Legal framework
What is the relevant legislation?
Designs are granted under the Industrial Property Law No. 6769 (the IP Law), which entered into force in January 2017. Before the subject law enters into force, designs are protected under the previous Decree Law No. 554.
There is also the main regulation for industrial property rights, including designs: the Regulation on the Implementation of the Industrial Property Law. The Regulation was published in the Official Gazette No. 30047 of 24 April 2017 and was later amended by a regulation published in the Official Gazette No. 30825 of 8 July 2019.
Designs can also be protected as works of art under the Law on Intellectual and Artistic Works No. 5846, providing that it meets the requirements.
Turkey is a party to several treaties related to designs, such as the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works.
According to the IP Law, both registered and unregistered designs that meet the criteria of novelty and distinctiveness are protected. Before the IP Law, unregistered designs were protected under general provisions.
Are design rights considered to be distinct or treated as patent rights?
Design rights are distinct from patent rights. While patent rights involve protecting technical and functional properties of a product, design rights comprise protecting the appearance of the whole or a part of a product resulting from the features of the lines, shape, form, colours, materials or texture of the product itself or its ornamentation.
Intellectual products can simultaneously satisfy qualifications for protection under both patent and design law. In that case, there is cumulative protection. It is also possible that the designs can be protected as works of art under the Law on Intellectual and Artistic Works, as long as it meets the requirements.
Which agency is responsible for registration and grant of design rights?
Turkish Patent and Trademark Office is responsible for the registration and grant of design rights.
Is there any overlap between design rights and other rights?
Designs are protected under trademark law, patent or utility model law, copyright law and design law. This protection varies according to the qualification and characteristics of the product. Accordingly, a design can be protected by patent or utility model provisions, and works of art can be protected under the Law on Intellectual and Artistic Works.
The owner of the design may apply for one of, more of or all the other industrial property rights, copyrights or unfair competition provisions if the conditions exist; however, the court cannot sanction separate compensation for all the rights violated: the owner will have the right to choose one form of compensation determined in accordance with different legal bases.
Unregistered designs
What protection and rights are there for unregistered designs?
Unregistered designs are granted under Industrial Property Law No. 6769 (the IP Law), provided they are made available to the public for the first time in Turkey. The unregistered designs must also meet the criteria of novelty and distinctiveness.
Unregistered design protection starts from the design’s disclosure date and lasts for three years. Unlike registered design protection, the owner of the unregistered design can only benefit from subject protection if an identical or indistinguishably similar version of the design in terms of general impression is copied directly.
Before the enactment of the IP Law, there was no special protection for unregistered designs; they were protected under general provisions.
How much use is generally required to establish unregistered design rights?
The disclosure date of the design is crucial to establish unregistered design rights. The three-year protection term for unregistered design rights starts from the design’s disclosure date.
What exclusions apply to unregistered design rights?
The most important difference between unregistered design rights and registered design rights is that unregistered design rights provide limited protection: unregistered design rights only provide protection against copying, and the subject protection lasts for three years from the design’s disclosure date.
Registered designs
Who can apply for and own a design?
Persons who can apply for design protection within the scope of Industrial Property Law No. 6769 are as follows:
Any natural person or representative of a legal person who meets at least one of the above criteria may file a design application before the Turkish Patent and Trademark Office (TPTO). Design applications may also be followed by an appointed registered trademark or patent attorney.
Persons who do not have residence in Turkey must be represented by a qualified Turkish trademark or patent attorney. In those cases, the applications carried out without being represented by an attorney shall be deemed not to have been filed; however, it is not mandatory to submit a power of attorney when filing the application.
What may and may not be protected?
Pursuant to article 55 of the Industrial Property Law No. 6769 (the IP Law), the appearance of the whole or a part of a product – including its lines, contour, colour, shape, material, surface texture or ornamentation – can be registered as a design.
Designs meeting the novelty and individual character criteria can benefit from design protection. A design for which an application for registration has been made is deemed new if no other identical design has been made available to the public anywhere in the world before the application date or the priority date (and before the date it was first made available to the public in terms of unregistered designs). If a design differs only in minor details, it is considered as identical to the design with which it is being compared and cannot be granted with design protection.
Individual character means the difference between the overall impression of a design on the user and the overall impression of any other registered design that has been made available to the public before the application date or the priority date of the relevant design on the same user.
In terms of complex products comprising multiple parts, the design of the component part is considered to be new and to have an individual character, provided that it is visible in the normal use of the complex product and its visible features fulfil the requirements of novelty and individual character.
The following are excluded from design protection:
In addition, design protection does not cover the production method, the purpose of the use, the technical benefits or the functional features of the product.
Article 59 of the IP Law further lists acts that are outside the scope of design protection. These are:
What are the costs involved in registration?
Fees for design registration applications are determined by a communique issued by the TPTO at the end of each year.
The official fee for a single design application is 200 Turkish lira. In terms of multiple applications, where several designs are combined in one application, an additional registration fee of 90 lira is paid for each additional design. The amount of the publication fee depends on the size of the design. Currently, a fee of 45 lira is paid for each 8x8 cm portion of the visual representation of the relevant design.
The renewal fee is 600 lira for single designs, and an additional renewal fee of 80 lira is paid for each additional design in multiple applications. The registration fee for right of priority is 310 lira for 2021.
All fees mentioned above are paid to the TPTO prior to or during the application process.
In addition, there are some other fees related to several legal actions, such as licences, transfer, inheritance and pledge registration, that are updated annually.
Is there a grace period for filings?
Yes. The Industrial Property Law No. 6769 prescribes a 12-month grace period for design registration. This means that the novelty or individual character of the disclosed design will not be harmed if the design for which an application is filed is made available to the public (including by exhibitions) by the designer or its successor, by a third party in consent or in abuse of the relation with the designer or its successor within the 12-month period before the filing date or the priority date.
Disclosure to the public incudes releasing the design on the market by means of an exhibition or sale, as well as any activity for use, description, publication, promotion or any other similar purpose; however, disclosure to a third party under confidentiality conditions is not considered as public release.
Procedures
What is the application process?
All national design filings are made online through the electronic application system (EPATS) of the Turkish Patent and Trademark Office (TPTO). Applications with physical documents (eg, mail or hand-delivery) are not accepted unless there is a technical problem in the TPTO’s website or in the EPATS system that lasts for more than 24 hours; therefore, it is necessary to have an e-government account and an electronic or mobile signature to be able to follow up on the application process.
Applicants should fill the online application form and submit it to the EPATS; otherwise, the application will be cancelled, and the fees paid will be refunded upon request.
Applications must include the following:
In addition, up to 100 design applications may be filed under a single application, provided that each product to which the design is applied, excluding decorations, belong to the same class of the Locarno Classification and that the additional fees are paid.
How are the examination and appeals procedures conducted?
The design registration procedure comprises six main stages: application, examination, registration, publication, opposition and certification. First, the TPTO examines the application in terms of formal conditions. If all the formal conditions specified in the relevant regulations are met, the design is registered and published in the Official Bulletin within an average of 30 days of the date of application.
Registered design protection starts from the filing date. The filing date becomes definite as of the date of the receipt of the application by the TPTO.
If there are formal deficiencies in the application, those deficiencies should be remedied in due time for the filing date to become definite. If the deficiencies in the application are not remedied in due time, the application is deemed invalid. The failure to remedy deficiencies regarding the priority right in due time only leads to the loss of the priority right.
The TPTO rejects applications that fail to meet the relevant criteria. Applicants can appeal against the refusal decision of the TPTO within two months of the date of notification. The Board of Re-examination and Evaluation of the TPTO examines the appeals.
What are the opposition rules?
Third parties may file an opposition against a design registration within three months of its publication date. Third-party opposition can be based on the grounds that:
If the opposition fee has not been paid in due time, the opposition is deemed as invalid. In addition, the fee is refunded if the opposition is concluded in favour of the opposing third party.
It is also possible to initiate legal action against the final decision given by the Board of Re-examination and Evaluation of the TPTO before the IP courts as of two months from the notification date.
What are the registration time frames?
Designs that meet all the requirements specified in the law are granted a registration date and a certificate of registration by the TPTO. The protection period of a registered design starts from the filing date.
The term of protection for registered designs is five years as of the filing date. This period can be extended up to a total of 25 years in five-year renewal periods. A registered design becomes public domain upon its expiration, meaning that it is no longer subject to design protection and is free for public use.
In case of renewal, the protection starts from the day following the expiration of the previous five-year protection period. If the registration is not renewed, the protection is deemed to be expired on the expiry date of the previous protection period.
In what instances does removal from the register occur?
Design registration may be invalidated by the court on the grounds that:
Persons who have legal interest may also request for the removal of the design.
Enforcement
What are the key causes of action?
The rights arising from the design belong exclusively to the holder of the right. The more a design differs from previous designs currently on the market in terms of the criteria of novelty and distinctiveness, the wider the scope of the design rights protection.
In this case, a third party cannot produce, put on the market, sell or import an identical or indistinguishably similar version of the registered design without the consent of the design owner. In addition, a third party cannot use or keep an identical or indistinguishably similar version of the registered design for commercial purposes without the consent of the design owner.
If a third party desires to propose to make a contract for the registered design or the product for which the registered design applies, it must obtain the consent of the design owner.
Unregistered design infringement actions can only be valid if the unregistered design has been copied identically or indistinguishably.
What enforcement procedures are available?
Design owners and other persons who have the authority to file a claim may seek a preliminary injunction regarding the cessation of placement and advertisement of the infringing products on the market.
It is also possible for the rights holders to file civil or criminal action against infringement. The rights holders may request:
The parties may decide to resolve the dispute before a registered mediator for non-criminal IP matters.
What remedies are available?
The following remedies are available:
What are the time frames for the resolution of enforcement actions for registered and unregistered rights?
The time frames for the resolution of enforcement actions vary according to the nature of the case; however, the time frames are approximately between one and two years.
What key cases from the past 18 months should rights holders be aware of?
In a current case, the 11th Civil Chamber of the Court of Appeal, with its decision of 2 June 2021, ruled that minor differences (in this case, the limited thickness–width difference in the bottom part of glass designs) do not satisfy the criterion of distinctiveness. This case may be beneficial for understanding the criteria of novelty and distinctiveness.
Ownership changes and rights transfers
What are the rules surrounding assignment and licensing of design rights?
Design rights may be subject to transactions, such as transfers, transfers by inheritance, licences, pledges, collateral and seizures. The transactions can be carried out independently of the business. The transfer agreement will not be deemed valid unless it is in writing and notarised.
All transactions mentioned above can be registered and published on the Official Bulletin of the Turkish Patent and Trademark Office upon request of the parties, payment of the required fee and fulfilment of other conditions specified in the regulation. Rights arising from transactions that are not registered on the registry cannot be claimed against third parties acting in goodwill.
In terms of designs with multiple owners, other stakeholders have a pre-emption right when any of the owners sells its share partly or wholly to a third party.
Are licences of right available?
Designs may be subject to licence agreements. The licence may be granted by the owner exclusively or non-exclusively; however, the licence cannot be interpreted as an exclusive licence unless otherwise agreed in the agreement.
In exclusive licence agreements, the licensor cannot grant licences to third parties and cannot use the design himself or herself unless the right is expressly reserved. On the contrary, the licensor of a non-exclusive licence agreement can use the design himself or herself and can grant licences to third parties.
It is not possible to transfer the rights arising from the licence to third parties or grant sub-licences unless otherwise agreed in the licence agreement. In addition, the licensor can carry out any legal action related to the use of the relevant design during the licence period unless otherwise agreed in the agreement.
Update and trends
What were the key judicial, legislative, regulatory and policy developments of the past year in relation to the protection and enforcement of designs? What are the prospects for future developments?
Following amendments to the Commercial Code No. 6102 and effective as of 1 January 2019, it has become obligatory to apply for mediation before filing an intellectual or industrial property lawsuit involving pecuniary claims, such as claims for damages. Accordingly, the party intending to bring an action involving any pecuniary claim before the civil courts for intellectual and industrial property rights should first apply for compulsory mediation in order not to encounter possible obstacles during the proceedings.
Moreover, it is accepted in the doctrine that it is necessary to apply for mediation where an action of debt arising from an IP right (where it is compulsory to apply for mediation) and another IP-related action (where it is not compulsory to apply for mediation) are filed together. The 11th Chamber of the Turkish Court of Cassation has also ruled In line with the doctrine in its decision of 10 June 2020.
This article was first published on Lexology GTDT in January 2022. See our Lexology content here.
