A New Era for Trademarks in Turkey
Turkey’s trademark regime is undergoing a significant transformation, leaving behind the era of Decree Laws and Constitutional Court interventions. The long-discussed reforms to Turkey’s trademark law practices are now on the horizon. The finalized Industrial Property Law (“IP Law“), published in the Official Gazette on January 10, 2017, will bring about substantial changes with most provisions taking effect on the same date.
The IP Law consolidates provisions on trademarks, patents, industrial designs, and geographical indications that were previously addressed by separate pieces of secondary legislation. This eliminates the ambiguities and challenges caused by the decentralized approach to legislation and the reliance on secondary legislation for intellectual property rights.
As part of these reforms, the Turkish Patent Institute has also changed its name to the Turkish Patent and Trademark Institution (“TPTI“).
Key Changes under the IP Law
The IP Law introduces several significant changes that will have a lasting impact on the Turkish trademark system.
Fixed Time Periods
Under the IP Law, unless otherwise specified, all time periods are now standardized to two months. As a result, the opposition period is shortened from three months to two months.
Consent letters are now recognized as a legitimate method to overcome provisional refusal decisions based on the existence of an earlier trademark. In the past, consent letters, coexistence agreements, or sister company arrangements were not accepted as grounds for overcoming provisional refusals. Even if the prior registration holder consented to the later trademark, the TPTI would not cancel its provisional refusal decision. The IP Law now allows the submission of a notarized consent letter from the earlier trademark holder to overcome a provisional refusal decision.
Non-use Defense and Ex-officio Cancellation
Opposition and cancellation proceedings based on similarity now allow defendants to request proof of use. In opposition proceedings, if the opponent’s trademark has been registered for five or more years, the TPTI can ask for proof of use as of the filing date or date of priority of the later trademark application. If the opponent fails to prove its use, the opposition will not be accepted. If the use only covers some goods and services, the opposition will be limited to those specific goods and services.
The TPTI has also become the authorized body to consider requests for revocation of trademarks based on non-use. Additionally, the TPTI will examine claims about trademarks becoming generic and misleading starting from January 10, 2024, seven years after the IP Law comes into force.
Registration is no longer a defense in infringement actions
The IP Law clarifies that defendants can no longer raise industrial rights as a defense during infringement actions. Previously, infringers would often file a trademark application or obtain a registration for an earlier trademark as a defensive measure. The prior arrangement protected bad-faith applications, but the IP Law has removed this wide protection.
Compensation and Seizure
The IP Law addresses the issue of infringement complaints where the right holder obtains compensation from a counterparty for damages but fails to seize the offending goods. In such cases, right holders cannot file infringement complaints against third parties for those goods.
The IP Law explicitly states that the international exhaustion principle will be applied. Although this principle was already being applied in practice, it was not explicitly named in the previous legislation.
Loss of Right Due to Remaining Silent
The IP Law sets a specific duration for the silence period. If the senior right holder remains silent about the use of the trademark for five years, a cancellation action cannot be filed unless the subsequent trademark was filed in bad faith.
Cancellation and Invalidation Action
The IP Law separates cancellation and invalidation actions, outlining relevant provisions in different articles. Previously, both actions were referred to as “invalidation actions” despite having different effects.
Starting from January 1, 2018, parties can make comparative advertisements using competitors’ goods and services that meet the same needs or purposes. However, trademark holders can prevent third parties from using their trademark in comparative advertisements that do not comply with legal requirements.
Pre-Emptive Declaratory Judgments
Obtaining a declaratory judgment that infringement has not occurred is a key defensive measure for protecting intellectual property. The IP Law clarifies that there is no mandatory requirement to send a notice to the Right Owner via a notary public before initiating proceedings for a non-infringement determination action.
The IP Law applies to all applications filed after January 10, 2017. Registration proceedings for applications filed before that date will be carried out in accordance with the prior Decree Law.
The changes and clarifications introduced by the IP Law hold great promise for resolving practical challenges and uncertainties in Turkey’s trademark system. IP practitioners in Turkey eagerly anticipate these reforms, which are expected to bring about significant changes in current practices.
For more information on trademarks and intellectual property, visit Garrity Traina.