I. Introduction Law The Industrial Property Code no. 6769 (““IP Code”&rdq...

I. Introduction

Law

The Industrial Property Code no. 6769 (““IP Code””) entered into force on January 10, 2017.

Conventions

International Convention (Stockholm) (see Appendix 1); Hague Agreement Concerning the International Registration of Industrial Designs (see Appendix 2); Locarno Agreement for the International Classification of Industrial Designs (see Appendix 3); Patent Cooperation Treaty (see Appendix 4(a)); Strasbourg Agreement Concerning the International Patent Classification (see Appendix 5(a)); Hague Convention (legalization) (see Appendix 7); European Patent Convention (see Appendix 9).

II. Designs

Definitions

According to the Article 55 of the IP Code ““design”” is defined as ““the appearance of the whole or part of a product or its ornamentation resulting from various features such as lines, color, texture, form, shape and material.””

Article 55 of the IP Code is covering up both registered and unregistered designs.

If an unregistered design is made publicly available in Turkey for the first time, it will be protected for three years only as of the date it became publicly available.

Who may apply

The designer or his successor-in-interest may apply for protection. If the design is created in the execution of an employment contract, the right to the design belongs to the employer absent an agreement to the contrary. The right to the design will also belong to the employer if it was created using information and equipment available at the place of employment.

In cases where the design belongs to more than one person, if there is not a special agreement between the parties, the provisions of joint proprietorship provisions of the Turkish Civil Code shall apply. Pursuant to the IP Code, in case of violation of the joint design, one of the joint owners may initiate legal proceedings against third parties, provided that the other owners are notified within one month from the filing of the lawsuit.

Novelty and individual character

Pursuant to the IP Code, for a design to be registered, it is required to be novel and to have individual character. The Turkish Patent and Trademark Office (““The Office””), after receiving a design application, is conducting an ex officio examination for novelty. If the design is found to be novel, it will be published in the Official Designs Bulletin. After its publication in the Bulletin, the third parties are entitled to oppose to the design application within 3 months as of the publication date. Otherwise, if there is not any opposition filed, the application will obtain a registration certificate.

According to Article 56 of the IP Code a design shall be understood to have an individual character if the overall impression it creates on the informed user is different from the overall impression created on the same user by any design that is made public before the application or the priority date of the design (for registered designs and design applications), with which they shall be compared or the date when the design is first presented to the public (for unregistered designs).

Designs of products that are parts of complex items will be protected, provided that the design of the part itself is new and distinctive. However, unseen parts or devices of complex items, e.g. parts of an engine, cannot be registered as designs. To register a part of a complex item, the part should be visible during the normal use of the complex item. Normal use means the use by the end user, excluding maintenance, servicing, or repair work.

In addition to that, designs dictated by their technical function, designs of interconnections, designs that conflict with public order and general morality principles are not protected under the article 58 of IP Code.

Not registrable

A design is not eligible for protection if it:

1. is contrary to public order or general principles of morality;

2. must be produced in its exact form and dimensions to enable the product in which it is incorporated (or to which it is applied) to be mechanically assembled or connected with other products; or

3. dictated solely by its technical function.

Duration; renewal

Design registrations are valid for five years from the application filing date. They are renewable in increments of five years up to a limit of 25 total years. For unregistered designs, the period of protection is three years as of the date the design is first presented to public in Turkey.

Six months before the end of the protection period, the owner of the design has the right to request a renewal, provided that the requested fee is paid to the Office. In case the request for renewal is not submitted or the renewal fee is not paid within this term, the renewal request can be submitted within an additional period of six months as from the date when the period of protection ends, upon payment of an additional fee. The renewal takes effect the day after the protection period expires and is registered before the Office. If the renewal request is not made after the protection period of the design rights expires, the protection period of the design will end.

Invalidity

A registered design shall be declared invalid by the court if it does not fall within the description of the ““design”” as per the IP Code; if it is not new and does not have an individual character; if it is contrary to the principles of public order or general morality; if it results from a technical function; if it includes inappropriate use of the sovereignty signs within the scope of Article 6ter of the Paris Convention or other marks, arms, emblems, signs or names which concern public, have become public property in terms of religious, historical and cultural values and have not been granted a registration permit by the relevant authorities; if the application for registration is not filed by the legal or real persons entitled as per the IP Code or if it is proved that the application was filed in bad faith and includes unauthorized use of an intellectual property right; if the entitlement to the design right actually belongs to another person or persons or if there is a conflicting design which has been made available to the public at a later date but having an earlier date of filing.

Declaration of invalidity may be requested during the period of protection or within five years following the termination of the design right. A final decision for the declaration of invalidity will have retroactive effect.

Infringement

According to Article 81 of the IP Code the infringing acts are producing, putting on the market, selling, offering to make an agreement for, importing, putting to commercial use or keeping in stock for these purposes the design or the product on which the design is used without the consent of the design right holder; unauthorized extending the scope of the rights granted by a license agreement by the right holder and/or assignment of the same rights to third parties and finally acts which violate the entitlement rights on designs.

For unregistered designs, protection is conferred only against identical or indistinguishably similar designs that are copied from the (protected) unregistered design. If it is not possible for the designer of the later design, who created the design independently, to know by reasonable means that the protected design has been presented to the public before his design, the later design cannot be considered as a copy of the protected design and will not constitute an infringement.

According to the IP Code, in case of a design infringement, generally the following remedies can be applied:

1. Determination of the infringement;

2. Prevention of manufacturing, sale, importation of the infringing products;

3. Removal and destruction of infringing products and materials;

4. Claim for material and moral damages (in case of intentional infringement); and

5. Publication of the verdict of the Court.

Where there is a likelihood of infringement and irreparable damages, the courts may issue preliminary injunctions (““PI””).

III. Utility Models

Definitions

Inventions that are novel and industrially applicable are eligible for protection as utility models. Unlike patents, presence of an inventive step is not required.

Who may apply

According to Article 109 of the IP Code, the inventor or his successor-in-interest may apply for protection.

Where an invention has been made jointly by more than one person, unless foreseen otherwise by the parties, the right to request a utility model will belong to them jointly. Where an invention has been made independently by several persons at the same time, the right to a utility model will belong to the person who files the first application or who can claim an earlier priority right.

The person who is the first to apply for a utility model will be vested with the right to request the utility model until proof to the contrary is established. As per Article 138 of the IP Code, the filing of the utility model application by a non-entitled person may result in the invalidity of the utility model.

Novelty

An invention which is not included in the state of the art is accepted to be novel.

It is regulated that the state of the art is accepted to comprise information or data pertaining to the subject matter of the invention, accessible to the public in any part of the world, before the date of filing of the application for a patent by disclosure whether in writing, or orally, by use or in any other way. Other than this, the disclosures of national patent and utility model applications published on the date of the application or thereafter but dated back to before the application date are also considered as state of the art. However, pursuant to Article 83(5) of the IP Code, the content of these applications and documents which are considered to form the state of the art is not taken into account in the evaluation of the inventive step.

Likewise, Article 84 of the IP Code regulates ““grace period”” for declarations made 12 months before application for a utility model or before priority date. Accordingly, specific declarations are not deemed to destroy novelty of an invention under certain conditions, if:

1. The declaration is made by the inventor;

2. The declaration is made by an authority to which utility model application is submitted and the information declared by this authority:

3. is referred in another application made by the applicant and the application is disclosed by the relevant authority although it should not;

4. is declared in a application filed by a third party who has acquired information directly or indirectly from the inventor without the knowledge or permission of the inventor; or

5. The declaration is made by a third person who has acquired information directly or indirectly from the inventor.

Registrable

An invention which are novel and industrially applicable can be registered as a utility model if it is not within the scope of the non-registerable categories listed under &s;§149A:14 heading.

Not registrable

The following cannot be registered as a utility model:

1. Discoveries, scientific theories, mathematical methods;

2. Plans, methods and rules in relation to mental acts, business and game activities;

3. Computer programmes;

4. Literary and artistic works, scientific works, creations having an aesthetic characteristic;

5. Delivery of information;

6. Inventions violating public order or morality;

7. All kind of treatment methods including diagnosis methods and surgical methods that will be practiced on human or animal body;

8. Plant and animal varieties or species or biological processes for producing or breeding plants and animals (except microbiological processes or products of them);

9. Simple discovery of one of the elements of the human body, including a gene sequence;

10. Human cloning processes, the use of human embryos for industrial or commercial purposes, certain processes for modifying the human genetic code;

11. Inventions regarding chemical or biological substances or chemical or biological methods or products obtained with those methods;

12. Pharmaceutical substances or pharmaceutical methods or products obtained with those methods;

13. Biotechnological inventions; and

14. Methods or products obtained with those methods.

Effect of registration

The utility model holder has the following rights:

1. Prevention and removal of consequences of utility model infringing acts which are listed in Article 141 of the IP Code, which are:

a. Imitation of a product protected by the utility model by manufacturing it fully or in part without the permission of the utility model owner;

b. To sell, distribute or trade in any other way products manufactured in violation of ownership rights, or to import, keep for sale or use such products or to suggest a contract about such products, with knowledge that the products are complete or partial imitations or while in a position to know they are such imitations;

c. To use an invented method without the permission of the utility model owner or to sell, distribute or trade in any other way products that have been manufactured with direct use of the invented method without permission, or to import, keep for sale or use or suggest a contract about such products with knowledge that they were manufactured with the invented method without permission or while in a position to know they were manufactured in this way;

d. Registration of the utility model right on behalf of an unauthorized person; and

e. To extend contractual or compulsory licensing rights or to transfer such rights to third parties.

    2. Preventing third parties from supplying a person who is not entitled to perform/execute the invention protected with the utility model, with means or tools that make it possible to perform or execute the invention, if it relates to an essential element of that invention (Article 86, IP Code); and

    3. Licensing its utility model rights to the third parties.

Procedure

Utility model applications are examined and granted by the Office.

If a utility model application is made in Turkey, the application will go through the following stages during registration. A utility model registration process including the following stages takes about 1-2 years.

1. Formality Examination;

2. Preparation of Utility Model Search Report;

3. Publication of Utility Model Application; and

4. Announcement of Utility Model Grant Decision.

After the utility model application is filed, it is examined by the Office in terms of the formal requirements. If there is no deficiency in application after the formal examination, the process of preparing the research report is started by the Office.

A detailed search is carried out by the Office for the utility model application in terms of novelty and industrial applicability criteria. This search is prepared as a report by examining all the patent/non-patent technical literature around the world, and evaluating the documents closest to the invention made before the application date. However, there is no substantive examination for utility models.

 If no early publication request is made with the application, the utility model application is published in the Bulletin at the end of 18 months following the application date.

Third parties cannot oppose the utility model application (Article 143/11, IP Code). However, third parties can file their statements against the content of the search report within three months from publication of the search report in the Official Bulletin.

Documents required

An application for a utility model certificate must include:

1. Application form;

2. Description explaining the subject of the invention;

3. Claim or claims covering technical features of the invention claimed to be novel;

4. Technical drawings referred to in the specification, claim or claims;

5. Abstract; and

6. Document showing that the application fee has been paid.

As of the date when all of the following minimum requirements are submitted to the Turkish Patent and Trademark Office, the utility model application date becomes final and the application is processed; all other required documents can be completed within two months from the application date without the need for any notification. The minimum requirements for according a date of filing are the following:

1. Request for granting a utility model;

2. Identity and contact information of the applicant; and

3. A description written in Turkish or in one of the foreign languages specified in the second paragraph or a reference to a previous application).

Duration; renewal

Utility model certificates are valid for 10 years from the application filing date. They are not renewable.

Infringement

The following acts are listed in Article 141 of the IP Code as acts constituting utility model infringement. In the presence of any of these acts, a utility model infringement action can be brought:

1. Imitation of a product with utility model by manufacturing it fully or in part without the permission of the utility model owner.

2. To sell, distribute or trade in any other way products manufactured in violation of ownership rights, or to import, keep for sale or use such products or to suggest a contract about such products, with knowledge that the products are complete or partial imitations or while in a position to know they are such imitations.

3. To use an invented method without the permission of the utility model owner or to sell, distribute or trade-in any other way products that have been manufactured with direct use of the invented method without permission, or to import, keep for sale or use or suggest a contract about such products with knowledge that they were manufactured with the invented method without permission or while in a position to know they were manufactured in this way.

4. Registration of the utility model right on behalf of an unauthorized person.

5. To extend contractual or compulsory licensing rights or to transfer such rights to third parties.

A utility model owner is also entitled to prevent third parties from supplying a person who is not entitled to perform/execute the utility model invention, with means or tools that make it possible to perform or execute the patented invention, if it relates to an essential element of that invention (Article 86, IP Code). For this provision to apply, the third party must know that these means or tools are suitable for putting the invention into effect, and are likely to be used for this purpose. However, this provision does not apply when those means or tools are commercial staple products unless the third party induces the other party to perform or execute the invention.

On the other hand, there are currently no provisions on inducement of infringement.

The doctrine of equivalents is governed by Article 89/5 of the IP Code. In determining the scope of protection conferred by a patent, the elements performing substantially the same function, performing that function in a substantially similar manner, and giving the same result as the element as expressed in the claim(s), should generally be deemed to be equivalent to the elements as expressed in the claim(s). Finally, there is no criminal enforcement of patent rights under Turkish Law.

Infringement action should be filed before the competent Courts against the party who engaged with the infringing act. A claim for patent infringement may be raised as long as the infringement and the protection term of the patent continue. However, if there is a terminated infringing act at stake, according to Article 72 of the Turkish Code of Obligations, the infringement action has to be filed within two years as of the day of notice of the terminated infringing act and within ten years as of the notice of the infringing act in any case.

Invalidity

Invalidity of the utility models on the grounds that the:

1. subject matter of the invention does not meet the requirements under the current law (Article 142, IP Code);

2. subject matter of the invention has not been described sufficiently to enable a person skilled in the relevant technical field to implement the invention;

3. subject matter of the utility model exceeds the scope of the application; and

4. holder of the utility models does not have the right to the utility model under Article 109 of the IP Code.

Invalidity of the utility model has a retroactive effect and the utility model right will deem to have never existed. As per Article 138 of the IP Code, utility model invalidity actions can be filed against the person recorded as the utility model owner in the Register during the term of the patent and within five years after the utility model has expired before the competent Courts.