TÜRKIYE Law and Practice Contributed by: Meltem Manav and Yeşim Kumova, KM Legal
mercial use, experimental use for regulatory purposes, pharmacy preparations, and certain sector-specific exceptions. Defences include prior use under Article 87, permitting continued use within the undertaking’s needs, and compulsory licensing under Articles 129 et seq. In addition, exhaustion applies to the products lawfully placed on the market in Türkiye, reflecting an international exhaustion regime. However, this does not extend to process patents. 1.6 Patent Enforcement and Remedies Patent disputes are heard by specialised IP Civil Courts or designated civil courts of first instance where none exist. TURKPATENT has no jurisdiction over infringement. An appeal may be filed before TURKPATENT against its decision, and the final deci- sion may be challenged by filing an action for annul- ment before the Ankara IP Courts. Proceedings at first instance typically last 12–24 months. Parallel validity challenges, such as before the European Patent Office or via national invalidation, do not automatically stay proceedings, though courts may grant a discretion- ary stay. Preliminary injunctions, including ex parte measures, and evidence preservation are available. Remedies include injunctions, seizure and destruc- tion, and pecuniary, non-pecuniary and reputational damages, with the claimant free to choose the calcu- lation method; disgorgement of profits may also be sought. Additional actions include claims for usurpa- tion of the right to apply for a patent and invalidation actions. Costs and statutory attorney’s fees are gener- ally recoverable, subject to tariff limits. However, full indemnity recovery is uncommon. The IPL does not provide for criminal liability for patent infringement. However, recourse may be had under the unfair com- petition provisions of the TCC. 2. Trade Marks 2.1 Legal Framework and Protectable Signs In Türkiye, trade mark protection is governed primar- ily by the IPL, together with secondary legislation, in particular the Regulation on the Implementation of the Industrial Property Law (“Regulation”), which sets out detailed procedural rules on application, exami- nation, opposition and registration processes before TURKPATENT. Under Article 4 of the IPL, a trade mark
may consist of any sign capable of distinguishing the goods or services of one undertaking from those of others and capable of being represented in the regis- ter in a clear and precise manner. This includes words (including personal names), figures, colours, letters, numerals, sounds, and the shape of goods or their packaging. Accordingly, protectable signs include word marks, logos, colours, shapes and sound marks. While the definition is broad, non-traditional marks (eg, scents) are difficult to register because of the repre- sentation requirement. As regards unregistered trade marks, Article 6 of the IPL provides that, if, prior to the filing date or, where applicable, the priority date, a right has been acquired in an unregistered trade mark or another sign used in the course of trade, the trade mark application shall be refused upon opposition by the owner of that earlier sign. In other words, prior use may be relied upon in opposition proceedings under the IPL, and protection may also arise under the unfair competition provisions of the TCC. 2.2 Requirements for Trade Mark Protection It is required that the sign is capable of being repre- sented in the register in a manner which enables the subject matter of the protection afforded to the trade mark owner to be determined clearly and precisely. Accordingly, a trade mark must (i) be distinctive and (ii) consist of a sign. The distinctive function of a trade mark implies, on the one hand, differentiation from the goods and/or services for which it is registered or used, and, on the other, differentiation from the goods and/or services of other undertakings. Distinctiveness must be assessed by reference to the perception of the average consumer and in relation to the goods or services concerned. In this context, distinctiveness refers to the ability of goods and/or services placed on the market by different undertakings to be distin- guished from one another by consumers or users. Distinctiveness may be categorised as inherent (abstract) and acquired (concrete). Inherent distinc- tiveness concerns whether a sign is registrable as such, whereas acquired distinctiveness relates to the ability of the sign to distinguish the goods or services for which registration is sought from those of other undertakings.
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