The need for a comprehensive revision of the Decree Laws as implemented through the protection of Intellectual Property Rights in Turkey has been an ongoing issue, and the chapters of this long journey so far have failed to pave the promising setting, with repeated terms of anti-climax in return.
The IP community in Turkey has been trying to speak out on behalf of the local and international firms to invest into Turkey, who have concerns of trust that prevail against the IP system, both in terms of practice on the administrative level and further through enforcing the rights as granted. Furthermore, practical attitudes and strategies have been generated to adjust to the environment in Turkey to achieve best solutions, with less risks.
Indeed, this has not been the quest only for the IP community, and the need for a substantial change has well been acknowledged and concentrated on senior administrative levels of TPI (Turkish Patent Institute) too. Since 2002, though not systematical and periodical, certain drafts have been discussed to signal the need to revise key articles of the decree laws. It is to be admitted that the political strategies adopted through the negotiations for accession to European Union shadows on different fields of society and the need for the transition of protection of IP has become top issues to be consolidated.
On a professional approach, we may argue that some earlier intentions to revise drafts with no solid ground arrived in relation to protection of IP – lessons learned– the feedback received from counter partners with whom TPI organizes frequent workshops and the case based topics as to drawbacks of the implementing regulations as addressed by the IP community at every possible grounds of discussion, all provide boost for this gradual change.
Though particulars of the new draft law deserves a detailed analyses through further articles, the outline for the readers of this article is set out to mainly refer to the key option for the applicants to benefit through registration of trademarks, i.e the option to co-exist if mutually agreed on.
Before moving to the details of this long awaited option soon to be practiced, key revisions of the new draft law worth nothing may be, but not limited to, the following:
- Co-Existence: This deserves to be listed as one of the top promises of the new draft Co-existence agreements will be accepted to be practical tools against rejection of a trademark application based on absolute grounds, due to earlier trademark application/ registrations cited with identical/confusingly similar description and class details.
- Publication Period: Once ex-officio examination is completed and affirmed to be applicable for registration, the said is published within the monthly official trademark bulletin, and the said term of publication has even recently been started to be The updated term of publication is now two months, which may well be interpreted to reach an assumption that the formalities through ex-officio examination of trademark applications are now faster compared to earlier practice of the related department of TPI. Though each case has its own transaction history, in some recent cases, notice of publications have been experienced to be notified even within within 15 days as of actual date of filing.
- Term of Opposition: Time to involve from filing to registration stage will be shorter thanks to the revised terms of oppositions to be filed against cited publications, to be limited to two months while the current practice enables interested third parties to attend to due action item within three
- Renewal per Class: Registered holders of trademarks may select classes at renewal stage where no such option is available through current practice (i.e the option to renew partially)
- Serious Use to be Proved: Per applicant’s request, the application of whom is contested during the publication period and the opponents who argue on registered earlier rights (at least for five years), are to prove serious use of the products/services which enjoy the right of protection and grounded as bases of opposition. This very article within the new draft law is another new requirement for opponents to consider and to satisfy while it may well be argued that the actual practice and frame of it will better be digested and acted upon through the course of related procedures, sure to be tailored individually per each particular
- Term of Distinctiveness: Deliberate reference is made to “distinctiveness” as a key concern to be satisfied during examination on absolute
The Critical Aspect of Co-existence agreements and Importance Attached
The Article 7/a (b) of Current Decree Law No. 556 in relation to protection of trademarks has been in the center of a series of discussions, as it sets the practice of Turkish Patent Institute (TPI) in relation to examination of trademark applications on absolute grounds. For an insight to be provided, the said Article is to be cited to read as follows:
Absolute Grounds for Refusal for Registry of a Trademark Article 7/1(b)
The following signs shall not be registered as a trademark:
- b) Trademarks identical or confusingly similar with a trademark registered earlier, or with an earlier date of application for registration in respect of an identical or same type of product or
Upon receipt of an official request to seek protection for a trademark application, the examiners of Trademark Department of TPI conduct an examination on absolute grounds where the trademark application as filed is subject to the provisions and implementing regulations as defined under Article 7. This very article is considered to be a formal ground for “public interest” to be protected, which is interpreted to be defined particularly under Article No.7/1(b), and discussed to be further supported through a legal ground as defined under the provision of the Article No. 35 of the Constitution. The respective article of the constitution priorities “public interest” where a right to a property may be limited or restricted if/when necessary, i.e “when in conflict with public interest”. The meaning to be attached to “public interest” is still not that narrow to be biased on a negative obligation criteria only, as it engages with the positive obligation to protect the rights conferred against third parties, too.
Centralized on the positive obligation on the logic behind this respective article of the constitution, Turkish Patent Institute consolidates the provisions of the said, and trademark applications as examined on absolute grounds are rejected for registered rights in a sense for “public interest” to prevail against third party applications, with confusingly similar nature and to prevent intended registration for/to protect the registered holder. The principle of uniqueness.
The Right Conferred through Application/Registration is in Public Domain to be Protected Ex-Officio?
The scope of the right of the holders of registered rights are defined
under Article No. 9 of Decree Law No. 556 and the rights conferred are at the disposal of the registered holders per their preferences, which are expected to be customized through the filter of the contemporary rules of world of business, commerce and trade and the actual setting of the environment where trademarks are to function in parallel to the mission associated.
Since this very article outlines the tools the registered holders may apply, it is obvious that the said are all within the discretion of the right owner. Then the question arrives to the idea behind the motivation of relocating the issue of “protection of public interest” and how it turns out to be translated to cover, to secure the interests of the registered holders.
Different attributions are available among the IP community in Turkey discussing whether the current practice of TPI is subjective, extends the logic of examination on absolute grounds (to reside mainly on the criteria to be satisfied for a description to be nominated as proper and distinctive), imitates to supervise the earlier rights (which are argued not to be associated with arguments on relative grounds) or not.
This so-called or discussed subjective approach, where the interest of the applicants/holders (tagged as public in the sense of Article 7/1(b)) prevails in the new draft law and examination on absolute grounds, will be carried out based on the earlier rights at the local registry. In that sense, although a certain population of IP community cited to be against this practice and consider the said to be outdated once compared to the practice of various IP authorities in different countries, there is still a considerable level of attitude to favor this approach for the trademark applicants/holders rights to be protected through preventing third party applications with confusingly similar nature at the administrative level.
Still, what the majority of the IP community in Turkey agree and appreciate is the introduction of co-existence agreements to be accepted by TPI, who has acknowledged the necessity to respect and adopt the contemporary rules of business, where (and if) the brand owners are willing to cooperate with third parties to expand the terms and potential of the business to be generated, while enjoying the exclusive rights granted.
Compared to earlier drafts, with an attempt to revise and foster the practice of protection of IP rights in Turkey, this very recent draft law has already been submitted to the Parliament and we hope the law to be accepted and be in force by the end of 2016. All these recent activities in a general sense have also been supported and co-operated with the Ministry of Science, Industry and Technology of Turkey. Sure, a new chapter is soon to be introduced and the practice of the revised articles may come along with minor adversities, yet the vision behind deserves to be appreciated as the key provisions, either revised or introduced, are intended to be evocative of contemporary regulation of leading IP offices in foreign countries and down to earth grounds for registered trademark will be provided to function at the discretion of their holders.
Trademark & Patent Attorney
This article was first published and circulated in the INTA, Orlando Issue 3 2016 of The Trademark Lawyer Magazine http://edition.pagesuite-professional.co.uk//launch.aspx?pbid=8f450367-5863-4898-9c66-eb82480402b1&pnum=53