Turkey: Proposed Landslide Changes in Turkish IP Law
by Abdurrahim Ayaz (Istanbul Patent A.S., – Turkey)
The Draft Industrial Property Law (“the Draft”) was passed by the Special Committee of Turkish Parliament on May 11, 2016, and would come to the parliament floor at any time to be passed into law. The coup attempt on July 15, 2016 has drastically changed government and parliament priorities, and put the draft far behind in the agenda. Therefore the draft has not moved to the parliament floor so far, but is expected to be passed into law in the near future.
The Draft covers laws related to Trademarks, Patents, Industrial Designs and Geographical Indications which are currently regulated by separate Decree Laws.
The Draft will bring landslide changes in Turkish Patent Law and Trademark Law and practices thereof. Some of the proposed changes related to Trademark Law are as follows.
- Acceptance of letters of consent in registering identical or confusingly similar marks. Although such letters are currently not given any value at all based on assumption that prior right searches are conducted at the interest of general public not solely at the interest of senior mark holder, the draft law expressly allows registration of identical or confusingly similar marks with the consent of senior mark holder.
- Proof of use may be requested by defendants in opposition proceedings, invalidation proceedings and infringement proceedings which are based on a trademark registered 5 years ago or earlier. If an opponent / plaintiff fails to prove use of the mark, the proceeding will be dismissed. Currently opponents / plaintiffs cannot be required to prove use of its mark, and the use requirement may only be questioned in a non-use cancellation proceeding which is exclusively a judicial proceeding.
- Reasons for cancellation and invalidation are separated in the Draft. Current Decree Law lists these reasons in the same article under the heading “Reasons for Invalidation”, which has caused many problems including partial cancellation of the relevant Article by the Constitutional Court.
- Cancellation proceedings would be administrative proceedings before the Turkish Trademark Registry while invalidation proceedings will continue to be judicial proceedings. Currently both cancellation and invalidation proceedings are exclusively judicial proceedings.
- Regular and late renewal terms will be calculated from the actual expiration dates. These terms are calculated, under the current law, from the last day of the month in which protection expires.
- Opposition term will be changed from 3 months to 2 months from publication date.
- The Draft expressly prohibits any defence based on later registration of an IP right in infringement proceedings. Such defences are currently accepted by courts as a justification of the disputed use.
The minutes of the Turkish Parliament Commission (Parliament Committee on Industry, Trade, Energy, Natural Resources, Information and Technology) and a final version of Draft Bill is available in Turkish at https://komisyon.tbmm.gov.tr/tutanaklar.php?pKomKod=36