Major changes to trademark law in Turkey: read all about it

The long-awaited New Turkish IP Code of Industrial Property, no. 6769, entered into force upon publication in the Official Gazette of January 10, 2017. The new Code repeals and replaces the Decree Laws on Patents and Utility Models, Trademark and Service Marks, Industrial Designs and Geographical Indications. The new Code is set to profoundly change the IP landscape in Turkey, affecting the legislative, administrative and professional components of the law. Kat friend Okan Can, of the Deris Law Firm in Istanbul, summarizes the changes to the trademark law; a further report on the new patent law will follow.

Several major changes have been introduced regarding registrability.

1. Colors and sound marks have been included in the definition of signs that may be protected as a trademark. The wording of the Code also paves the way for motion marks.

2. Trademark applications consisting of a registered geographical indication will be rejected by the Office. Therefore, words that have been registered as a geographical indication will no more be accepted for registration as a trademark.

3. The Code introduces the use of a Letter of Consent, by which the owner of an earlier trademark may consent to the registration and the use of an identical or similar trademark later filed for the same or similar goods or services. The absence of the possibility to submit a letter of consent under the former law was criticized.

Concerning oppositions, these changes are noteworthy:

1.The opposition period- which used to be three months, has been shortened to two months.

2. Bad faith is explicitly mentioned as a ground for filing an opposition.

3. The Code, unlike the former law, enables the applicant of an opposed trademark to require from the opponent show evidence of the use of the trademark on which the opposition is based, if the five-year grace period for non-use of the opponent’s trademark has passed. The same non-use argument can be claimed in a trademark infringement or cancellation action.

4. The parties may settle an opposition through mediation as per the Mediation Law.

The Patent Office will implement the administrative proceedings for a cancellation within seven years of entry into force of the Code, namely by 2024. These proceedings will include cancellation of a registered trademark on grounds of:

1. Non-use;

2. Becoming generic (on the products / services on which the trademark is used);

3. Deceiving the public (as to the characteristics, quality or geographical source);

4. Use of a certification mark contrary to the terms of its technical regulation that are provided to the Patent and Trademark Office.

Concerning infringement, the following changes are especially interesting:

1.The Code specifically provides that the use of a trademark as an essential part of a company/establishment name, or its illegal use in comparative advertisements, is prohibited.

2. Mere registration of a trademark does not constitute a legitimate defense against an infringement claim brought by the owner of an earlier IP right. This is a material change to the law, as the previously- settled Supreme Court case law deemed the mere fact of registration of a mark as a legally protectable use until cancellation of the mark by the Court. The same non-use argument can be claimed in a trademark infringement or cancellation action.

3. The Code introduces the international exhaustion principle instead of the national exhaustion principle provided by the former legislation.

As for criminal aspects, the Code provides for two notable provisions:

1. The Code introduces criminal provisions for trademark infringement only; there are no corresponding criminal provisions concerning patent, industrial design or geographical indications.

2. The Code regulates criminal offences concerning the counterfeiting of trademarks by providing that producing goods or providing services, exposing for sale or selling, importing or exporting, purchasing, keeping, transferring or storing for commercial purposes, by means of a counterfeit mark that infringes the registered trademark rights of a third party, is subject to a term imprisonment of between one and three years as well as the imposition of a monetary fine.