Another milestone in Turkish intellectual property law

By Murat Birinci

ISTANBUL

One of the chief pillars of the economic legal infrastructure, industrial property law (IPL), will deeply impact Turkey’s commercial life over the next 20-30 years, predicted Cahit Suluk, an Istanbul-based attorney specializing in the field.

Evaluating the impact of IPL for the Anadolu Agency, Suluk told how the business community and foreign lobbies closely followed the issue when Parliament passed the law.

Suluk emphasized that Turkey’s IPL was the most sweeping such measure passed in 137 years, after the 1879 passage of the Patent Law, the 6th patent law in the world.

Suluk called IPL "the second milestone in our intellectual property law,” adding, “The definition of trademark has been changed in the new regulations. Rather than the term for visibility through drawing, which was required for trademark registration, it has been resolved that all kinds of marks can be used as trademarks, provided they are demonstrable in the registry so as to provide clear and accurate understanding of trademark protection. Thus, by adopting the flexible approach of European Union trademark law, it has been adopted so that non-traditional marks such as sounds and movement can also be used as trademarks."

Suluk told how the EU put Nokia’s unique ringtone under protection in 1999 as well as how the first nine notes of the Beethoven’s Für Elise in Benelux and the lion’s roar at the start of its movies was registered by MGM.

Stating that Tarzan’s unique jungle cry is also subject to permission, Suluk said, "This is because it is a trademark. Edgar Rice Burroughs, the creator of the Tarzan character, registered this sound together with its notes. The purple color of Milka chocolates was registered by the Kraft Foods’ Schweiz Holding GmbH company as a color trademark with the name Milka Purple. BP’s green gas stations are likewise registered in the color category".

- Smells will be registered

Suluk predicted that it will be possible to register scents as trademarks in Turkey, calling this the most difficult category.

Saying that detailed descriptions will be needed for such trademarks, rather than drawings, Suluk added that strong evidence will also be needed.

Telling how the scent of hemp was trademarked in the U.S. in 1990 for sewing yarns, Suluk said, "The famous Wine & Spirits wines have created a trademark by placing a soft cover on the wine bottle which can be recognized by touch. This trademark was registered in October 2006 in America as a tissue trademark.

Citing how the wing-like opening and closing movement of Lamborghini car doors was trademarked in the U.S. in 2003, Suluk said that using the same logic, many other items, such as the motor sound of Honda motorcycles and the shutter sound of Canon and Nikon cameras, have been and can be registered.

He continued:

"According to the new IPL regulations, a trademark that is the same or indistinguishably similar to a trademark can be registered on behalf of multiple persons and may co-exist on the market at the will of the trademark owners. If the owner agrees, it will be possible to produce 'local' versions of Apple, Levi’s, and Lacoste. With the changes to Turkish trademark legislation passed in 2009, using a mark that is the same as or similar to a trademark owned by others was deemed trademark infringement.

“On the other hand, especially in accessories, spare parts, or equivalent parts, permission of the trademark owner is not required for uses where a statement of the purpose of use of the goods or services is required. For example, the X bonnet company in Bursa, producing independent spare parts, may place the phrase 'sub-industry product manufactured for BMW vehicles' on the mudguards it manufactures. Likewise, an independent car service company may advertise, 'Service provided for BMW, Mercedes and Audi automobiles,' without implying that it is the authorized service. Permission from trademark owners is not required for this. Vehicle body-shop owner Ahmet won’t ask permission from the world giants."

- ‘Unused trademarks will be voided’

Suluk said that goods and services are internationally grouped under 45 classes and that many people get trademarks registered for goods or services they don’t use or will never use.

Of the thousands of trademarks registered in all 45 classes, Suluk said hundreds of thousands of trademarks were registered but are never used, turning trademark registration into a garbage dump.

Suluk said this made it harder for later trademark-seekers to register and that the legislature took measures to clean up this pollution.

Saying that under the old regulations, after registration of a trademark, its annulment or invalidation could only be done in court, Suluk explained, "Now according to IPL, annulment can also be requested before the Turkish Patent and Trademark Authority. The authority will annul trademarks that have not been used by owners for five years. This will make it possible to ensure abandonment of a trademark from registration with much less time and cost. The entry into force of this provision has been postponed for seven years, as it is a quite sweeping regulation. People can do this as of 2023. Until then, annulment claims will be asserted in court, as before."

- ‘Hereke carpets, Amasya apples, Turkish greyhounds to be protected’

Suluk said that under IPL, people found guilty of breaching a trademark by producing, offering, selling, importing or exporting, purchasing for commercial purposes, retaining, transporting or storing goods or services can go to prison for up to three years or have to pay a fine of up to 20,000 liras.

Explaining that IPL reworked the issue of geographical indications and also put traditional product names under production, Suluk stressed that food, agriculture, mining, handcrafts and industrial products formed by a combination of natural and man-made items and which meet the specified conditions can be registered as a geographical trademark or traditional product.

He added:

"A geographical indication is a sign indicating a product identified with an area, region, or country where it is rooted in terms of a significant nature or another characteristic. Hereke carpets, Amasya apples, Malatya apricots, Giresun plump nuts, the Turkish greyhound, İzmit pismaniye, and Salihli cherry are among such products. Names not under geographical indication and proven to have been traditionally used for at least 30 years to describe a product in the concerned market can be registered as traditional product names. Such as baklava, pastirma, cezerye, and doner.

Unregistered designs that have not been presented to the public anywhere in the world and presented to the public for the first time in Turkey will be protected for three years. Designs presented to the public for the first time overseas will not be able to benefit from unregistered design protection. The scope of unregistered design protection has been kept more limited. Registered designs will be protected for 25 years, while unregistered designs will be protected for only three years. Only original designs will be registered. Design applications that are found to be not new by the Turkish Patent and Trademark Authority will be rejected."

- Spurring domestic spare part manufacturing

Suluk said that with IPL new and individual designs are protected, but only visible parts will be protected in terms of complex products, while invisible parts will be excluded from protection.

Saying that this paves the way for equivalent parts, Suluk added that using such parts for three years after first launch, in order to regain the original appearance of a complex product and provided that it does not mislead about its origin, will not constitute an infringement of the design right.

Suluk said it is especially important to pave the way for local parts manufacturing in the auto industry, so frequently changed parts such as doors, bodies and mudguards will be producible by sub-industries, without permission from the automakers.

Stating that trademark, patent, or design right owners will not be able to use their own certificates as protection in breach lawsuits filed by the previous right owners, Suluk said, "In other words, it will also be possible to file a breach lawsuit against certificate holders. Thus, registration certificates will stop being safe heavens against the real right owner. The subsequent certificate holder will not be able to use their certificate as a defense instrument in lawsuits filed by previous certificate holders."

Suluk said the express disposal procedure is valid only in terms of imitation trademark goods and added:

"This is because in IPL only trademark crimes have been accepted and only legal protection has been provided in terms of patents, useful models, designs, geographical indications. and traditional product names. Therefore, the express disposal procedure will not operate in terms of the said rights. In sum, except for trademarks, in terms of other rights categories, it will be possible to apply this procedure for unsold goods only from before 2009, but this procedure will not be operated for goods obtained following this date."

- Public support, inventions from project owners

Suluk said that the patent potential in universities will be mobilized and stated that as a rule, the employer will be the owner of inventions made by employees.

However, stating that universities are an exception to this rule, Suluk said, "In this context, under the previous regulations, the owners of inventions developed by university faculty members were the property of the faculty members who developed them. In practice, as faculty members did not even make patent application for their inventions due to financial difficulties, many qualified inventions remained outside the game without gaining any protection."

Suluk stated that now, the owners of inventions developed in institutions of higher education will be the institution rather than faculty members.

Stressing that the technical parks at universities will be mobilized for the commercialization of patented inventions, Suluk said, "And a minimum of one-third of the revenue from the commercialization of patented inventions will be distributed among the inventing faculty members, university/technical park, and Technology Transfer Offices (TTO). This should help create a patent climate at institutions of higher education."

Suluk stated that inventions developed at publicly funded projects will contribute to the economy and that inventions from projects supported by public institutions and organizations will belong to the person benefiting from the support.

Explaining that with IPL Turkey will undergo a major policy change and adopt the international exhaustion principle for industrial property rights, Suluk said, "IPL brings the international exhaustion principle for all rights categories. Accordingly, after a trademark or patented product is launched anywhere in the world, it will be possible to import that product to Turkey without requiring permission from the concerned trademark or patent holder. For example, even without the permission of Apple or Novartis, a third party may purchase relevant products from a country selling at a cheaper price and import to Turkey. Thus, these products will be offered to Turkish consumers at more competitive prices."