar month) prior to expire of protection period as per new Law. However the mentioned provision shall enter into force as of 10.01.2018.    

It has been stated by new Law that the request of cancellation, one of the reasons which causes end of the trademark right, shall be decided by TPMO. This provision shall enter into force on 10 January 2024. Besides, unless the court decision is finalized, the execution process of the court decision shall not be initiated as per new Law.  

Regulations about the Trademark Law are almost same with the statutory degree on protection of trademarks numbered 556 which was in force before enforcement of new Law except the differences stipulated herein.  

Consequently the industrial property rights which were regulated with statutory degrees for harmonisation with the international agreement became more explicit and essential via enforcement of the Industrial Property Law numbered 6769 on 10 January 2017.          

Although the new Law seems as a repeat of statutory degrees, it is obvious that the new Law has brought explicit provisions and also considers personal rights more than annulled legislation. Hence, the judicial authorities shall easily stop the procedural conflicts and violation of personal rights. We would like to bring to your attention that, the application of new and detailed provisions foreseen by new Law by the courts will take time, so the effect of the changes on implementation shall not been immediately observed before two years’ period.