The new IP Law no. 6769 came into force as of 10th of January 2017.
Important changes have been made and attention is needed. The new law promises a fast, fair and much more authentic process. 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 nationally or internationally filed Turkish trademarks.
Recent changes can be summarized as follows and are in force now:
Letter of Consents Are Now Acceptable in Turkey
According to the previous Decree Law no. 556 it was not allowed to overcome a refusal with a “letter of consent” or avoid an ex-officio refusal prior to the filing. It is now acceptable to hand out a “letter of consent” (LoC) signed by a holder of an earlier trademark consenting to the registration and the use of an identical or similar trademark. Such a consent can cover all or a part of goods/services for which it is registered or filed. It will be possible to hand out the letter of consent directly during the trademark filing stage or after receipt of a provisional refusal based on absolute grounds of refusal based on “confusingly similar prior application or registrations”.
Important is that this new regulation will totally change the trademark search strategy and risk assessments and trademark searches prior to proposed trademark applications will became much more important.
Proof Of Use For Opposing Parties
In case an opposition will be filed against a published trademark “based on confusingly similarity to a prior registration or application” an opponent can be faced with a “request of use” by the holder of the published/opposed trademark in case the trademark(s) of the opponent are registered since more than 5 years. Otherwise the holder of an opposed trademark will be not allowed to ask for a proof of use in case the trademark(s) of the opponent are not registered for at least 5 years.
In case the holder cannot hand out any evidences or an acceptable and reasonable explanation of a non-use the opposition will be rejected. But this will not cause an automatic cancellation of opponents’ trademark(s).
In case a holder can prove a partial use the opposition will be handled only for the goods/services for which it in serious use.
Sample evidences of use can be documents such as: invoices, customs documents, shipment documents, agreement with Turkish companies and distributors, sales facts and figures, packagings, labels, price lists, catalogues, pictures and articles.
From another point of view the chances of success estimations will be much more complicated and will totally depend on the number and quality of evidences.
Trademark and Design Publication Periods Changed
The previous Decree Law ruled a publication for 3 months. This changed now and all trademarks will be published for just 2 months. The Turkish Patent and Trademark Office is publishing trademark bulletins twice a month.
The publication period for Designs shortened from 6 months to 3 months.
The first influenced bulletin is the Turkish trademark bulletin no 286th dated 12.01.2017, which will run until the due date of 12.03.2017. Any other previous publications will be handled with a 3-month-period.
Trademark And Design Renewal Due Dates Changed
The previous regulation was that a trademark can be renewed “until the last day of the respective month”. This regulation now changed and renewal requests must be made until the absolute correct date.
For example, if a trademark renewal due date is 24.01.2017 it must be renewed until the same date and not until the last day of the same month. But a renewal with fine within 6 months starting from the due date is still possible.
The same is valid for Designs, which must be renewed until the due date without any grace periods of the respective month.
Trademark Cancellation Actions Basing on Non-Use Again In Force
The Turkish Constitutional Court decided in the first week of January 2017 that Article 14 of previous Decree Law No. 556 on the Protection of Trademarks, which has been cited as “unconstitutionality”. The court announced that Article 14 is indeed to restrict property rights and is contrary to Article 91 of the Turkish Constitution. It is also mentioned that fundamental rights cannot be regulated by a Decree Law.
With the new IP Law no. 6769 article 9 this regulation is again in force and unchanged. In other words it is possible to open cancellation actions against third parties basing on a non-use claim within a period of five years.
An important change that is effective as of 10.01.2014 none of the specialized IP courts in Turkey will be responsible for those lawsuits anymore. Instead the Turkish Patent and Trademark Office will be directly responsible for those lawsuits directly.
This new regulation promises a fast handling and fast decisions concerning non-use cancellation actions.
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.
Attention is needed while evaluating IP portfolios for Turkey. Further the TPO will be allowed to change the address of a holder in case no request has been made in case a PoA with a new address will be handed out during e.g. an opposition case or new trademark filing.
Color Sound 3-D and Motion Trademarks
According to the new Law it is now possible to file color, sound, 3-D and Motion Trademarks in Turkey.
Grace Period For Lapsed Trademarks
Pursuant to Article 6/8 of the new Law it is possible for trademark owners to file a new trademark basing on the lapsed registration during a grace period of 2 years provided that the trademark details are exactly the same compared with the older lapsed registration. It is possible to file oppositions for those holders against third parties within 2 years, but it will be obligatory now to prove a use in case of an opposition against third parties which are filing identical or confusingly similar trademarks.
“Mediation Period” For Conflicting Parties
A new regulation is that the TPO can now request any parties involved in an opposition or appeal case to consider a special “meditation period” and “compromise claims” while an opposition or appeal is on hold during this phase.
In case the parties cannot find a peaceful solution the opposition or appeal case will proceed with a remark of “not having found an amicably solution”.
The Unauthorized Use of Trademarks For Domain names and Keywords
According to article7(1)-d and 7(1)-e, a holder of a trademark is now clearly allowed to forbid and act against a use of its trademark(s) as a company name, keyword, domain name and other special codes before the specialized IP courts. This regulation was not clearly cited in the previous Decree Law no. 556, which will be now handled much more intensively by IP courts.