New Regulations Under New Industrial Property Law
The Industrial Property Law numbered 6769, was published in the Official Gazette dated 10 January 2017.
The Law brings the principles of trademarks, geographical indications, industrial designs, patents and utility models under one roof. These were previously regulated by different Decree-Laws. The Decree-Laws on the protection of trademarks, patents, and industrial designs will continue to apply to international and national trademark, design, and patent applications filed before January 10, 2017.
The Regulation on the Implementation of Industrial Property Law was published in the Official Gazette numbered 30047 and dated 24 April 2017. The Regulation supersedes the regulations on the implementation of decree-laws regarding protection of patent rights, industrial designs, geographical marks and trademarks.
According to the Industrial Property Law (the “Law”), the Turkish Patent Institute’s name has changed into the Turkish Patent and Trademark Office (the “Office”).
The new regulations regarding the trademarks
- The Law introduces the Letter of Consents, by which the owner of an earlier trademark may consent to the registration and the use of an identical or similar trademark, later filed for the same or similar goods or services. A Letter of Consent should be notarized and submitted to the Office either simultaneously with the filing of the trademark application or upon refusal.
- Colors and sound marks have been included in the definition of signs which may be protected as a trademark. It is also possible to make application for motion trademarks.
- The opposition period of 3 months has been shortened to 2 months. This will have the effect of reducing the total registration time to less than 10 months.
- If the opponent’s trademark has completed the 5 years of grace period for the non-use, the Law enables the Applicant of the opposed trademark to require evidence of the use of the trademark on which the opposition is based.
- The Office, in an effort to encourage mediation, will be entitled to invite parties to settle the oppositions through mediation as per the Mediation Law.
- In line with the regulations of European Union, cancellation actions will be initiated before Turkish Patent and Trademark Office instead of Courts on Duty of Intellectual and Industrial Rights. However, this regulation will be in force after 7 years.
- The Law enables the trademark holder to renew the trademark on limited goods and services.
- Bad faith constitutes separate opposition and invalidation grounds, whereas it used to be applied by the courts and the Office as per the general provisions.
- A sign that contains geographical indications cannot be registered as a trademark.
The new regulations regarding the designs
- Submission of the description of the industrial design during the prosecution period becomes optional.
- Designs which are not novel will be ex-officio refused. During the preliminary examination process of design applications, novelty examination will be conducted by the Turkish Patent and Trademark Office.
- According to the Law, invisible parts of a complex product are unable to be registered as design.
- The opposition period of six months has been shortened to three months. This will have the effect of reducing the total registration time to less than a year.
- A design will also be protected as a non-registered design right only if the design was first made available to the public in Turkey. The protection term is three years as from the date the design was first made available to the public.
The new regulations regarding the patents and utility models
- The Law provides some exceptions to the general concept of biotechnological inventions. According to the Law, simple discoveries of human gene sequences or processes for cloning human beings are stated to be not patentable subject matter.
- The Law abolishes all the provisions with respect to the short term patent of seven years which could be obtained without substantive examination. Under the new regime, it will be compulsory to request a substantive examination, the omission of which will result in the withdrawal of the patent application.
- All inventions made by scientific staff in their employment function are deemed to belong to the university provided that certain conditions are met.
- The Law introduces a compulsory novelty search for utility model applications with the possibility of the applicant filing amendments during the registration proceedings.
- Examination report became compulsory for utility models.
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