The working conditions of the Turkish IP Academy specified by the newly published regulation

Implementing Regulation on Intellectual Property Academy (Regulation No. 30948) was published in the Turkish Official Gazette on November 14, 2019.

The Regulation regulates the issues related to training, consultancy, research and coordination activities carried out within the academy on intellectual property rights, fees charged for the activities and services rendered, secretariat services and other issues.

According to the Regulation, the Academy will be in charge of the following tasks:

• offering basic and specialized training programs in the field of intellectual property, including formal, distance and mixed theoretical and practical training,
• organizing domestic internship programs, search meetings, panels, conferences, symposiums, congresses and similar activities,
• conducting field researches,
• carrying out coordination and domestic cooperation activities,
• providing advices on IP matters,
• ensuring that the professional knowledge and skills of public and private sector employees in the field of intellectual property are established within the framework of international norms by making personnel certification in accordance with the national and international standards.

The Academy will be administered by a Board, members of which will be consisted of a representative from the Turkish Patent and Trademark Office, a representative from the General Directorate of Copyright, two university professors, one of whom is specialized on industrial property rights and the other of whom is specialized on the copyrights, one patent or trademark attorney, one sector representative working in the field of copyrights, one member appointed by the Supreme Court of Appeals and one judge working in the civil or criminal courts of intellectual and industrial rights.

The training centers, which will function as excutive branches of the Academy according to the Regulation, will be established within the body of the Turkish Patent and Trademark Office.

The training centers will be authorized to issue certificate or certificate of attendance to the eligible participants with or without examination, depending on the nature of the training and the conditions announced in advance. These centers will also publish educational materials, research reports, dissertations, scientific, legal or technical articles in the field of intellectual property in electronic and/or printed media and will launch a website for the public use for these purposes.

Read More

Turkey withdrew its declaration under Article 14 (5) of Madrid Protocol

WIPO has announced that Turkey withdrew its declaration under Article 14(5) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”). The withdrawal became effective on October 18, 2019.

As a result of the withdrawal, Turkey can be the subject of a subsequent designation in respect of any international registration, including international registrations effected before January 1, 1999, the date on which the Madrid Protocol entered into force with respect to Turkey.

Read More

TURKPATENT updated the online patent search tool

Turkish Patent and Trademark Office (TURKPATENT) has made a long-awaited update on the patent search and file inspection tool on its website. The update has introduced a new interface and functionalities to the patent search and online file inspection tool.

One of the new features put into service by this update is the possibility to access to the patent documents and files by online. Thus, applicants, patent holders and third parties will be able to inspect the files and documents of the published patent applications and patents by online.

The users will also benefit from detailed search, advanced search, image viewing, and document export functions of the patent search tool.

Read More

Turkish Patent and Trademark Office has published new examination guideline for trademarks

Turkish Patent and Trademark Office (TURKPATENT) has published a new examination guideline for trademarks, titled “Trademark Examination Guideline.”

The Guideline, which is a revised version of the Guideline issued in 2011, was prepared based on the decisions of the Board of Appeal of TURKPATENT, the decisions of the Turkish Intellectual Property Courts, the case-law of the Turkish Supreme Court. It also takes into consideration the decisions and practices of the European Intellectual Property Office (EUIPO) and the case-law of the Court of Justice of the European Union. Thus, the Guideline clarifies many challenging issues with trademark examples in view of the decisions within the scope of the Turkish and European law and practices.

The Guideline covers many aspects of trademarks and guides examiners, applicants and attorneys for evaluating the registrability of the trademarks under the Turkish Industrial Property Law. Specifically, the Guideline provides general approaches regarding identicalness, confusingly similarity, descriptiveness, and distinctiveness issues, non-traditional trademarks, hashtag trademarks and many hot topics.

The Guideline is not a legislative or regulatory document and thus does not have a binding nature, rather remains a document of practice covering various examples and scenarios in the face of the challenging trademark cases.

TURKPATENT states that the Guideline is not a static but dynamic document changing with the new laws, regulations and the case-law in both Turkey and European Union. Therefore, it is stated that the document will be regularly updated to comply with the most recent developments on trademark matters.

The Guideline will be extremely valuable for the examiners and trademark practitioners in Turkey, as the Turkish Industrial Property Law, which came into force in early 2017, has required the trademark examiners and practitioners to develop new approaches on trademark matters.

Download Link: Turkish Trademark Examination Guideline (2019)

Read More

Turkish Supreme Court said the final word on non-use cancellation actions

Turkish Supreme Court (TCC) has recently clarified a long-disputed issue on non-use of trade marks.

Background

A Specialized Court of Intellectual and Industrial Property (IP Court) filed a request for the cancellation of Article 14 of the Decree Law no. 556, which includes provisions regarding use of trade marks and their cancellation in case that they are not used within five years from their registration. Meanwhile, the draft law for industrial property was enacted on December 22, 2016 by the Turkish Parliament. The new Industrial Property Law (IPL) was published and came into force on 10 January 2017.

Just before the entry into force of the IPL, the TCC’s decision cancelling Article 14 of the Decree Law No. 556 on January 06, 2017 was published and took effect. The decision of the TCC were established on the grounds that trade mark rights cannot be annulled on the basis of the provisions of Decree Law on the grounds that those rights are proprietary rights and so the fundamental rights in the constitutional meaning which are not allowed to be annulled under the Decree Laws.

As the IPL, which includes use provisions likewise, come into force after the cancellation of Article 14, many non-use pending cancellation actions filed under the Old  Decree Law were dismissed by the IP Courts due to 4-day legal gap before the effective date of the IPL and on the grounds that there are no longer provisions which allow trade marks, which are not genuinely used within the 5-years as from their registration, to be cancelled by non-use cancellation actions at the Courts.

This has not remained limited to only pending non-use cancellation actions but also raised the question about when the non-use cancellation actions can be filed under the IPL. As the IPL came into effect on January 10, 2017 and the laws are not usually made retroactively (as in this case), some academics and IP professionals have argued that non-use cancellation actions can only be filed after January 10, 2022 for the trade marks registered under both the old Decree Law and the IPL  with the following considerations:

• There is no non-use provision before the coming into force of the IPL (as a result of the cancellation of the provision related to the use of trade marks under the Old Decree Law by the TCC)
• the effective date of the IPL is January 10, 2017 and the 5-years use period, as prescribed by the IP Law, can be started as from this date of entry into force.

At the end of all these debates, the Turkish Supreme Court (TSC) has put end to the chaotic situation with its recent decision.

Decision of the Turkish Supreme Court

The TSC has firstly investigated whether the related provisions of the IPL can be applied retroactively and opined that the Laws are not made retroactively as a rule and bear legal consequences prospectively. Whereas it is the general principle, according to the TSC, there is no obstacle for the lawmaker (Turkish Parliament) to make legislations retroactively. The TSC further considered the following facts:

• The provisions of the IPL were enacted on December 22, 2016 by the Turkish Parliament and come into force on January 10, 2017.
• The cancellation decision of the TCC regarding the non-use provisions under the Old Decree Law  came into force on January 06, 2017.

In view of these, the TSC further considered and concluded that:

• It should be accepted that the will of the lawmaker emerged on 22 December 2016 (before the effective date of the decision of the TCC).
• While the main intention of the lawmaker is to implement the non-use provisions retroactively, a legal gap unpredictably emerged due to the TCC’s cancellation decision coming into effect after the enactment date but before the date of entry into force of the IP Law.

The TSC confirmed that non-use cancellation actions can be filed even before January 10, 2022 with regards to trade marks which are not used within 5-years use period.

The TSC has consequently clarified an issue which have been largely debated over 2 years in Turkey. In light of this cas law, anyone can any longer file non-use cancellation actions against trade marks based on non-use claim.

Read More