Design, is the appearance of a whole or a part of a product that has various elements or properties that can be perceived by human senses, such as the line, shape, color, texture, flexibility or ornamentation of the material. Protection shall be granted to a design which is new and has an individual character. A design shall be considered new if before the date of reference no identical design has been made available to the public in the world. Designs, differing only in immaterial details shall be deemed to be identical.
Orbis Vista, represents its clients before national authorities in all procedural and legal steps concerning Turkish design applications and assists its clients in obtaining and enforcing their rights.
Priority according to Paris Convention can be claimed within 6 months from the first filing date. Period of protection of a design is 25 years in condition of being renewed for every 5 years period.
Besides prosecution, litigation and post grant services, it’s one of our main goals to feed the client with development in determined activity fields for most current design review and monitoring, further to strategy advisory for best protection, best results and best enforcement. We review, clients existing design portfolio and offer advice on its strengths and weaknesses from the point of view of the National Design Law, moreover we review worldwide competitor and sector activities to help framing a strategy for protecting and enforcing the owned design rights.
Following services are offered in design division;
Prior Art Searches
Freedom to Operate Analyses
Featured Design Monitoring for Awareness of New Designs in a Specific Field
National and International Design Filings
Invalidation & Cancellation Proceedings
In Turkey, recently, the new Turkish IP Law No. 6769 pertaining to the protection of designs has entered into force on 10th January 2017 after the previous Decree Law No. 554 entered into force on 27th June 1995. Turkey is also a party to the Locarno Agreement relating with the international classification of industrial designs as of 30.11.1998 and Hague Agreement (Geneva Text) for International registration of designs as of 01.01.2005.
After the implementation of the new IP Law No. 6769, novelty examination became mandatory for design applications. Opposition procedure during the publication period is ongoing and multiple design applications, deferment of the publication are still available.
What Introduces the New Turkish IP Law for Designs?
As of January 10, 2017 with the enactment of the new Turkish IP Law No. 6769, important changes have been made and attention is needed. Some of those changes are quite useful and expected for a long time and a few changes will directly influence international clients and the whole monitoring system for designs. Recent changes can be summarized as follows;
No Formal Requirement for Design Description
Submission of the description of the industrial design during the prosecution period becomes optional. The description of the designs is not anymore a mandatory requirement to be filed for prosecution purposes and the information provided in the description will not affect the scope of protection, if any.
Novelty Examination at the Application Stage
TPO will carry a novelty examination for industrial design applications and designs which are not novel will be rejected ex-officio.
Invisible Parts of a Complex Product are Not Protective Any More
Only visible parts of a complex product shall be protected if they meet novelty and individual character criteria according to the new law considering that only visible parts meet novelty and individual character criteria.
The post-grant opposition period has been shortened from six months to three months. This will have the effect of reducing the total registration time to less than a year and designs will be approved for registration just after the publication period ends in case of any opposition. The Turkish Patent Office will continue publishing design bulletins twice a month.
Non-Registered Industrial Design Rights
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 rights derived from design protection can be used for non-registered designs to prevent third parties usage of identical or similar of a non-registered design.
Due Dates for Renewal of Designs Changed
The previous regulation was that designs may be renewed “until the last day of the respective month”. This regulation now changed and renewal requests must be made until the absolute same day coming from the filing date. But a renewal with surcharge within 6 months starting from the expiry date is still possible.
Disclosing the Designers is Not Mandatory
Until the new IP Law, it was mandatory to disclose the designer(s) and their designs but the new law brings an option and the applicant may not give the information of the designer(s).
Multiple Applications System Re-Adapted
Application of several designs may be combined in one application as a multiple design application. However, this possibility was subject to the condition, that the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same sub-class according to the previous regulation. The new IP Law allows filing the multiple design applications in case the productes belong to the same class but not same sub-class. Belonging to the same class is enough and TPO is not interested any more whether these are also in the same sub-class.
Expanded Priority Rights
Natural or legal persons or their legal successors in title who are nationals of any state party to the Paris Convention or if not nationals who are domiciled or have an active business in these states, shall enjoy a right of priority of six months from the date of filing a valid application at the authorized bodies of these states, for the purpose of filing an application for obtaining a registration certificate in Turkey in respect of the same design. The new IP Law introduces an expanded priority rights in the way that patent or utility model applications will also be considered as priority along with the prior design applications.
Address, Legal Entity And Company Name Changes Will Influence Entire IP Portfolio
Pursuant to the new IP Law a change of address, legal entity and company name will be reflected in the entire IP portfolio of an applicant, which comprises trademarks, industrial designs, patents and utility models registered or pending in the name of the same owner.
- Any applications filed before the publication of the new law will enjoy the earlier regulations in force.
- Trademark litigation allows for civil and/or criminal proceedings whereas civil proceedings are available for patent and design litigations.
- Registered IP rights will not constitute a legitimate defense against any infringement claim brought by the owner of the earlier IP right.
- The new intellectual property law introduces the “international exhaustion of rights principle”, thereby replacing the earlier “national exhaustion principle”.