EMERGING ISSUES IN TURKISH INTELLECTUAL PROPERTY LAW potx

TRADEMARK LAW In General The Obtainment of Trademark Right and Genuine Holder-Ship Uniqueness Principle in Trademark Law The Notion of Bad Faith and Its Place in the Turkish Trademark La

EMERGING ISSUES

IN TURKISH INTELLECTUAL PROPERTY LAW

Published by Suluk & Kenaroglu Law Offıce at SmashwordsCopyright © 2011 by Suluk & Kenaroglu Law Offıce

Smashwords Edition, License NotesAll rights reserved No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording or otherwise,

without the prior permission of the copyright owner

The Process of Preliminary Injunction

The Position of Experts in Lawsuits

The Obligation of Securing Deposit for Foreigners

The Principle of Cumulative Protection

Exhaustion Principle and Parallel Importation

Loss of Rights due to the Remaining Silent

Customs Applications in the Fight against Counterfeit Goods and Piracy

II TRADEMARK LAW

In General

The Obtainment of Trademark Right and Genuine Holder-Ship

Uniqueness Principle in Trademark Law

The Notion of Bad Faith and Its Place in the Turkish Trademark LawWell-Known Trademarks

Patent Infringement and Criminal Measures

IV DESIGN LAW

Unregistered Inventions and Unfair Competition

Unregistered Designs and Unfair Competition

Law is national, in other words it is local and each law system is peculiar to itself The dizzy

developments in the information age result in incredible alterations regarding IP law Although the rules of law bear a national character, the alterations in this area hold global character at some degree via international agreements Nevertheless, despite all the harmonization endeavors via international agreements, IP law is still preserving its national character Although a crucial ground is covered by force of Common Market, the national character even in EU is not completely ruled out Briefly, the nationality in IP law is still too

dominant

In these days even the medium sized firms have commercial activities, such as manufacturing, sales and marketing outside of their own countries Therefore, the commercial players that carry on business in the international arena cannot stand against the protection of IPRs in the international scale

According to the IMF records, when purchasing power parity is predicated on, with the 932 billion $, the Turkish economy is the 16th biggest economy of the world and on the other hand, Turkey, with the % 8.9 growth rate, is the second most growing country, after China, in the world Thus, it seems not possible for companies having business in international area to neglect Turkish market

Compared to previous years, with the consolidation of the economy and the awareness in the

community, Turkey has begun to reserve crucial amounts of share to the R&D studies According to the data for 2008, Turkey has spent approximately 5.4 billion $ to R&D and the rate of this amount to the national income is 7.3 per thousand The aim of the government for 2013 is to pull this rate to 2% It has been

transferred a considerable amount of share to R&D from the public budget in recent years and the transfer will be continued In other words, the R&D studies are in the tendency of a fast increase and the increase will

be even faster in the near future

As a matter of fact, with respect to trademark, patent and design applications filed within the Turkish Patent Institute, the interest of both the local and foreign firms has increased particularly in Turkey Today in Turkey, it is made over seventy thousand trademark applications per year and it is on the third rank in Europe regarding trademark applications Twelve thousand of the all trademark applications have been filed by foreign applicants It should be taken into the account that total number of the annual trademark applications was around only sixteen thousand in 1995 The number of patent applications, which were approximately one thousand five hundred in the mentioned year, has escalated to seven thousand in 2009 On the other hand, total amount of the annual design applications has reached to thirty thousand in the recent years These numbers confirm our finding on the fact that Turkey has become a very important market for companies having business in the international area

In the study that you are holding now, after the general issues on nearly all areas of IP law, we focused on the emerging issues and problematic subjects Some of the problems, examined in this study, arise

as such by its nature, just like the problems in well-known trademarks while the others occurred because of the applications peculiar to Turkey, such as the protection of unregistered innovations or designs under unfair competition regulations for an unlimited period of time

Our study has been prepared more of by taking the IP problems that the foreign companies have experienced in Turkey into consideration The readers will on one side be introduced to the problematic areas

of Turkish execution; on the other side will be able to observe the variations from the general executions in the world

ABBREVIATIONS

App/Appr: Approximately

art: Article

bis: Additional

CU: Customs Union

ECJ: European Court of Justice

EEA: European Economic Area

EPC: European Patent Convention

EU: European Union

FRAPA: Format Recognition and Protection Association

FSEK: Copyright Code

INN: International Nonproprietary Names

IP: Intellectual Property

IPC: International Patent Classification

IPRs: Intellectual Property Rights

MarKHK: Trademark Degree Law

MESAM: Musical Work Owners’ Society of Turkey

Nr: Number

PCT: Patent Cooperation Treaty

PRAFA: The Format Recognition and Protection Association

PLT: Patent Law Treaty

R&D: Research and Development

SME: Small and Medium Sized Enterprise

SMEs: Small and Medium Enterprises

SPC: Supplementary Patent Certificate

TL: Turkish Liras

TLT: Trademark Law Treaty

TPI: Turkish Patent Institute

TRIPs: Agreement on Trade Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods

TV: Television

UCC: Universal Copyright Convention

UK: United Kingdom

UPOV: International Convention for the Protection of New Varieties of Plants

USA: United States of America

WCT: WIPO Copyright Treaty

WIPO: World Intellectual Property Organization

WPPT: WIPO Performances and Phonograms Treaty

WTO: World Trade Organization

I TURKISH INTELLECTUAL PROPERTY LAW SYSTEM

1 IN GENERAL

The protection of Turkish intellectual property rights (hereinafter IPRs) goes back to the time of Ottomans The Patent Code dated 1879, which was adapted from the French Patent Code dated 1844, is the sixth patent code of the world On the other hand, the first Turkish Copyright Code was regulated in 1850 while the first Turkish Trademark Code was regulated in 1872 by the influence of French law The process of codifications on the subject matters continued after the foundation of Turkish Republic in 1923 as well

In recent years Turkey has made crucial reforms in IP legislation with the effect of globalization The year 1995 could be accepted as a milestone in this context Starting from 1995, depending on liabilities derived from the 1/95 EU - Turkey Association Council Decision, Turkey has entered a rapid course of harmonization of her legislations with the EU law and the international agreements As a result of these endeavors a series of legislations entered into force in the areas of both copyright and industrial rights In this context, in 1995 and the forthcoming years the legislations date back to the time of Ottomans, such as

copyright, patent and trademark have completely changed Again in 1995 the regulations on designs, utility models and geographical indications were entered into force for the first time The regulations on integrated circuits and plant variety protection were implemented in the forthcoming years

However, the implementation process created some serious problems, since the regulations were made through decree laws rather than codes On the other hand, although 15 years has passed over the

implementations, the gaps and lapses in the related regulations have not been obviated yet As a result, currently Grand National Assembly of Turkey is still working on the draft codes on the related areas of IP law The drafts are still waiting to become law and to enter into force

Turkey became a party to some conventions and international agreements, such as Paris in 1925 and Bern in 1952 Starting from 1995 Turkey approved the other fundamental agreements, such as WTO/ TRIPs, PCT, Madrid Protocol, Hague, Rome, WCT and WPPT

In this context, as soon as the preparations on the draft laws become law, the Turkish IP legislation would become totally harmonized with the international standards Thus it is approved by all authorities when the subject matter was laid on the table during the accession negotiations with EU that the background

of the IP laws of Turkey are appropriate to the international standards However it is also acknowledged that the problems are pilled up on the matter of actualization/enforcement of the rules

Furthermore, Turkey has also developed in the administrative structure along with the law reform The Turkish Patent Institute (hereinafter TPI), which was founded in 1994, has a modern structure

Nevertheless there has been no improvement in the structure of the Turkish Copyrights and Cinema

Administration, which is under the auspices’ of Ministry of Culture The relevant institution is in the shape of

a classic governmental body The common problem of both institutions is the absence of qualified examiners and experts

The disputes over IP were being subjected to the authority of the general courts for long time As a result of the technical and legal expertise that the law requires, in 2001 the specialized courts of IP were founded Since then the specialized courts have been handling the IP related cases Currently there are more than 20 IP courts in Istanbul, Ankara and Izmir In the other cities county courts are authorized to handle IP cases Especially in the recent years both the number and the quality of the court decisions have been

increasing and the case law has been developing rapidly with the decisions of both first-degree IP courts and the Supreme Court The contribution of the education of some judges of the IP courts in the foreign countries

is very big in this sense

The numbers of the active trademark and patent agencies have also increased after 1995 Today there are hundreds of patent and trademark agencies all around Turkey This rapid increase is relatively unhealthy although it aims to satisfy the needs of the sector Although the sector necessitates experts in the fields, the trademark attorneys that have no prior law education or patent attorneys that do not posses technical

background a far away from solving problems, rather they become the problem Today, the number of the active patent attorneys, who posses technical background, is less then 100 Similarly there is a very little amount of trademark attorneys in the field that posses a law degree Unfortunately, this is one of the biggest weaknesses of the system

A special interest to the IP law education in the recent years is also observed The IP law classes that used to be elective have become compulsory lectures at some universities Moreover there are considerable amount of academic articles published and again both official and private enterprises arranging various different activities on the subject matter

As it was already marked in the “Foreword”, the number of trademark, patent and design applications have incredibly increased in the recent years In addition to the applications and the registrations and the disputes passed to the courts are in the tendency to accelerate too The reason could be deemed as the fact that now the local firms are discovering the importance of the protection of IPRs and the interest of the foreign firms is increasing as well

The mentioned positive developments reflect to the process of legal remedy For instance, in the area

of IP law disputes the Supreme Court manages to conclude approximately one thousand and five hundred cases in a year Furthermore depending on the increase in workload new IP courts are being founded in every day

As to the developments in copyright area, the collecting societies founded in the field of copyright law and especially society of musical works have begun to prepare their tariffs and to collect considerable amount of royalties from the users They also play a crucial role in the fight against piracy

Briefly, it can be expressed that there has been essential improvements in the Turkish IP system compared to the pre 1995 regulations, despite some shortcomings and flaws These improvements are not

only in the legislative, administrative or judicial phases but also the interest of the related sectors is increasing every single day

2 REVISION STUDIES ON LEGISLATION

a) General Information

As mentioned above (see In General) Turkey has renewed its IP legislation in 1995 and also made codifications for the first time in relation to the several aspects of IP such as; design, utility models and geographical indications Therefore it could be said that the year 1995 is a milestone for the Turkish IP law

Codification activities have been continued also after 1995 and the process has not been completed yet There are many reasons for the legislation studies not to maturate First of all, the issue has a very

dynamic structure by the effect of globalization Truth to say, many countries have to make serious

amendments in their legislations with the approval of TRIPs In order to be adapted to the new developments, the legislation studies of the countries have turned into a never-ending endeavor Secondly, reasons specific for Turkey also slow down the maturation of process For instance, in 1995 the legislation with respect to patents, trademarks, designs and geographical indications were regulated by the government through decree laws, instead of acts, in order to quickly fulfill the international obligations However, it has caused crucial negative legal consequences to regulate such areas by decree laws For instance, the Constitutional Court has cancelled most of the criminal provisions of the decree laws, only because they were not regulated by acts These cancellations hinder seriously the fight against piracy and counterfeiting Nevertheless, the Parliament has not promulgated the necessary legal regulations yet except limited provisions regarding trademarks

On the other hand, the legislative revision studies should be separated into two categories as

copyrights and industrial rights Because management of the copyrights is in the hands of Ministry of Culture and Tourism, industrial rights are in the hand of TPI Therefore different experts, who are totally independent from each other, must be executing the legislative studies in relation to these two fields

b) Copyright

The Copyright Code Nr 5846, dated to 1951, was in sleep for a long time so to speak Since the right owners had not prosecuted their rights sufficiently, the Code could not find an application field until 1995 For example, although it was acknowledged in the Code to establish collecting societies, the first collecting society was finally established, with a delay of 35 years, in 1986 Here the biggest factor is the state of being indifferent to their rights by the right owners

The first amendment in this Code had been made in 1983 But the main amendments were made in

1995 and afterwards 5 out of 6 amendments, which is the total number of amendments so far, were made after the mentioned date With the ones in 1995, 2001 and 2004 almost one third of the Code were amended Thus the Code, which was adopted from the German Copyright Code, dated to 1901, has become a ragbag

By conscious or unconscious interferences, supplementations against the philosophy of the code were made and the systematic of the Code has damaged

Lastly, the Ministry of Culture and Tourism is in the preparation of a new amendment consist of 40 articles It is easy to forecast that the systematic of the Code will be damaged even more, since the draft has also been prepared with the same method Here the thing to do is to take the opinions of the related

environment and write down the amendment text with the participation of the academicians, who have studies on the copyright field

c) Industrial Rights

Today’s legislation regarding trademarks, patents, utility models, designs and geographical

indications consist of the decree laws put in force in 1995 The legislative studies, which were rushed in order

to fulfill the international obligations were transformed into executive acts by a night and codified as decree laws Of course the legal consequences of the wrongful road followed were very heavy Most of the

regulations enacted by decree laws, actually, should have been legislated by acts For example, according to the Turkish Constitution Law the courts may only be founded by an act However, the intellectual and

industrial courts in Turkey have been founded by decree laws and their status is still arguable today

Although 15 years have passed from these regulations, the decree laws have not been transferred into acts Today there are four separate codification studies with respect to patents (including utility models), trademarks, designs and geographical indications It is not expected for these studies to become enactments in the short run The authorities that took this into consideration have prepared a separate draft consist of 6

articles in order to fill the gap that was created by the cancellation decision of the Constitutional Court In this draft, the criminal and civil sanctions in relation to patents (including utility models), designs and

geographical indications are dealt

3 PROCEEDING PROCEDURE

a) Competent Court

In the resolution of disputes regarding Turkish IP law, the legislator, which took into consideration the technical and expertise dimensions of the disputes, proposed the establishment of IP courts to carry out the duty in this field For that purpose IP Civil and Criminal Courts were established in 2001 and they consist

of only one judge Depending on the increase of the disputes in this field, the number of the established IP courts in Istanbul, Ankara and Izmir are increasing as well every single day In the mentioned three cities until now more than twenty IP courts has been established In the cities, where there has not been a IP court founded yet, the Civil and Criminal Courts of First Instance are in charge in the capacity of IP courts

The judges, who command the IP courts, come from a law background and the technical issues are solved by the assistance of experts

In the IP related disputes the case that is filed by the right owner, according to the qualification of the case, may be filed either in the court where the plaintiff or the defendant is resided or in the place, where the action subject to the case was committed or the effects of the act were took place In the cases that will be filed against the right owner by third parties the court in the domicile of the defendant is the only competent court

In the situation, which either the plaintiff or the defendant does not reside in Turkey, the competent court is the court authorized to handle the court actions for the address, which is the address of the attorney of the plaintiff/defendant’s office, registered in TPI records If the record is deleted then the courts in Ankara, where the headquarters of TPI is placed are authorized

b) The Proceeding Procedure

In IP cases, invalidation of a present registration, cancellation of a given verdict, determination of the infringement occurred, determination of the absence of the infringement, assignment of the right as a result of usurpation, prevention of the infringement, annulment of the consequences of the infringement, compensation for the damages occurred, seizure of the products and instruments that are subjected to infringement,

acknowledgement of the property right to the right owner on these products and instruments or their

annihilation and announcement of the ruling to the public can be claimed Each of the mentioned claims can

be subjected to an independent court action, but it is also possible to file a court action with all the mentioned claims

The written proceeding procedure is recognized as the general procedure for the civil and criminal court actions in Turkey and the proceedings in IP cases are carried out according to the general proceeding procedure

In the criminal cases, investigation and prosecution are subjected to a complaint by the right holder in principle In other words, a public action cannot be filed ex-officio, unless the person, whose rights are violated, files a complaint against the infringers There are also some exceptional cases, such as banderol crimes, that are ex-officio investigated and prosecuted by the public prosecutors and the courts

The right owner may withdraw his/her complaint or renounce his/her action any time before the verdict is finalized The case drops with the withdrawal of the complaint or the renouncement of the case In the cases, where there is more than one perpetrator, the case drops totally even when the complaint is

withdrawn only for one or several perpetrators A person, who withdraws his/her complaint or the case, may file a complaint or a case again with respect to the same issue Therefore, withdrawal of the case depends on the permission of the defendant However, the plaintiff does not require the permission of the perpetrator to renounce the right of filing a complaint or a case regarding the mentioned violation Yet the person, who renounces his/her right, is not entitled to file a case or a complaint on the same issue later on The case will drop in the event of waiver of the right, just like it happens in the abandonment or withdrawal

In civil suits, the right owner may request the transfer of the property right of the counterfeit products and instruments to him/her In the criminal suits, it is not possible to grant the property right of the products and instruments to complainant In practice, the civil and criminal cases are filed usually simultaneously The possession of the counterfeit products is generally given either to complainant or to perpetrator in their

capacity of trustee In the proceeding phase, it can be alleged by both parties that the products that are

subjected to examination are not the same with the ones that were seized In order to eliminate this prejudice,

to give the possession of the products that are claimed to be counterfeit to the court safety room is the most appropriate solution

On the other hand, just like in the general procedure, preliminary injunctions can be demanded in criminal and/or civil courts actions based on IPRs The preliminary injunction issue in IP cases will be separately examined below

c) Burden of Proof

The burden of proof is generally on the plaintiff However there are some exceptions of this general rule For instance, in the invalidation actions based on the non-use of the trademark, the burden of proof is on the defendant In other words, in the invalidation actions based on non-use ground, it is sufficient for the plaintiff to claim that the trademark has not being used If the trademark has actually being used, it is

expected from the defendant to prove it Otherwise, it is deemed as the plaintiff proved his/her case and the case would be accepted Besides these exceptions, the burden of proof is always on the plaintiff

d) Evidences

The IP actions are subjected to written proceeding procedure in principle Therefore, the parties have

to prove their claims especially by written information and documents Within this context, lots of materials, such as the commercial books, invoices, catalogues, brochures, e-mails can be submitted to the file as

evidence

During these cases the parties can call witnesses or submit affidavits to the file under the

circumstances that the court accepts such materials as evidence However since the affidavit application is uncommon in Turkish law, the evidence value of the affidavits, especially the ones that are submitted are low

The parties may demand from the court to assign an expert or an expert panel for examination of the file and use the expert report as evidence Furthermore, the parties can also obtain reports with regard to a pending court action from the experts which are not assigned by the court However, of course the reports that are prepared by private experts upon request by one of the parties are not considered equal with the reports prepared by the experts appointed by the courts Most of the courts do not take these private reports into consideration Some judges do not even permit the submission of these kinds of reports to the files

e) Duration of the Proceeding

The duration of a civil or a criminal court action filed before the IP courts is approximately 1 to 3 years in Turkey There are several reasons under this lengthen period of time For instance; the courts

generally appoint an expert panel for examination of the file and when the report is lacking or not adequate or upon the objections by the parties, it sometimes become compulsory to appoint a second or even a third expert panel for re-examination of the file Thus, duration of the expert examination(s) on the file takes around 1 to 2 years

Upon the appeal of the verdict held by the IP court, the duration of the appeal examination before the Supreme Court takes approximately 15 to 18 months Additionally, re-examination of the decision of the Supreme Court can also be demanded and the re-examination phase usually takes 6 to 8 months Briefly, the approximate duration of the finalization of an IP court decision including the appeal and the re-examination phases takes 1 to 5 years

f) Cost of the Proceeding

The cost of proceedings and the attorney fees in Turkey are very low compared to European

countries According to the data of WIPO Magazine, February 2010 Edition, for a patent case it is paid approximately 100.000 Euro in Spain, 80.000-150.000 Euro in France, 750.000-1.500.000 Euro in UK as attorney fees, whereas in Turkey approximately 10.000-50.000 Euro is requested as an attorney fee

The official costs of proceedings are also very low in Turkey For instance, the official filing fee of

an invalidation action is less than 100 Euro In the further phases of the proceeding, the file is sent to a panel

of experts, consist of 3 people The fee for the expert panel is approximately 750 Euro In the case, when the file is sent to a new panel of experts, the mentioned amount shall be paid for the new expert examination as well On the other hand, the official cost of appealing an action is approximately 100 Euro

As in action for damages, in the cases, in which the matter of dispute is a certain amount of money, a certain percent of that amount, namely % 0.60 is deposited in the treasury of the court as the legal fee

Lastly, it should be mentioned that the party who loses the case covers all the legal fees and

proceeding expenses, except the attorney’s fee that is paid to the winning party’s attorneys In the case that the opposing party is represented by an attorney, the losing party condemns to pay a certain amount of legal attorney fee in favor of the opposing party’s attorney

4 THE PROCESS OF PRELIMINARY INJUNCTION

Pursuant to the art.103 of the Code of Civil Procedure, when there is a risk that the action in dispute might create an important danger or cause an irreparable damage, then the judge has the right to decide for a preliminary injunction against the defendant at the beginning of or during the court action Nevertheless the preliminary injunction cannot be held in a way that provides the outcome of the main judgment This article

is the basis of the preliminary injunction procedure in the civil law disputes

IPRs are protected by private legislations As a part of these private legislations the procedure of preliminary injunction is also specifically regulated As a consequence, it is possible within the system to achieve faster and wide ranging preliminary injunction decisions in the scope of IP law The incentive of this special regulation for IP law is the fact that in almost every infringement of any IPR, there is always a big risk of irreparable damage

For instance, on the contrary to the above-mentioned art.103, the art.77 of the Trademark Decree Law states that a preliminary injunction decision shall measure up to the ability of providing the effectiveness

of the main judgment In this context the owner, whose trademark right has been damaged has a right to demand preliminary injunctions, such as the cessation of the acts of infringement of the trademark rights of the plaintiff, the seizure of the infringing goods or ordering the placement of security for damages to be compensated

This regulation in trademark law can also be found in the Turkish Copyright Code According to the art.77 of the Turkish Copyright Code the owner of a work shall demand preliminary injunction on the same context and by the same procedure with trademark owners Similarly the art.64 and 65 of Design Decree Law and art.151 and 152 of Patent Decree Law contain the same regulations on the subject matter

The disputes on IPRs are in the duty of IP courts Therefore the IP courts in the IPR disputes shall handle the proceedings for the preliminary injunction However, depending on the general rules of procedure law it is seen that the preliminary injunctions claimed prior to the civil court actions (ex-parte) can be

requested from the general courts and thus the decisions sometimes are held by the general courts as well

A preliminary injunction request can be filed before the filing of the main court action (ex-parte) or within the plaint petition at the time of the filing of the main action or during the trial at the first instance phase It is allowed to file the request until the end of the first instance proceeding If there is a preliminary injunction request prior to the filing of the main action, the subsequent court action (main action) must be filed within 10 days after the issuance of the preliminary injunction

All the evidences that will be submitted during the main court action must be submitted in advance when the request of preliminary injunction is filed If the preliminary injunction request is ex-parte filed before the main court action, all the evidences that have already been submitted together with the preliminary injunction request must be re-submitted to the main file This process prevents the advancement of the case and thus the decision and also brings extra costs Therefore if there is not a very crucial and/or specific situation there is no need to request an ex-parte preliminary injunction prior to the main action and it would

be better to file the request within the plaint petition for the main action When the preliminary injunction is requested with the main case, it also takes one to two months to get an injunction But at least this request does not affect the process of the case, since the examination on preliminary injunction request does not stop the regular flow of the proceedings

Both in the preliminary injunctions requested before or after the filing of the main action, the judge may seek for an expert report if it is required The expert examination is another element that postpones the issuance of the final decision on the preliminary injunction request Nevertheless the IP courts generally prefer to obtain at least one expert report

The duration of examination on preliminary injunction requests varies from 1 to 2 months to 8 to 10 months, which depends on the way the judge follows The process may be concluded in 1 to 2 months if the judge decides to continue to the proceeding in the absence of the defendant, without sending any notification

to him/her and also decides not to seek an expert report However if the notification has made to the

defendant and both of the parties has been called out to the courts and the judge decides to send the case file

to an expert then this period may be lengthen to 10 months If the action is also considered as a criminal act than it is preferable to file a criminal complaint to the public prosecutor other than requesting a preliminary injunction case when the length of the preliminary injunction proceeding in the civil courts are considered The preliminary injunction decisions that are held within at least 2 months can be obtained in 2 to 3 days from the public prosecutor

The judge can rule in favor of preliminary injunction either gratuitously or by obliging the plaintiff to secure a deposit in return When the deposit is obligatory that the party who got the preliminary injunction decision in favor must secure the amount of deposit in Turkish Liras in cash or lay up the letter of guarantee

to the court’s pay office The letter of guarantee can only be issued by the national banks of deposit In practice it is not possible for a foreign enterprise that has neither a domicile nor an official branch in Turkey

to obtain a letter of guarantee from the Turkish deposit banks As a result the foreign firms may only secure a deposit in cash

The deposit will be held in the pay office of the court until the decision of the first instance court is become final and binding Yet if the case is dismissed in the end of the proceeding and the defendant suffer damages, for example because of the preliminary injunction preventing him from use of the trademark, the defendant is entitled to file an independent court action in order to compensate his/her damages from this deposit However it has to be mentioned that the rejection of the main case does not necessarily mean that the preliminary injunction decision was unlawful and/or the defendant has been suffering damages because of this decision The defendant is obliged to prove that he/she had suffered losses precisely because of the unlawful preliminary injunction and to submit solid evidences to show the size of his/her damages

Since the secured deposit is not being valued in any ways, the amount of money that was secured loses its value as the time passes in the course of proceedings This is the most essential element that impels the firms to think twice before requesting a preliminary injunction The amount of the deposit may vary according to the volume of the enterprises of the both parties and/or the context of the commercial activity that will be prevented by preliminary injunction This amount can be a couple of thousand or of hundred thousand Turkish Liras In the special cases such as an infringement of a pharmaceutical patent, the million Turkish Liras can be requested as the guarantee Within this year in one of the cases where our firm is

representing the plaintiff, it was held to a preliminary injunction against the biggest Turkish national bank by the IP courts under the obligation of securing an amount of 150.000 Turkish Liras (app 75.000 Euro) as a deposit As a result the use of the trademark in consideration has been ceased as a precautionary measure This amount is one of the highest amounts that have been appraised by the IP courts so far

In the light of this information it can be stated that the procedure of preliminary injunction carries a fundamental value in the area of IP law and may be deemed as a very important legal instrument for the aggrieved party Especially when the duration of the lawsuits is taken into account, it is an essential

advantage to solve a dispute at the very beginning of the lawsuit by requesting preliminary injunction

5 THE POSITION OF EXPERTS IN LAWSUITS

The courts seek the assistance of the experts for the subjects that necessitates special or technical knowledge and the experts are considered as the assistants of the judge

Following the collection of evidences the court sends the case file to the experts In general, the courts order from the experts to submit a report considering the claims and the defenses In practice it is rarely seen that the judges describe the duties in relation to what the experts will examine However the application where the judges clarify the scope of the examination and the duties of the experts is more

incisive

In practice a lawyer, a designer/an engineer/an artist, according to the relevant dispute and a financial advisor or a sector expert are inducted as a panel of experts

Both parties have the right to object to the ascertained experts within three days after the appointment

of the panel of experts is learned If the court finds the objection reasonable, than another expert is appointed instead of the objected one As long as the objection is made depending on a solid ground, it is usually accepted by the courts

The duration that has been given to the experts to submit their report is approximately 2 months However in practice mostly the deadline is always exceeded and the case files generally return from the experts within 6 to 10 months

In the case of a delay the court shall demand, by sending a cahier, the submission of the report by the request of one of the parties A criminal complaint may be submitted by the courts when the experts do not obey the date set forth in the cahier for the submission of the report In this situation the court asks also for the return of the case file without any examination

The parties can also object to the expert reports If the report is not adequate, in the meaning of not clearing the necessary points or if there are contradictions in the report, then the parties may demand

according to the situation either to obtain an additional report from the same experts or to appointment of a new panel of experts for a second report The courts have a wide range of power of discretion in this matter and can accept the objection(s) of the parties or deny the request if it finds the report adequate However the Supreme Court reverses the first instance decisions when they are based on an inadequate, incomplete, contradictory expert reports or the reports not suitable to audit

To prepare a false report is a crime If there is a doubt on the objectivity of the experts, the court or one of the parties can file a criminal complaint against the experts The experts stand trial just like the judges

in the high criminal courts for the negligence or the misconduct of the duty

There are three people in the expert panels in general It is usually assessed 1.500 TL (750 Euro) in total as the fee of three experts, approximately 500 TL for each However this amount may vary according to concrete case and can be raised to the amount of 4.500 TL (2.200 Euro) As there is a possibility that the case file may be sent to a second or even a third panel of experts according to the situation this cost can be

doubled or tripled

The party who lost the case pays also the expert fees However it must be mentioned that the plaintiff pays the fees of experts in advance after the court appoints the panel of experts In the case of plaintiff winning the case the amount of money that plaintiff has paid as the expert fee will be collected from the defendant at the end of the trial

In the practice of Turkish Law, the IP courts seek the assistance of experts nearly in every single case related to copyrights, patent, trademark and design law and unfair competition The Supreme Court obliges the examination of experts even in the matter of similarity among trademarks and depends on the reason that the disputes regarding IP law necessitate special and technical knowledge In our opinion the judges of the IP courts should be entitled to decide whether the trademarks constitute a likelihood of confusion or not

Likewise in design cases the judge of the IP court can act like an informed user and examine whether the designs are similar or not Briefly the courts should not be held obliged to send the case files to experts unless they find it indeed necessary

Since the practice of Turkish IP law is relatively new, yet neither the lawyers nor the sector experts possess adequate knowledge On the other hand it is not usually possible in the big cities for the appointed experts to come together and prepare the report as a panel Furthermore the specialized and/or sector expert usually faces difficulties in defining what to examine, without the guidance of the legal expert Even if they make the right definition, they generally examine the facts according to their own knowledge, rather than the fundamental principles mentioned in the relevant codes For instance in a design case, although the law does not require an aesthetic feature for a design material, aesthetic feature is sought for the design material to enjoy the design protection and they can examine the relevant designs from technical angles rather than confining the similarity with the visual properties of the designs

Depending on these drawbacks in the expert examinations the cases regarding IPR drag on Plus the

IP courts generally obtain an additional report or a second report by forming another panel of experts

Furthermore if a contradiction between two reports is occurred, then just to overcome this contradiction between the first and the second report a new report may be requested by forming a third panel Although the expert report is not binding for the judge according to the Supreme Court, the situation is deemed as a reason

to reverse the judgment when the judge sought the expert report but held the decision on the contrary of the report According to the Supreme Court to reach to a decision depending on an expert report, which is not suitable to audit is another reason to reverse the judgment The 11th Civil Chamber of the Supreme Court is currently responsible for the disputes of IP law and it is determined that approximately 65 cases out of a hundred are subjected to reversal Because of all these reasons it takes more than five years (including the

appeal phase) for an IP case to be concluded Despite all these endeavors the rightfulness of the judgments are still arguable The negative contributions of the expert reports are considerable in these unlawful

decisions

As to the solution of the problem, the habit of sending every single case to the experts must be abandoned In order for the expertise institution to work effectively, the people who are going to be experts should be educated In this context, it can be stated that there is need for an expertise institution

6 THE OBLIGATION OF SECURING DEPOSIT FOR FOREIGNERS

a) In General

As a general rule there is no requirement to secure a deposit or bond of any kind for the plaintiff, follower or intervener (real and/or legal person), who has a domicile in the country of filing Nevertheless there are exceptions of this rule where foreign plaintiffs are obliged to secure deposit upon initiation of a court action In case the court rejects the court action, the security is used to compensate for court and

enforcement fees and the defendant's damages The amount of the security is determined by the court

Generally, the amount can be deposited in the form of cash, securities, real property (mortgage) or bank letters of guarantee (bond) Although it seems like the procedure of deposit seems to be settled, it is

experienced that problems may arise by reason of their foreign nationality or of lack of domicile or residence

in the country, especially when the IP cases considered

In Turkey this matter is subjected to several codes and of course regulated according to the

international agreements that have been already signed On this matter, first thing to concentrate on is the Turkish Judicial Code, nr.1086 Art.97 of the Code states that; it is obligatory to secure a deposit for real and/

or legal person that have filed a court action or made a demand before the courts and enforcement offices and have no domicile in Turkey Citizenship does not have an importance in this context Therefore even the Turkish citizens that are not resided in Turkey shall secure a deposit Having said that, it has to be reminded that this obligation is only for the plaintiff and the ones who start an executive proceeding Therefore neither the domicile nor the nationality of the defendant has an effect in regards Here the point to take into account

is that the defendant has to claim the obligation of securing the deposit against the plaintiff The claim is considered as a preliminary objection, which brings the second attention point: It must be asserted with the courts before the judge begins to explore the merits of the case

The Turkish International Private and Civil Procedure Code, No: 5718 comprise a similar clause on art.48 The variation from Turkish Judicial Code art.97 regarding the merits of the rule is that the obligation

of securing deposit in International Private and Civil Procedure Code is based on the nationality instead of domicile criteria Thus even the foreigners that have a domicile in Turkey are not qualified to be exempted from this obligation The exemption is expressed on the second paragraph of the article as the principal of reciprocity In accordance with this principal; in order to be deemed as released from this obligation, there has to be an agreement among the countries that hinder the obligation of deposit reciprocity The list of the bilateral agreements that Turkey has signed with other countries can be asked from the Ministry of Justice

However this clause in International Private and Civil Procedure Code has obviated by the Hague Convention on Civil Procedure 1956 (hereinafter Hague Convention) According to the art.17 of the Hague Convention there may be no security, bond or deposit of any kind imposed by reason of their foreign

nationality, or of lack of domicile or residence in the country, upon nationals of one of the contracting states, having their domicile in one of these States, who are plaintiffs or parties intervening before the courts of another of those States As a result nationals from the contracting states of the Hague Convention shall be exempted from this obligation for the cases filed in Turkey

b) Deposit in IP Cases

Although the general rules are mentioned above, when it comes to the regulations for IP rights, there may be some misunderstandings in relation to procedural regulations and the obligation of securing a deposit These problems emerge from the wrong interpretation of the international agreements such as TRIPs and Paris Convention The national treatment clause has accepted in both of these agreements in relation to the laws regulating IP According to the national treatment clauses stated in art.2 and art.3 of Paris Convention and art 3 of TRIPs; nationals of any party state shall, as regards the protection of IP, enjoy the advantages in all the other countries of the party states, which their respective laws now grant to their nationals (The Principal of National Treatment) Consequently, this provision accepts that all the nationals of the contracting

states will have the same protection and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with However in the following paragraphs it is decided that the provisions of the laws of each of the contracting states relating to judicial and administrative procedure, to jurisdiction and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industrial property are expressly reserved.

However in some cases, mostly regarding trademarks, the Turkish Supreme Court has ruled in favor

of the foreign plaintiff by exempting him from the obligation of deposit, depending on the national treatment principle But unfortunately, this application is not very consistent During years the Supreme Court has changed its point of view many times For instance, in two separate decision dated to 2001 and 2006, the Supreme Court ruled that the foreign plaintiffs are obliged to secure a deposit according to the art.32 of the International Private and Civil Procedure Code The Supreme Court did not even mentioned principle of national treatment Nevertheless in 2006 again it was held that on grounds of the execution of the national treatment principle the foreign plaintiffs are not under the obligation of securing deposit The Supreme Court upholds still this approach and expressly stated this point of view in its decisions dated to 2007 and 2008 by expressing that according to the national treatment principle acknowledged in TRIPs and Paris Convention, there is no obligation for the foreigners to secure deposit

It is obvious that the obligation of securing deposit is an institution related to judicial procedure and also the aim of these agreements are to harmonize the merits of the application of IP law not the judicial or the administrative procedure Therefore it is not a proper application of these rules to rely on these

agreements to abolish the obligation of deposit

As a conclusion, with the exception of Hague Convention and the bilateral agreements that recognize the principal of reciprocity among the contracting states, it can be easily declared that the ones who file or follow up or intervene in a case in Turkey have the obligation to secure a deposit This procedural rule is enforceable for all types of cases as well as IP The deposit that is demanded during the filing is an institution related to the procedural law Therefore it is not possible to state that the principal of national treatment in TRIPs and/or Paris Convention shall dissolve the obligation to secure a deposit for a foreigner In other words; the articles regarding national treatment among the contracting states in TRIPs and Paris Convention does not hinder the art.32 of International Private and Civil Procedure Code that obliges the foreigners to secure a deposit; nevertheless art.17 of the Hague Convention does

7 THE PRINCIPLE OF CUMULATIVE PROTECTION

An intellectual creation can fulfill the protection conditions of more than one applicable law that regulates IP For instance, design law can protect the original design of a car; patent law can protect an invention which provides fuel saving by bringing an aerodynamic feature to the car by the help of design Moreover if this design indicates the producer of the car, the trademark protection is also available to depend

on Briefly, if the requirements for protection of an intellectual creation by different IP laws are met at the same time, then the owner of the right has the possibility to be protected by all of them This principle is called as the principle of cumulative protection Therefore the IPRs could be compared to chains engaged

The cumulative protection principle is specifically regulated in the Turkish IP legislation For

example, the art.4 of the Turkish Copyright Code orders that it does not prevent an intellectual creation to be protected by copyright law when even it is enjoying design protection under the condition that all the

requirements of copyright protection are met Again, there is a similar regulation in the art.1 of the Design Decree Law Correspondingly in the art.169 of the Patent Decree Law states that under the condition that all the requirements are met; an intellectual creation that already enjoys utility model protection can also be protected as a design

The subject matter is usually submitted to the court by the design law cases The Supreme Court reaches to decisions expressing the designs that are neither new and individual nor registered shall be

protected under the rules of unfair competition according to the labor theory As a result of the influence of ongoing applications, the rules of unfair competition are interpreted commonly and widely

It can also be said that the application of cumulative protection principle can sometimes go to

extremes For instance even when a right forfeits because the term is expired or the renewal fee has not been deposited, it is still possible to enjoy protection depending on the unfair competition law As a matter of fact,

the Supreme Court acknowledges both in its previous and latest decisions that a design may be protected by unfair competition even if it has not been registered at all or the term of protection has expired

On the other hand it is very common for an intellectual creation, which is a subject matter of an industrial right to benefit from the copyright protection There are crucial outcomes of the embracement of the cumulative protection principle in the scope of copyright law The term of protection for utility models is

10 years and for a design material it is 25 However the term of protection in copyright law is life plus 70 years For example, a vase that also posses an artistic quality enjoys protection of 25 years originating from design law, where as copyright law provides a protection of life plus 70 years Again except the right of attribution there are no moral rights acknowledged for industrial property rights On the contrary the moral rights carry a big importance in the Turkish copyright law since it belongs to the continental law system In case of an infringement to the industrial rights; the amount of claims for damages are limited to the actual damage occurred Nevertheless in copyright law a compensation of three times of the damages may be demanded when the rights are infringed Briefly to depend copyright protection, which has superiority over industrial property rights in regards to term of protection, the scope of protection and the amount of

compensation is generally in favor of the right owner

The Supreme Court interprets the term of applied art widely For instance, in one of its decisions dated to 2006, they recognized a design of a coffee table as a work of fine arts In another decision in 1996 the plates that are hanged on walls and a model of wine bottle were accepted as the works that are qualified for copyright protection

As a conclusion, the principle of cumulative protection has a very widespread application field In case of a dispute it is very beneficial for right owners to keep this principle in their minds As the Supreme Court mentioned in one of its decisions dated to 2008, the court shall only examine the case file according to the ground(s) that the plaintiff based in his/her case petition on Even in the presence of the conditions, the court can not held a decision based on a right that the plaintiff did not claimed at the first place

8 EXHAUSTION PRINCIPLE AND PARALLEL IMPORTATION

The right owner, who has an IP right on the products, after he sells the products for the first time, cannot intervene with the further sales For instance, the wholesaler that buys ADIDAS labeled shoes can sell these original shoes to the retailers and the retails can sell them to consumers The wholesaler does not need permission from the owner of the trademark “ADIDAS” while selling these to a retailer Yet the wholesaler would have gained the property of the shoes by paying their price The legal status of the sub-sellers, who bought the shoes from the wholesaler, is not different This situation, where the right owner (in this case the right owner of the ADIDAS) may not interfere with the further sales after the first sale of the products, is called the principle of exhaustion in terms of IP law This principle is also known as the first sale doctrine

Although both in the doctrine and in the decisions of Supreme Court the exhaustion of the rights is mentioned, actually the right subsists abstractly but it disappears in relation to the products, which are soled Thus the Sebago decision of ECJ in 1999 points out this matter

In order this principle to be applied two criteria shall exist together: i) the product must be put on the market by the right owner or with his/her permission (for example by a licensee) and ii) the products, which are subjected to further sales, must be original In other words, if the product is put on the market without permission from the owner of the IP right, the exhaustion principle is not applied Similarly, when the original product is put on the market by altering or worsening, the right is not exhausted; on the contrary this act constitutes a trademark infringement

One of the most arguable matters in the IP law is for sure the principle of exhaustion The principle

of nationality is acknowledged in general in the matter of exhaustion of a right In other words, the right of the one, who sells the product that possess an IP right for the first time, is exhausted only within the borders

of the country, where the sale is occurred So may the product, which is put on the market by the permission

of the right owner in one country, be exported into another country? With respect to this question it can be mentioned of three types of exhaustion:

National Exhaustion: After a product that possesses an IP right is put on the market in a country by the right owner or with his/her permission, the right owner cannot prevent the circulation of that product within that country Turkey has acknowledged the national exhaustion principle except for the integrated circuits for which the international exhaustion is acknowledged

Regional Exhaustion: In this type, the principle of exhaustion is applied by accepting a region as a country Within EU, the regional exhaustion is acknowledged According to this principle, when a product is put on the market with the permission of the right owner in any country of EU, which currently has 27 member countries, the right exhausts within the whole region Moreover, the countries within the European Economic Area (EEA) have been included to this region as well

International Exhaustion: In this situation, when a product, that possesses an IP right, is put on the market anywhere on the world by or with permission from the right owner, the right exhausts and the right owner cannot prevent the sale of that product in another country In case of the acceptance of this principle, for instance a product, which is put on a market in South Africa by its owner, can be sold in Turkey without the permission of the right owner

It carries a crucial importance which type of principle is acknowledged, since the international companies can divide the countries into different markets and price them out whereby national or regional exhaustion Here the notions of parallel importation and re-importation come into consideration

Parallel importation is the importation of a product, which has been put on the market in another country with the permission of the right owner, to a market, in which the right is protected The case, where a product that possesses an IP right is put on the market in the country of the right owner by the right owner himself, then exported to abroad and then imported back to the right owner’s country is called re-importation

In re-importation the product is first put on the market in the territory (for example in Turkey), than exported

to another country (for example to Germany) and afterwards imported back to the country, where it was first put on the market (to Turkey)

According to the national exhaustion, it is possible for the right owner to prohibit the parallel

importation; however it is not possible for him to prohibit re-importation

The national exhaustion principle acknowledged in Turkish IP legislation has turned into a different shape during the legislative applications The Supreme Court has acknowledged a different system, which stands in between national and international exhaustion The action of putting on market even one product with the permission of the right owner in Turkey causes the right to exhaust regarding the same products that

is put on the market in abroad Therefore, the products that are put on the market in abroad can be imported to and sold in Turkey without permission from the owner of the trademark by the third parties Actually this application corresponds neither to national nor to international exhaustion Thus, both in national and

regional exhaustion the right exhausts only with respect to the concrete products that has been put on the market with the permission of the right owner in the related country or region In other words the right does not exhausts abstractly; like it is stated in the Sebago decision of ECJ Because with respect to the

international exhaustion, it is adequate for a product to be put on the market in anywhere in the world In the national exhaustion, the exhaustion is occurred restricted to that country, in which the action of being put on the market has substantiated However, according to the Supreme Court’s case law if one in number from the related products is put on the market in Turkey with the permission of the right owner the right to exhaust regarding the same products that is put on the market in abroad

According to the Dexter and Police decisions of Supreme Court, dated to 1999, the right, in relation

to the products subjected to the right, would be exhausted when these products for the first time put on the market in Turkey by the right owner or with the permission of the right owner and this exhaustion also includes the products that are put on the market in abroad by the right owner or with the permission of the right owner In other words, the owner of the trademark right cannot prevent the importation of these

products to Turkey, which have been already put on the market in abroad

The Turkish Competition Board has dealt with the case regarding the Police labeled sunglasses as well and the board reached to the same conclusion with the Supreme Court by referring to its decision dated

to 1999 The Supreme Court persists on its opinion in the forthcoming years

With respect to copyright the situation is relatively different In general copyright does not exhaust except the right of distribution Regarding distribution right, national exhaustion principle is explicitly and definitely accepted (Art.23/II of the Copyright Code)

If the author used his/her distribution right by the assignment of the property of particular copies of the work (by sale or donation), the resale of these copies within the borders of Turkey does not infringe the distribution right of the author Here the right exhausted is not the distribution right itself abstractly, but the distribution right on the original or the copies, which has been put on the market If the distribution is made

within the frame of the permit given by the author, the right exhausts For instance, if the distribution is restricted with a contract with regarding number or region, a distribution against these restrictions does not constitute the right to be exhausted Because in this case the copies subjected to distribution have been put on the market without the permission of the right owner

The exception of the exhaustion of the distribution right is the right to rent and lend In other words, renting and lending do not constitute exhaustion For instance, a person, who bought a DVD of a movie can sell or donate the original DVD to someone else On the contrary, he/she is not entitled to rent the DVD to someone else To subject a pirated DVD to activities like utilization or sale is in any case an infringement of a right

Downloading is not in the context of distribution right Therefore, in this case the exhaustion does not occur For instance, person, who purchased and downloaded a song from the Internet, is only entitled to enjoy this song; he/she may not sell this via Internet or by any other means

9 LOSS OF RIGHTS DUE TO THE REMAINING SILENT

Every right must be exercised within the frame of good faith Within this, the good faith of the right owner is required and the good faith of the third parties is protected The case of loss of rights due to the remaining silent is acknowledged to protect the good faith of the third parties, whose rights will be damaged due to the enjoyment of the rights after remaining silent for a long time and also their trust to the present situation

In this context, the owner of the IP rights is not entitled to exercise the right after all without

reasonable grounds, if he/she formed the opinion, by not exercising it for a long time that he/she will not enjoy the right Yet to file an action against the infringement of the right after remaining silent for a long time would be considered as bad faith, since the abuse of the right of action would not be protected just like the abuse of the other rights The case of not requesting the invalidation of an unlawfully registered right for a certain period considered within this context In other words, in case of an aggression to an IP right not asserting the right for a long time accepted as a loss of right

In Turkish IP Law, the institute of loss of rights due to the remaining silent based on the equity principle and originates from the principle of good faith stated in the art 2 of the Civil Code The Supreme Court refers to the principle of acting like a prudent businessman (due diligence) as well in its decisions

If the right owner has a reasonable ground for the delay, then there will not be any loss of right In this case, the infringer must prove that the right owner has no reasonable grounds for not exercising his/her rights for a long time and the enjoyment of the right after such a long time will prejudice his interest

The issue is regulated with respect to trademarks in the source law, EU law, and the period of

remaining silent is determined as 5 years In Turkish substantive law, there is no special regulation regarding the issue In accordance with the source law this term is determined as 5 years in the Draft Trademark Code

Although there is no substantive regulation, this principle is used frequently in the Turkish case law The term of remaining silent is specified according to every concrete case For instance, in a decision of Supreme Court dated to 2000, the Supreme Court found a period of 10 months of remaining silent adequate for the loss of rights due to the remaining silent Yet in the concrete case the plaintiff remained silent for approximately ten months to its neighbor company, which is using plaintiff’s trademark and trade name Although this period is variable due to the concrete case, in practice it is applied as 5 years

In a decision of Supreme Court in 2005 it was held that; “the defendant has used the word

“Çiftlik/Farm” by transforming the word into the essential component of the trademark…the case, which is filed after remaining silent to this use of the defendant for a long time does not comply with the art.2 of the Civil Code The grounds of the court, which are in the same direction is right and the decision shall be

approved only based upon this ground”

The Supreme Court based its ruling in the case, where the well known Italian brand GAS was in question and the owner of the brand Grotto SPA filed a nullity action, to the following grounds along with the reason that the trademark GAS is not well known in Turkey: “… the case is filed 10 years after the

defendant’s registration date of the trademark and the plaintiff did not object to the use of its trademark within this period either…”

In 2007 Supreme Court ruled as; “… the trademark in question was registered on behalf of the defendant on 16th of May 1990 in class 25 as a trademark, the case is filed after 14 years, the defendant had

worked with the plaintiff between 1987 and 2001 and there is no proof showing that the trademark was registered in bad faith to be used as an instrument for blackmail or for the assignment of the trademark against payment in the future, …the case filed after such a long time is not appropriate…”

The Supreme Court stated as following in another case dated to 2007; “only in the case of an implicit permission by behavior to the infringement of a right, the issue of whether the invalidation of the trade name used in good faith for a long time by the opponent, would be subjected to an action or not, shall be

deliberated and assessed by law according to the art.2 of the Civil Code.”

It is experienced serious loss of rights in practice, since the courts are applying the principle

frequently The courts apply the principle both in the invalidation and the infringement cases When the results are examined, for the right owners it is not a choice but a necessity in Turkey to act both against unlawful registrations and infringements Otherwise the rightful owner/ genuine holder of the right may lose the case, where he/she is right, because of the late intervention

10 CUSTOMS APPLICATIONS IN THE FIGHT AGAINST COUNTERFEITING GOODS AND PIRACY

a) Tracking Procedure in the Customs

The determination, prevention and cessation of the IP infringement are not only possible inland according to the Turkish law, but it is also possible within the customs areas The right owners, who want to benefit from this protection can apply to the General Directorate of Customs and request for the recordal of the related right and tracking the plagiarized or counterfeiting goods that infringe the mentioned right in the customs

The application can be made directly by the right owner or their attorneys and is submitted to the General Directorate with an application form and the documents (like the copies of the trademark or design registration certificates) proving that the applicant is the right holder attached In the application made by attorneys a notarized and legalized power of attorney must be submitted as well

The application made by the right owner is taken into preliminary examination by the General Directorate If there is no incompleteness, the tracking process is set to begin and the right owner is informed about the process The General Directorate generally accepts the applications after the preliminary

examination, but for some applications it is possible for the Directorate to ask for additional information and documents that are not mentioned in the legislation

Separate applications have to be made for the tracking of every single IP right For instance, if the right owner has more than one registered trademark in Turkey, he has to make separate applications for each

of them However one application can be filed for the serial trademarks or designs The tracking being started

as a result of the application lasts for one year and the application has to be renewed every year in order for the tracking to continue

After the application, in case of the determination of any goods that infringe the right subjected to the application in the customs, the General Directorate of the Customs seizes the related goods and informs the right owner to initiate the necessary legal process After this information the right owner must file a court action against the infringement within the legal period and also take a preliminary injunction decision from the court for the seizure of the goods that were caught by the General Directorate of the Customs until the end

of the proceedings If the necessary action is not filed and the required preliminary injunction decision from the court is not submitted to the General Directorate of the Customs within the legal period, the General Directorate releases the goods that were temporarily seized

Therefore reaching to the desired purpose by requesting tracking within the customs is bounded to the filing of the court action following the application to the customs administration and to the decision of preliminary injunction When the right owner files the necessary action within the period, the courts usually held the preliminary injunction decision in favor of plaintiff Therefore, when the right owner takes the necessary legal actions by doing his/her part, it can be said that the right is protected in an adequate levels

b) Free Zones

The free zones are the areas that stay within the borders of the country that are geographically settled, but deemed as out of the customs frontier with respect to external trade, taxes and customs legislations It is granted broader exemptions and promotions for the industrial and commercial activities in the free zones

compared with the ones granted to those within the country In other words the free zones are accepted as extra-territorial just with respect to financial liabilities, such as taxes, duties and fees

Except from the Exchange regime and the provisions enumerated in the art.12 of the Free Zone Code, Turkish legislation is executed within the free zones as well In the mentioned article the IP legislation is not mentioned Yet according to the IP legislations, the IP rights are also protected within the free zones

However until 2004 the free zones were left out of the scope of protection regarding IP rights by the Supreme Court decisions The Supreme Court was in the point of view that the importation made to the free zone cannot be acknowledged as the importation made to Turkey Therefore it was adopted that the IP

infringement in the free zones cannot be heard before the Turkish Courts on grounds of nationality principle This opinion was against the policy that reflects IPRs must be protected effectively and moreover it was not proper for the legislation

We are of the view that the free zones are acknowledged as extra-territorial only in relation to

financial liabilities, such as taxes, duties and fees In other words, the Supreme Courts execution that accepts these zones extra-territorial by depending on the regulations made with respect to export-import regime was not incisive Fortunately, the Supreme Court has changed the mentioned point of view afterwards and it has begun to accept the free zones as inland after 2004 as well As a consequence, currently the Supreme Court has the opinion that the violation of rights occurred in the free zones are deemed to be occurred within the territory

c) Transit Pass

According to the Trademark Decree Law, it is an infringement of a trademark right to sell, distribute

or put the commercial use by any other means or place into a customs area, subject to a transaction approved

by the customs or to a use of the products carrying a trademark without the authorization of the trademark right owner

It is accepted both by the doctrine and the case law that the transit pass of the products that are subjected to an unauthorized use will constitute a trademark infringement For instance, in the Leon Case that was subjected to a Supreme Court decision in 2004; it was filed an action by the trademark owner after it was discovered that the cigarettes, which were declared to the customs under the label of “Leon”, wanted to be let into Turkey, were actually the bear the well-known trademarks “M and M Light” and thus they were seized

by the customs administration The defendant asked for the denial of the case by expressing that he is not the proprietor or a representative, he was only responsible with the carriage of the goods and containers

according to the instructions that arrived to the port and the cigarette shipment in dispute was subjected to a transaction in relation to be sent to abroad in transit, without being put in the market inland Despite these defenses, the case was accepted and it was held that the goods subjected to the transit pass constitute a

trademark infringement too

On the other hand, the Supreme Court reflects the opinion in many decisions regarding transit pass that it may be held in favor of a compensation for damages when it is requested along with the cessation of the infringement The proof of the actual damage is not required for the determination of the compensation and also it is not necessary for the goods seized within the free zone to be put in the market in Turkey The Supreme Court acts from the assumption that the damage was occurred even if the goods had not been put in the market yet and it is in the opinion that even when the actual damage cannot be determined, the amount of the compensation can be estimated by the judge by taking into consideration the circumstances in the

After Turkey has become a party to the international treaties, some serious amendments were

necessary to be made in the Trademark Code The need for amendment increased due to the fact that the law

was not sufficient to solve practical problems and due to harmonization process with European Union In compliance with the undertakings given in the harmonization period, a target deadline was set to finalize the law amendment; however, required amendments were not completed in the set period of time The

government, which was persistent on making the promised revision, prepared a decree law covering the same matters With this Decree Law nr 556, dated 1995, Trademark Code of 1965 was repealed in one night Today, the mentioned Trademark Decree Law constitutes the basis of Turkish Trademark Law

At the international area, Turkey is member to numerous international agreements concerning

trademarks The major ones of these agreements are Paris Convention, TRIPS, Madrid Protocol and TLT

Although the Trademark Decree Law is mainly in harmony with the related international regulations,

it draws heavy criticism for not possessing the characteristics of a regular code Besides being criticized for its above-mentioned character, the fact that Trademark Decree Law has been partially cancelled by the Constitutional Court for the very same reason and still, its force causes serious problems Currently, there are some ongoing studies for preparing a draft Code of Trademarks, which would replace the current Decree Law Nevertheless, this draft does not seem likely to enter into the force in the near future

On the other hand, the problem concerns not only the infrastructure of the legislation; but there are also serious issues concerning the enforcement Even though the fundamental principles regarding trademark law are regulated by the Decree Law, most of them are differently shaped by the Supreme Court decisions Yet Supreme Court’s approach diverges from the legislation on many occasions For example, according to art.7/i of the Decree Law and art.6bis of the Paris Convention, a trademark that is well-known in a foreign country who is member to the Paris Convention, shall be protected in Turkey as well, even if it is not

registered in Turkey While this protection acknowledged in the legislation, is provided for identical or similar goods and services, the Supreme Court, in most cases, has ruled that these trademarks shall be

protected in Turkey also with respect to different goods and services Such differences between legislation and practice make it harder for law to carry a foresee-ability In order to make predictions related to any certain matter, it has become almost essential to wait until Supreme Court establishes a consistent practice on that matter Moreover most fundamental approaches that are embraced by the Supreme Court may vary in time and also may conflict with each other within the same period Today many conflicting judgments of Supreme Court create inconvenience for practitioners and right-owners

The important differences between the legislation and the practice stand out when we examine the trademark registration proceedings This time the fact that legislation provisions are interpreted differently by TPI abolishes the foresee-ability For instance, art.8/b of the Decree Law requires rejection of the applications filed for a trademark which is identical or confusingly similar to senior trademark application and/or

registration covering same or similar goods and services However, in the decisions that TPI grounded on this article, TPI rejects the latter application only with respect to “identical” goods and services Just like the judicial decisions contradict within themselves, the fact that TPI decisions contradict with each other is another problem It is possible to see in one opposition file, it is decided that opponent’s trademark on which the opposition was based is well known; it can be decided after a short while in another opposition file that the same trademark does not considered to be a well-known The reason of this and similar contradictive decisions are explained by the fact that the trademark examiners at TPI have different personal views Despite all these, it should also be mentioned that the substructure and the applications of TPI have improved

crucially in the recent years

In this study on one hand we have tried to mention the basic principles of Turkish trademark law and the interpretation of these principles in practice by Supreme Court and the doctrine, on the other hand we have tried to indicate crucial developments and current problems of the emerging issues Therefore, although the themes examined within this study may seem independent from each other, they were brought together since they are basically related to the current developments and problems of Turkish trademark law

2 THE OBTAINMENT OF TRADEMARK RIGHT AND GENUINE HOLDER-SHIP

In Turkish law there are two ways to obtain a trademark right First of all, a trademark never used before could be picked and registered In this possibility, the registration has a constituent effect for the acquisition of a trademark right In the second possibility, the right on a trademark belongs to the person, who used the trademark for the first time and made the trademark familiar within the market without registration

In the doctrine this person is called “genuine holder” and here the trademark right has emerged before the

registration and thus the registration made to the record has an explanatory effect The unregistered trademark means the sign, which is not registered to a record, but being used de facto in the sense of a trademark

The trademark right acquired by registration provides its owner a conditional right In cases, where the genuine holder of a trademark is someone else, the right holder’s right derived from the registration will continue until the genuine holder files a cancellation action and then registers the trademark on behalf of him/herself

In practice it is frequently seen that a third party registers a trademark that belongs actually to

someone else Although the third person, who registers the trademark, might act unaware, generally he/she is

in bad faith In order to rule out this possibility, the Decree Law grants the genuine holder the right to oppose

to the application filed for registration of the trademark by a third party (art.8/3) The right to oppose is acknowledged not only against the identical trademarks, but also against the confusingly similar trademarks The opponent shall submit the evidence to TPI that proves the genuine holder-ship In case of the refusal of the opposition, the opponent may file a cancellation action against the refusal decision

However, most of the time the genuine holder is not aware of the fact that a third person has made an application for the registration of his/her trademark Thus the opportunity to oppose to the mentioned

application within the publication period expires and it is decided for the registration of the trademark on behalf of the third person In this possibility the Decree Law grants the opportunity to file an invalidation action against the mentioned registration to protect the genuine holder (art.42) The invalidation action should

be filed before the IP courts within 5 years after the registration of the trademark Nevertheless, the action is not subjected to a time limit when the third person, owner of the registration, is in bad faith

The conditions of the application of the genuine holder-ship principle are set forth in detail explicitly both in the doctrine and case law:

First of all, there must be a similarity or likelihood of confusion between the trademarks Secondly, the genuine holder must have been started using the trademark before the application date of the third person

or, if there is a priority date, before the priority date It is subjected to the Supreme Court decisions whether the use shall be accrued within Turkey or not The Supreme Court, in a decision dated to 1999, stated that; the protection provided to unregistered trademarks is not only related to the trademarks, which are being used de facto in Turkey and made familiar, it is also valid for the trademarks, which have been registered and being used in the member states of the international agreements that Turkey is a party, but has not been registered

in Turkey yet The Supreme Court did not seek for the foreign trademark to be well known either On the contrary, the Supreme Court has referred to the nationality principle as one of the fundamental principle of Turkish trademark law and sought the condition of being used in Turkey in order to be entitled to claim genuine holder-ship on a trademark in a decision dated to 2000 The further decisions of the Supreme Court are in the same direction as well

Thirdly, the genuine holder must use the sign as ”trademark.” The Supreme Court expressed in a decision dated to 2002 that an unregistered sign must be used in the course of trade in a way, which is

peculiar to trademark law

Fourthly, another argument on the issue is whether the notoriety condition shall be sought in relation

to genuine holder-ship or not To apply the principle of genuine holder-ship, it was sought in the Trademark Code, in force prior to the Trademark Decree Law, that the trademark must be used and made familiar on the market prior to the application date of the third person In order to speak of the presence of notoriety, it was expected for the trademark maybe not to reach to the degree of being well known but to certain degree of familiarity Nevertheless, the notoriety criterion was not mentioned explicitly in the Decree Law The

Supreme Court reaches to various decisions in regards In a decision of 1999 it is sought for the notoriety by expressing “the priority right on the trademark belongs to the person, who created, used and is using and made it familiar on the market.” A decision from 2002 was in the contrary The Supreme Court continues to opine different views in the forthcoming decisions However, it is accepted in the doctrine that the notoriety criterion shall be sought

The degree of notoriety is disputable as well In the doctrine, in order to acknowledge the genuine holder-ship the products and services that the trademark is used on must have started to be known by its customers in a specific place, region or a market Therefore, it can be said that the notoriety is a state of familiarity, which does not reach to a degree of being well known

Another problem occurs, when the person, who registered the trademark unlawfully on behalf of him/herself, tries to use the rights derived from the registration against the genuine holder It is often experienced that the ones, who registered the trademark on behalf of them, prevent the genuine holders to enter the market with the mentioned trademark Yet from a legal point of view, as long as the registration continues, the trademark belongs to the owner of the registration The owner of the registration may restrain the third party uses of the trademark, including the use of the genuine holder However in a decision of Supreme Court dated

to 2001, the Supreme Court stated that the registration owner might not restrain the use of the trademark of the genuine holder In accordance with the decisions of Supreme Court in regards, the genuine holder may ask for a preliminary injunction by applying to the court, in case the unlawful registration owner tries to prevent the use of the trademark of the genuine holder and ask for the prevention of the use of the rights derived from the registration against him/her When the adequate evidence is submitted to the court, the courts generally accept these demands

Consequently, the persons in bad faith want to benefit from the notoriety and advantages of the investments made to the trademark by the genuine holder by especially registering the unregistered foreign trademarks in Turkey on behalf of themselves Therefore the principle of genuine holder-ship is a crucial instrument that provides a protection to the persons, who have not registered their trademarks in Turkey, against the third parties

3 THE UNIQUENESS PRINCIPLE IN TRADEMARK LAW

According to the uniqueness principle in trademark law, there can only be one owner of a trademark

in relation to same or same type of goods or services In other words, a trademark may not provide a second independent and/or individual right for the same or same type of goods or services Therefore it is not

possible for a sign, which is identical or confusingly similar to a registered trademark, to be registered on behalf of someone else for the same or similar goods and/or services

The uniqueness principle in trademark registration has mentioned in more than one article in

Trademark Decree Law and the Supreme Court asserts that the principle is directly in relation with the public benefit The legislator intended to protect the function of origin indication of a trademark and prevent the customers from being mistaken in relation to the trademark and/or trademark owner by acknowledging the mentioned principle

According to the principle the letter of consent is not acknowledged in the Turkish registry system In other words, even the owner of the earlier dated application/registration of an identical or similar trademark grants a written consent, it is not allowed to register the latter identical or similar trademark for the same or same type of goods or services On the other hand there are obstacles derived from the uniqueness principle

in the partial assignment of a trademark or in the assignment of some trademarks of a trademark series As it

is known, partial assignment of a trademark in respect of some goods and services or assignment of some trademarks in a trademark series is possible However according to this principle, it is not allowed for a trademark to be assigned partially for the same or similar goods or services For instance, it is not possible to assign trademark X for the corn oil, which is actually registered for sunflower oil, corn oil, butter and

candies However it may be assigned partially in relation to candies Similarly, it is not allowed for a partial assignment in case a trademark series that covers same or similar goods and services For example, it is not possible to assign some of the trademarks X MAN, X WOMEN, X KIDS, X PREMIUM, of which all are registered on underwear

The Supreme Court also applies the uniqueness principle prevalently In the QUARTZ decision in

2004, J-MOTION decision in 2006 and SUN PET decision in 2007, the Supreme Court has taken this

principle into consideration

However, the Supreme Court has softened this principle on grounds of “constitution of antecedent rights by use of the trademark” and “loss of rights due to the remaining silent” Thus the Supreme Court, in a decision dated to 2008 regarding an invalidation action filed against trademarks ECE TOFF and ECE LADY

of the defendant, it has been accepted that both parties have an antecedent right on the trademark, in which ECE is the essential part and the invalidation action was rejected As the rationale the Supreme Court

expressed that the defendant has used the sign ECE in his/her trademarks before and after the registration and

by placing this sign into the disputable trademarks the defendant comprised a trademark series Therefore it is ruled that the ECE trademark series, which is used with an original writing and style, does not constitute

confusion with the plaintiff’s trademark Consequently it is allowed for the both parties to use the trademark ECE on the same goods

Again in the ÜLKER DONUT decision dated to 2008 the Supreme Court allowed the existence of the trademarks that belong to both parties together by stating that; the plaintiff, whose trademark application was rejected due to the presence of the trademark ÜLKER, has an antecedent right on the trademark ÜLKER

as well, both parties are the right owners and there is no likelihood of confusion between the trademarks, in which the sign ÜLKER is the essential part

The Supreme Court has determined in the DİRGENLİ decision in 2004 that the logo in the

defendant’s registered trademark creates confusion with the plaintiff’s trademark but ruled that the plaintiff lost his/her right to file an invalidation action against the registered trademark of the defendant due to

remaining silent for long years Thus it is allowed for the both parties to use the same trademark on the same goods and services

Again in another decision dated to 2006, the Supreme Court decided that the word ÇİFTLİK has been used as the essential part both in the plaintiff’s and the defendant’s trademarks and the invalidation action filed by the plaintiff after remaining silent for a long time would not comply with the principle of good faith

In another decision dated to 2007 the Supreme Court rejected the case expressing that the defendant has been using the trademark in dispute for 14 years and the case filed after such a long time is not acceptable

As a result, in Turkish law the uniqueness principle in trademarks is acknowledged and this principle

is softened by the decisions of Supreme Court on grounds of “loss of rights due to remaining silent” and

“antecedent rights deriving from the use of the trademark by the parties”

4 THE BAD FAITH ISSUE AND ITS PLACE IN THE TURKISH TRADEMARK LAW

There are two ways that bad faith can appear in the meaning of trademark law:

In the first possibility; the use of the trademark itself could be in bad faith For instance, the owner of

a registered trademark uses his/her trademark in a different way from its registration in order to create

confusion with a competitor’s trademark

In the second possibility; the bad faith could appear in filing of an application for registration of a trademark In this case, the aim of the applicant is to have registration for a trademark on which he does not have any right and which is identical or confusingly similar to somebody else’s trademark which has already been registered and/or used in the market

In practice, bad faith applications filed by the local firms for registration of the foreign trademarks having high commercial value are commonly experienced and causing serious problems for the genuine trademark holders

According to the art.35 of the Trademark Decree Law it is possible to oppose against a trademark application on the basis of bad faith Depending on the aforementioned article, there have been countless opposition actions by this time which have been filed against the trademark applications filed in bad faith TPI has rejected lots of the mentioned applications due to the oppositions, without requiring any further ground, expressing that the applications have been filed in bad faith For example, the trademark UGG, which has a great commercial value and is registered in abroad, but does not have a registration or use in Turkey (at the filing date of the third party’s application) was tried to be registered by a local firm to TPI The genuine owner of the trademark filed an opposition against the local application and the application was rejected by the TPI on ground of bad faith

In the oppositions based on art.35 of the Decree Law, it is not required to submit an absolute proof of the bad faith of the applicant to the file and it is sufficient for the opposing party to put forward the evidences showing bad faith in a way that they present the truth real-like Additionally, the opponent is not requested to prove the bad faith claim with most solid evidences, but to show that the applicant was aware that the

trademark was owned by a third party and still he has applied to register the trademark in his name For instance, it is not likely that local firm in Turkey created a trademark which is a combination of a fantasy word and a distinctive logo and applied to register the same for several goods and services on which the mentioned trademark had already been registered and used by a foreign company in many other countries When the applicant is a customer of the products bearing the trademark that he applied for and thus was aware that the trademark was owned by a third party, the bad faith is also very clear When the opposing

party is able to prove the bad faith of the applicant with such evidences -as mentioned above- it is not

necessary to bring forward more solid evidence than this

Until 2008 the bad faith argument was taken into consideration only in the opposition phase or in the cancellation actions filed against the TPI’s refusal decisions In other words, the genuine owner of the trademark who did not oppose to the application that was filed in bad faith, at the administrative phase, was not able to argue the bad faith of the applicant afterwards The reason for this rule is because the grounds for filing an invalidation case according to the art.42 of the Decree Law are limited by number and “bad faith” is not one of them Nevertheless the Assembly of Civil Chamber of Supreme Court reversed its execution and decided in 2008 in R512 Case that the bad faith argument can be argued during the invalidation actions, just like the oppositions and the cancellation actions filed against the wrongful decisions of TPI In conclusion according to this decision, from then on it is possible to claim bad faith by its own at any phase of the dispute

Furthermore according to the art.42 the invalidation actions can be filed within 5 years as of the registration date of the trademark However if the claims are based on bad faith of the registration then there

is no time limit to file an invalidation action against a registered trademark

It is known that the trademark protection is limited to the registered goods and services as a rule However according to the decision of the Assembly of Civil Chambers of Supreme Court, invalidation of the trademark registered in bad faith can be demanded even for the different goods and services

As a result, it can be easily stated that currently Turkish trademark registration system does not allow the registration of a trademark application in bad faith neither in the course of administrative actions nor in the course of a court action and the real owner of a trademark is absolutely protected against the applications filed in bad faith Therefore bad faith argument becomes very important for the foreign firms, in the

circumstances that there is no other argument to depend on, such as ante-dated applications or registrations, well known status or genuine ownership argument

5 WELL-KNOWN TRADEMARKS

The trademarks in use are known more or less For some trademarks this awareness is restricted to a very narrow environment, whereas some of them are known by a larger mass and some trademarks are known world wide Therefore, actually the “notoriety” is a state that exists for every trademark Then,

regarding trademark law, for which trademarks does the “well-known” term is used? In trademark law, which kinds of advantages are offered for the well-known trademarks?

Two different articles in the Trademark Decree Law regulate the matter of well-known trademarks in Turkey Below the special protection and the advantages that are offered by these two articles to well-known trademarks will be mentioned and the differences between the articles and the situation in practice will be examined as well Furthermore the special registry of the TPI for the well-known trademarks and the

advantages of being in this registry will be pointed out

a) Well-Known Trademarks according to Paris Convention

Following signs shall not be registered as a trademark which have not been authorized by their owners, well known marks according to 6bis 1 of the Paris Convention

According to art.7/1(i) of the Decree Law, third party applications filed without permission of the genuine trademark owner for the trademarks which are in the context of well-known trademark description of the art 6bis 1 of the Paris Convention shall be rejected by TPI ex officio Pursuant to the mentioned provision the trademarks, which are recognized as well known according to the Paris Convention, are being protected

as well-known trademark in Turkey as well

The protection provided to well-known trademarks with this article is restricted to identical and similar products and services In other words, in the article it is acknowledged that only the applications filed for goods and services that are identical with and/or similar to the goods and services on which the well-known trademarks are registered would be rejected

The protection provided by the Decree Law art.7/1(i) does not require for the trademark to be

registered or to be in use in Turkey Furthermore, it is not necessary for the trademark to be known in Turkey either A trademark, which is well known in the other member states according to the art 6bis 1 of the

Convention, will be protected as a well-known trademark in Turkey as well without requiring any other condition The decisions of Supreme Court are in this direction as well The Supreme Court, in BLACK & DECKER decision in 2004 stated that; “… the trademark that is well-known in one of the member states of

Paris Convention is protected in Turkey as a ‘well known trademark’ pursuant to art 6bis 1 of the

Convention even if the trademark or the products bearing the trademark is not known in Turkey …” In the ROCCO BAROCCO decision, dated to 2000 it was expressed that; “ the trademark which well-known in one

of the member states of Paris Convention must be protected in Turkey as a well known trademark as well, even if the products bearing the trademark have never been sold in Turkey.”

It is not required for the trademark that is subject to protection in Turkey according to the art 6bis 1

of the Convention to have a world wide reputation either Even the trademarks, which are well known in one

or several member states of the Convention, are protected within this scope Besides it is not necessary for the trademark to be known by everybody in the public The trademarks, which are known commonly or even by the related environment in general, benefit from the protection

In practice it is not possible to apply the art 7/1(i) as it is regulated In other words the TPI is not able

to reject ex officio the applications filed by the third parties for well-known trademarks Yet TPI cannot investigate or determine by itself whether the trademark subjected to application is well known or not

Therefore the execution of the mentioned article depends on the opposition by the owner of the well-known trademark to the application within the publication duration For instance in 2005, the application filed for the trademark BOTTEGA VENETA, registered and well known in abroad, by a third party was published by TPI, nevertheless rejected upon the opposition of the genuine trademark owner based on the art.7/1(i)

Art.7/1(i) can be claimed not only in the administrative phase, but also during the court actions The invalidation action filed against an unauthorized registration of a well-known trademark by a third party can also be based on the mentioned article Similarly, the trademark infringement actions filed against the

unauthorized use of the well known trademark by a third party can also be based on the art 7/1(i)

b) Very Well-Known Trademarks

The art.8/4 of the Decree Law is about the very well known trademarks The aim and the context of this article is different from the art 7/1(i) of the Decree Law and differences between the protections granted

to the well known and the very well known trademarks are as follows;

i) Art.8/4 provides protection to the very well known trademarks which are registered or at least applied for registration in Turkey In other words, the trademarks for which there is not even any pending application in Turkey cannot benefit from the protection provided with this article However, it is not

required for the well-known trademark to be used in Turkey according to this article either

ii) Art.7/1(i) provides protection to the well-known trademarks only for the identical and/or similar goods and services, whereas art.8/4 introduces protection extended to the different goods and services as well

iii) The well-known trademarks protected under art.8/4 are the “very well-known” trademarks, which are also known as famous trademarks Therefore it is possible for a trademark, which is deemed as well-known trademark according to the art.6bis 1 of Paris Convention, not to be protected within this context The well-known status required in this article has reached such a degree that the use of the identical or a similar trademark on different goods or services would damage the reputation or the distinctive character of the well-known trademark or will cause the unjust enrichment from the use of trademark To consider a trademark within this context it is not required to be well known all around the world, such as FERRARI, HILTON, ARMANI or BURGER KING Nevertheless the degree of well known should be over a certain level Having

a deep routed background, being used consistently in lots of countries for long years, being registered in lots

of countries, acquiring very high sales figure and being promoted by high budget advertisement campaigns are important data that points out of being a famous trademark

iv) It is disputable whether the protection provided by art.8/4 depends on being well known in Turkey

as well or not In the MAGGI decision in 2006 the Supreme Court expressed that; “it is not required for a local or a foreign trademark to benefit from art.8/4 to be well known all around the world It is adequate to be well known in some countries Besides it is also not required for these trademarks used in Turkey

Nevertheless in order for a trademark to be in the context of this article, it is required to be well known in Turkey.” In the doctrine, there is a group of authors defending that protection in the scope of art.8/4

encompasses the trademarks well-known in Turkey However in the practice it is seen that lots of foreign trademarks, which are not even known in Turkey, are protected within the scope of this provision by taking the high level of well-known status of the trademarks in abroad In most of the decisions of the Supreme

Court, it is seen that the trademarks, which are very well known in abroad, however not well known or not adequately well known in Turkey, are being protected within the scope of art.8/4

It should be mentioned that 8/4 could also be claimed both in the administrative phase and court actions, just like art.7 (i) The invalidation action filed against an unauthorized registration of a well-known trademark by a third party can also be based on the mentioned article Similarly, the trademark infringement actions filed against the unauthorized use of the well known trademark by a third party can also be based on the art 8/4

c) The Registration of Well Known Trademarks to TPI

As mentioned above, the well known status can be claimed both in the opposition and the court action phases However in order to base any action on the well known status of a trademark the well-known status must be proved in each opposition or a court action separately and therefore in practice proving the well-known status of a trademark is onerous and expensive

Thus the special registry by TPI is a very crucial instrument that rules out the burden of proof in case

of resubmitting the evidences proving well-known status of a trademark The art.13/d of the Code, nr 5000 grant the authorization to TPI to determine whether a trademark is well known or not, and if it is well known

to record the trademark in a special registry In order to achieve this, the owner of the well-known trademark, which is either registered or in the application phase, should apply to TPI with the request of determination of the well-known status of the trademark The TPI evaluates the well-known status over 18 different criteria These 18 criteria are determined by TPI by taking the criteria determined by WIPO in 1999 into

consideration In the well-known status application, the well-known status of the trademark should be put forward in the light of these 18 criteria The evidences that prove the alleged notoriety of the trademark must

be submitted to TPI at the filing date of the determination request

If the well-known status application is accepted by TPI, the trademark in question is acknowledged

as a well-known trademark and enters into the well-known trademark register with a special number Besides

it is given to the trademark owner a formal document stating that the well-known status is determined and acknowledged This determination is the evidence to prove the well-known status of the trademark and it is not limited by time By submitting this document into the opposition or the court action files, the owner can prove the well-known status of the trademark without submitting any further evidences

TPI can reject the well-known status application by deciding that the well-known status could not been proved adequately In such case the refusal decision of TPI can be appealed before the Re-examination and Evaluation Board of the TPI If the Board rejects the application as well then the applicant can file a cancellation action against the final rejection before the Ankara IP courts within 2 months as of the official notification of the decision

Today in the special registry hold by TPI, there are more than 400 well-known trademarks registered Among these, there are world wide well-known brands such as ARMANI, SONY, CNN, YAHOO!, APPLE, POST-IT, FORD, FERRARI, MARRIOT, RED BULL, KINDER SURPRISE, MOBIL, MARSHALL, CHANEL and trademarks that possess more restricted well-known status, such as LORIS AZZARO,

ROADSTAR, CINZANO, GIRORGIO AIRE, GLASURIT, NEXT & NEXT STAR

6 PHARMACEUTICAL TRADEMARKS

The general principles of trademark law are valid for pharmaceutical trademarks in principle as well However, the differences arising from sector, product and consumer group cause the flexible execution of some rules with respect to pharmaceutical trademarks The most important element that differs

pharmaceutical trademarks from the rest of the trademarks is the informed and high level of attention

consumer group This difference has softened some requirements for a sign to become a trademark in relation

to pharmaceutical trademarks Since an informed and experienced consumer group would behave differently

in most of the situations compared with ordinary people

According to art.7/1(c) of the Decree Law “trademarks, which consist exclusively of signs or

indications which serve in trade to indicate the kind, characteristics, quality, intended purpose, value,

geographical origin, or designate the time of production of the goods or of rendering of the service or other characteristics of goods or services” shall not be registered This rule is applied very strictly in general; however it is treated more flexible in respect of pharmaceutical trademarks

The term that is selected as trademark for pharmaceuticals should be distinctive and not to be

confused with the name of the active substance that is accepted by the World Health Organization (INN Code

- International Non-proprietary Name) or with the generic name of the product In other words, the name of the active substance of a pharmaceutical cannot be used as a trademark of that pharmaceutical This

restriction is also in accordance with the art.7/1(c) of the Decree Law Nevertheless most of the

pharmaceutical trademarks in the market has derived from the name of the active substance or brings to mind the active substance directly For instance, the trademark ADENOSIN is registered for pharmaceuticals and used on a product which is produced from the Adenozin active substance Another common method in the sector is to select the trademarks from the words that associate with the illness that the pharmaceutical treats Thus, the trademark brings to mind the related illness directly In other words, the selected trademark is related with the aim or with the quality of the product Just like in the pharmaceutical branded as ACNEGEN, which is used for the treatment of acne In the doctrine, it is acknowledged that the INN Code or the generic name of the pharmaceutical cannot be used as a trademark; nevertheless the similar words derived from those can be registered and used as trademark Consequently, it can be stated that the practice is more flexible in favor of the pharmaceutical trademarks with respect to “level of distinctiveness”

It is interpreted in a very flexible way with respect to similarity and confusion among trademarks, when the subject is a pharmaceutical trademark According to the art.7/1(b) of the Decree Law, trademarks identical with or confusingly similar to a senior trademark registration or application shall not be registered for the identical or same type of product or services Art 8/1(b) states that the application for registration of a trademark, which is identical with or similar to another trademark that has an earlier date of application or registration and covers the identical or similar goods and services shall be rejected upon opposition by the senior trademark The aim of both articles is to hinder the likelihood of confusion occurs because of the similarity between trademarks In this context regarding the other sectors other than the pharmaceuticals, BOMBY - BOMBA, CASAMIA - CASA, SATENPER - SATEN, KALE KİMYA - KALE, ŞÖLEN - PINAR ŞÖLEN, NINO DİNAMİT - DİNAMİT trademarks were found confusingly similar to each other by Supreme Court

It is seen both in doctrine and in the case law that, when the matter is pharmaceutical trademarks, the similarity examination is treated more flexible as well Yet it is thought that the primary consumer and the target group of the pharmaceutical and derivative products are not the ordinary people, who are the end-users

of them The primary consumers of the pharmaceutical and similar products are actually the doctors, who prescribe these products and the pharmaceutical warehouses and the pharmacies that sell these prescribed pharmaceuticals Every loop in this chain is expert in this business, who realizes even the slightest differences regarding pharmaceuticals and pay attention to them Whereas most of the time it is accepted that a different element of a figure or a different word will not hinder the likelihood of confusion between the similar

trademarks, it is acknowledged that even a difference in one or two letters in a pharmaceutical trademark may prevent the likelihood of confusion on the part of the public Thus the Supreme Court acts more flexible in its case law regarding pharmaceutical trademarks by considering these facts and leaving its general opinion in relation to ordinary trademarks The Supreme Court held that LIPIDIL – LIPIDROL, ETOL – ETOLE, MELOX – MELOS and LIPIDEX – LIPITAX trademarks, which were willing to be registered for

pharmaceuticals and similar products are not similar enough to cause confusion, since they address to an informed consumer group

We are of the opinion that this applied flexibility in the doctrine and in the case law with respect to distinctiveness and confusion for pharmaceutical trademarks is appropriate in principle Nevertheless it is not very incisive to execute this flexibility for all the pharmaceuticals and derivative products Yet some of them can be sold without any prescription and some are in the over the counter (OTC) group, that address directly

to the end user Therefore regarding the OTC products the evaluation should be made by considering the users, consist of ordinary people

packaging and similarly descriptive means capable of being published and reproduced by printing (art.5 of Trademark Decree Law).

As it is seen above, in the code first the description of a trademark is made and it is enumerated with examples which signs can be considered as a trademark In this description colors, sounds, tastes, scents and similar forms are not mentioned However this enumeration in the code is not restrictive Therefore the sound, smell, taste and similar forms that possess distinctiveness adequate to be qualified as a trademark may

be registered as a trademark under the condition that they are expressible

In the article the means of description are enumerated as being visualized by drawing or being

described by similar means, being published and reproduced by printing This enumeration is also not

restrictive Therefore other descriptive means may be deemed within this scope

In the EU Trademark Regulation a similar description is made for the trademarks Under the

condition that they provide distinctiveness all types of signs that have the capability of being represented graphically shall be deemed as Community Trademark (art.4)

Today in Turkey the unconventional trademarks that provide the necessary requirements are being registered by TPI Below some types of trademarks that come forward will be explained along with the examples

a) Color Trademarks

In Turkey the colors are accepted as trademarks as long as they provide the requirement of

distinctiveness and descriptiveness However, the issue of distinctiveness is still an important discussion point

in relation to color trademarks In general, the distinctiveness of the color combinations is acknowledged and the combinations are being protected as trademark as long as they provide other protection criteria On the contrary, it is not accepted that a single color would be distinctive enough and thus it is not allowed to

register them For example, the color combinations seen below were registered as trademarks by TPI,

whereas many applications were rejected regarding trademarks composed of a single color:

The matter of distinctiveness gained as a consequence of utilization is an exception for the rejection

of the single color trademark applications For instance, lilac color was registered as a trademark by TPI on behalf of Kraft for the use on chocolates In the registration, the consumer survey was very effective with respect to the acquired distinctiveness of the mentioned color trademark through the extensive use in the market

b) Sound Trademarks

The sound trademarks shall be registered due to the possession condition of the beat on the clef, the details of the rhythm and the graphical representation of the notes Nevertheless they are required to have the capability of being transferred into drawing or notes and therefore to possess the distinctive character The sound trademarks, which have been registered until today, mostly consist of melodies or musical tones that can be represented via notes and some consists of polyphonic partitions and some of monophonic orchestral music

TPI has acknowledged a similar approach with respect to the descriptiveness of the sound

trademarks Within this context, it is allowed in the application of TPI to register the sound trademarks, which the details of them are determined on the clef For instance, the publicity melody of SIEMENS, two different melodies of the ALLIANZ Insurance Company and sound trademarks belongs to Gas Management Company AYGAZ were registered by TPI TPI also requests the sound recording and the trademark tariff in the course of application with respect to the sound that is asking to be registered

c) Scent and Taste Trademarks

Although currently there is no registered scent or taste trademark by TPI, the possibility of

registering scents or tastes as trademark is not rejected in Turkish law With respect to the registration, the characteristics of the concrete case are important and it is required for a scent or a taste to have the ability of being described and represented graphically and being distinctive However, it is harder for scent and taste

marks to provide these conditions, compared to sound and color trademarks Yet the important thing is to be perceived and recognized identically by all the people, whose scent and taste feelings are triggered This is very hard to achieve

In these kinds of trademarks the descriptiveness is achieved by the chemical formulas of scent and taste In order to do this, it is necessary for the chemical formula to be able to describe the components of the scent and taste in question exactly and to retain the components within time without any exposure On the other hand along with the chemical formulas, the exemplar of the scent and taste in question must be

submitted to TPI However it is very hard to retain these exemplars verbatim during the protection period Re-submitting the exemplars periodically to the registration authority in order to overcome the possibility of transition of scent and taste, vanishing or transition by similar means could solve this issue

d) Three Dimensional Trademarks

Actually it is accepted for a long time that three-dimensional forms are qualified as being trademark Therefore it is not very right to consider three-dimensional trademarks as an unconventional trademark However it is not possible to acknowledge the three-dimensional trademarks between the traditional

trademarks Therefore we believe that it would be appropriate to mention the issue under this title

Trademark Decree Law allows the registration of three-dimensional trademarks It is adequate to submit the two-dimensional visuals (drawings, photos etc.) of the three-dimensional form in relation to descriptiveness The matter in relation to three-dimensional trademarks is not the descriptiveness, but the distinctiveness issue Most of the refusal decisions of TPI regarding three-dimensional trademarks are grounded on the distinctiveness requirement For instance, in 2006 the applications filed for the following three dimensional trademarks for chocolate and confectionery, were rejected by the TPI on the ground that they were not distinctive

On the other hand, the three-dimensional device trademarks, seen below, were rejected by TPI; however they were registered by the court order, as a result of the cases filed against the rejection decision of TPI

At this point, it should be mentioned that the courts apply the distinctiveness notion much more broadly and resiliently than TPI It is in such a degree that even applications of many three-dimensional trademarks rejected by OHIM was/is registered in Turkey by court orders

8 TRADEMARK CRIMES

a) In General

The Turkish trademark law is regulated by the Trademark Decree Law of 1995 and the criminal acts

of trademark infringement are also defined in the art 9 and art 61 articles of the Decree Law By the

art.61/A, added later on into the Decree Law by an Act, the criminal sanctions with respect to the related crime types were regulated However, the added article, which was put into force by an Act, only regulated the criminal sanctions; the crime types, which are subjected to a penalty, did not appear in the mentioned article Therefore the regulation was against the principle of “no crime without a previous penal law”; since although the additional article regulated the penalty, the crime types were regulated by a Decree Law which

is an executive act

It was appealed to the Constitutional Court in 2005 by the Ankara Criminal IP Court on grounds that the present regulation was against the principle of no crime without a previous penal law and it was requested the cancellation of the articles of the Decree Law in relation to the crime and the penalty It is only possible to request the cancellation of the articles, which are being grounded in a pending case, when the courts request the cancellation from the Constitutional Court Therefore in this solid appeal the IP court has requested the cancellation of the articles in relation to the case, which comprise the grounds of the cancellation application

The Constitutional Court agreed on the lawfulness of the regulation and decided for the cancellation

of the art 9 and art 61 of the Decree Law that includes the definition of the crime and of the provisions of the art.61/A, which were about the criminal sanctions and subjected to the appeal In order to fill the gap formed

by the cancellation decision, it was granted time to the Assembly to enact a regulation by “law” with respect

to the cancelled matters If the necessary enactment would have been drafted until the deadline, the new regulation would have entered into force before the cancellation decision, and then the cancellation decision would have not caused any chaos Nevertheless the necessary regulation was not enacted during the given period of time and the related articles were abolished with the entrance of the cancellation decision into force

on 05.01.2009 This caused for most of the basic trademark crimes to stand without any sanction and

approximately nine thousand pending trademark penalty cases were dropped at that time being This situation caused the long-term fight against the counterfeit goods to take a major blow

The legislator entered into force the articles of the Trademark Decree Law, which were cancelled, by amending them partially with the Law nr.5833, dated to 28.01.2009 in order to fill the mentioned gap But since the penalty provisions do not have a retroactive effect, this Law will only be applied to the trademark crimes committed after 28.01.2009 Consequently, it is pleasing that at least a law was implemented to fill the gap even if it was quite late

b) Trademark Infringements Acknowledged as a Crime according to the Trademark Decree Law

By the amendment made by the Law nr.5833, the actions that constitute crime are enumerated

restrictively as appropriate to the principles of penalty law However the Law excludes most of the

infringements from being acknowledged as a crime, which were accepted as trademark crimes earlier

The first crime type described in the new regulation is to produce goods or services, to expose them for sale or to sell them by using the identical or confusingly similar trademark that belongs to someone else

It is held to imprisonment from 1 year to 3 years and judicial fine, which corresponds to the 20.00 days of imprisonment in case of the constitution of the crime However it is not held for a penalty when the

perpetrator, who exposes to sale or sells the counterfeit good, inform where he has provided the mentioned products and accordingly when the products are seized after the manufacturer is revealed It is not sufficient only to reveal the manufacturer or to ensure the seizure of the products, both of them must occur together

Before the amendment, to keep the possession of the trademark for commercial purposes, to import,

to distribute or to put the goods in commercial use were acknowledged as a crime along with the acts of manufacturing, exposing to sale and selling However with the amendment these acts are taken out of being a crime This caused a big gap in relation to the crimes on counterfeiting of trademarks For instance, right now

to keep the possession of a trademark, which is known that it is counterfeit, for the commercial purposes or stock them does not constitute a crime However in the practice, according to the character of the concrete case, the courts assess the situation of keeping the counterfeit goods in possession in the scope of exposing to sale and held for penalty For example, if it is caught too many counterfeit goods in a store, it is expressed that the crime has occurred since it is thought that these goods will be exposed to sale On the contrary, it is not always possible to make this much of a broad interpretation Therefore, although the courts assess some acts within the scope of the crime via interpretation means, it can be said that the new regulations do not protect the trademark right very effectively This gap is obviated in the Draft Trademark Code, which there is currently ongoing studies in relation, and the acts of storing counterfeit goods, subject them to a process approved by the customs or subject them to use, to carry or keep in possession for commercial purposes regardless of the means are acknowledged as crimes along with the current ones However it is not possible to file a criminal case with respect to these actions until the draft become law

The second crime type is the removing of a trademark from its place without the authority, which is protected by law and placed on the product or on the packaging It is required for the constitution of the crime that the unauthorized person, who removed the sign, must have acted deliberately or recklessly Within this context, to use the sign ® or another sign, which is known widespread and serves to this purpose, would

make it harder for the perpetrator to claim that he was not aware of the fact that the mentioned sign is

protected legally In case of the constitution of the crime, it is held at most three years of imprisonment and judicial fine that corresponds to at least five thousand days of imprisonment

The third crime type is to dispose someone else’s trademark, when there is no authority to do so To assign or grant license on or subject to a pledge someone else’s trademark to a third person can be examples

of this type of crime It should necessarily be mentioned that to abuse the authority does not constitute this crime The perpetrator here is the third person, which has no authority In case of the constitution of the crime the perpetrator will be sanctioned imprisonment from two to four years and judicial fine that corresponds to at least five thousand days of imprisonment

The imprisonment and judicial fine sanctions, mentioned in the article, were being executed to the real persons that were the perpetrator of the described crimes However the legal persons do not have a criminal discretion In case these crimes are committed within the frame of a legal person activities; it is held peculiar safety measures along with the other sanctions However in practice, the authorities of the legal person are penalized, rather than the imposing of the safety measures

c) Proceeding Procedure

The investigation and the prosecution of the trademark crimes depend on a complaint The period of time for issuing a complaint is six months after it is being informed of the act and the perpetrator is learned After the complaint, the prosecutor prepares the criminal charges and the case is filed approximately after 2.5

or 3 months The first instance proceedings take 1 to 2 years, depending on the extent of the case In case of

an appeal regarding the decision of the first instance court, it takes 3 to 4 years for the Supreme Court to investigate it and held a decision

The limitation of action in the trademark crimes is 8 years after the action is committed Within this period the case must be filed against the suspect and the case must be finalized The criminal time bar is 10 years after the decision is finalized According to this, the held conviction verdict must be executed within 10 years Otherwise the conviction quashes

During making a complaint against a trademark crime, it is possible to request for the confiscation of the counterfeit goods subjected to the crime from the prosecution The prosecution submits this request to the approval of the court on-duty In the case of the approval of the request, the court on-duty decides the

confiscation of the goods subjected to the crime and held for the search and seizure for the preservation of the goods until the proceeding are finalized In case of an urgent matter it is possible that the search and seizure decision could be given by the prosecution However in this case the decision held must be submitted to the approval of the judge within twenty-four hour Otherwise, the consequences of this decision given by the prosecution abolishes by itself

Lastly it should be mentioned that by the amendment made in the legislation, it is gone backwards from the point, which was reached after long years of fighting against counterfeit In order for the trademark owners not to incur losses even more and in order to move forward in the fight against counterfeit, the draft law, which there is still ongoing studies, has to be promulgated as soon as possible

III PATENT LAW

1 IN GENERAL

Inventions in Turkey used to be protected by 1879 Patent Act, which was adapted from French Patent Act dated 1844 This act from the Ottoman period stayed in force for 110 years without undergoing major amendments

Similar to the other fields of IP, modern regulations concerning patents were made in 1995 as well In

1995, the Patent Act dated to 1879 was repealed and replaced by Patent Decree Law With this Decree Law, protection for utility models was adopted for the first time as well

Turkish Patent Decree Law is adapted mainly from German Patent and Utility Model Acts However, some of the provisions such as the provisions regarding compulsory license were adapted from Spanish Patent Act

Turkey is a party to Paris, TRIPS, EPC, EPC 2000, PCT, IPC, PLT, Budapest, UPOV and

Biodiversity Treaties

It can be stated that the Patent Decree Law is mainly in harmony with the above-mentioned treaties However, due to rushed legislation, it is inaccurate and deficient in many ways Thus, there has been an ongoing study for preparing a draft of a patent law consisting of 148 articles However, this draft is not likely

to become law and enter into force in near future On the other hand, another draft of a 6-article text is planned to be carried into force in order to fill the gap of the penalty provisions of the Patent Decree Law, which were abolished by the ruling of Constitutional Court

With foundation of Turkish Patent Institute (TPI) in 1994, Turkey became acquainted with a modern patent office Services related to patent research and examination reports, however, are obtained from other countries due to infrastructural insufficiencies of technique and information as well as lacking qualified examiners Since 2005, TPI has begun issuing research and examination reports in respect of some classes, yet more than 90% of the procedure for research and examination of the applications filed to TPI is still being held in the offices abroad

In Patent Decree Law, the patent agent institution is also regulated To become a patent agent, it is necessary and sufficient to be a university graduate and be successful in the exam that TPI conducts Many patent agents, who do not possess an engineering background and fulfill these criteria, are working as patent agents in the field currently Therefore the patent applications that are prepared by patent agents, who do not possess a technical background is standing in front of us as a crucial problem in practice

Parallel to the improvements in the legal and administrative substructure, it is being experienced crucial increase in the patent applications The number of applications, which were around 1500 in 1995, has passed 7.000 in 2009 This amount is approximately 10.000 per year with the number of utility model

applications Where the number of registered patents was around 50 in 1995, in 2009 this number has

increased to 5.500 This amount increases even more when the utility models are included

It should also be mentioned that the foreign application owners possess the domination with respect

to patents, contrary to trademark, design and utility models For example, only the 450 of the 5.500 registered patents were made by local firms in 2009

Despite all these improvements on the Turkish patent system in the recent years, there is still a long way that has to be taken This determination is valid for legal, judicial and also administrative substructure

2 UTILITY MODELS

A spate of small innovations invented by companies, sometimes by individuals and mostly by SMEs usually do not meet with the inventive step criteria required for patents Even when they met with the

protection criteria, it is possible for an invention not to be patented due to the high costs However today it is

a necessity in many economies to promote the SMEs to make innovations and R&D On the other hand the patent protection process takes relatively a long time However, the registration procedure of utility models is shorter, cheaper and more practical Due to these mentioned and similar reasons in Turkey, just like in some other countries, the inventions are protected by patent and utility model certificate as well

In Turkish legislation, in order to obtain a utility model certificate for an invention, it is required and sufficient to be novel and applicable to industry Differentiating from the draft texts in EU law on the subject matter, in Turkey the inventive step clause is not required

In Turkish law, the absolute novelty principle is acknowledged as a rule with respect to utility

models In other words, if the invention that is subjected to utility models was accessed by the public in any part of the world prior to the date of application, then it is not novel Similar to the patents, the utility models can benefit from the 12 months of application and exhibition priority right

As utility model protection has the same aim with patent protection, the non-patentable subject matters and inventions do not granted with utility model certificates Nevertheless some patentable inventions cannot enjoy utility model protection Since the aim of the protection is same, an invention cannot be granted with patent and utility model certificate at the same time

Although the aim of the protection is the same, there are crucial differences between patent and utility model protection These differences can be summarized as such:

As mentioned above, differently from patens, in Turkey the inventive step condition is not required for utility models

The term of protection in patents with substantive examination is 20 years, in patents without

substantive examination 7 years, whereas the utility models are protected for 10 years