Turkey: The Registration Of Industrial Designs

The new Decree-Law No. 554 pertaining to "the Protection of Industrial Designs", modeled after the white paper on the European Community Directive Proposal on the Legal Protection of Designs, permits the registration of same in this country. It is to be noted that, the English translation of this Decree-Law as prepared by the Turkish Patent Institute (T.P.I.) seems to show same discrepancy with the wording of the Turkish text of the Decree-Law.

In this regard, please note that prior to June 27, 1995, the registration of industrial designs was not possible for lack of specific law concerning the industrial designs.

Industrial Designs not registered in Turkey will continue to benefit from the protection of the general unfair competition provisions of the Turkish Code of Commerce according to Article 1, paragraph 2 of the Decree-Law No. 554 which in its paragraph 3 further provides that: "The rights conferred by this law does not in any way invalidate the protection conferred by Law (No. 5846) on the Works of Art and Intellect (as amended with Law No. 4110 of June 7, 1995)".

As part of the harmonization effort which Turkey has undertaken to carry out with a view to full Customs Union with the European Community as from January 1, 1996, the practice in this country is bound to change drastically following the enactment as from June 27, 1995 of a series of Decree-Laws replacing the earlier Patent Act and Trademarks Act No. 551 and bringing new legislation in areas where no particular act existed earlier, namely for the protection of Industrial Designs and Models and Geographical Indications/signs.

The respective Implementing Regulations for these Decree-Laws came into force on November 05, 1995 following their publication in the Official Journal of same date.

The main Regulation dated November 05, 1995 pertaining to Industrial Designs has been amended on a number of points with a further Regulation which came into force on December 31, 1997 following the publication in the Official Journal No. 23217 on the same date.

The following persons are entitled to protection and thereby qualified to obtain registration of their industrial designs in Turkey according to Articles 2 and 4 of the Decree-Law No. 554 reading as follows:

According to the definitions retained in Article 3, paragraphs (a) and (b) of the Decree-Law No. 554:

1. "Design" means the entirety of the various features such as lines, colour, texture, shape, sound, elasticity, material or other characteristics perceived by the human senses in appearance in whole or part of a product or its ornamentation;
2. "Product" means any industrial or handicraft item, parts of a complex system, sets, compositions of items, packaging, get-ups, graphic symbols and typographic typefaces, excluding the computer programmes and semi-conductor products".

As part of the definition retained in Article 3, paragraph (b) "typographic typefaces" shall be registrable and enjoy protection according to the Decree-Law No. 554 whereas excluded from such protection are chip topographies and computer programs.

According to Article 12 "the term of protection of the registered design is five years from the date of filing of the application" and "is renewable for periods of five years each up to a total term of 25 years".

For a better understanding of the terms and Scope of Protection we are sending in the enclosure the English translation of Articles 5 to 11 of the Decree-Law No. 554 as received from the T.P.I.

Pursuant to Article 6, paragraph 1 of the Decree-Law No. 554 for design protection, purposes the criterion of "absolute novelty" prevails; whether in respect of "novelty" or in respect of "distinctive character", in that the concerned design shall be deemed to be "new" if no identical design has been made available to the public anywhere in the world prior to the date of filing in Turkey or to the date of priority claimed, if any. In the sense of Article 6, paragraph 1 "designs differing only immaterial details shall be demand to be identical".

The paragraph 2 of Article 6 further rules that :

• "to make available to the public shall cover all such actions sale, offer for sale use, description, publication, promotion/publicity, exhibition, demonstration and activities for similar purposes."
• "disclosures, of confidential nature, made to third parties shall not be considered as being made available to the public."

According to Article 8, disclosures made available to the public with the consent of the designer or his successor(s) in title or by third parties in abuse of their relation with the designer or his successor(s) in title, within 12 months preceeding the date of filing in Turkey or the date of priority claimed, if any, shall not be deemed to be destructive of the "novelty" and of the "distinctive character" of the concerned industrial design.

Article 7, paragraph 3 rules that for determining, as of their entirety, the similarity between the concerned designs, their common characteristics shall be taken into consideration in lieu of their differences, with a view to assess the liberty of choice at the disposition of the designer in developing the design in question.

The T.P.I. does not carry out an examination in respect of the criterion of "novelty" and "distinctive character" prior to the registration of the design patent. The design application is examined by the T.P.I. prior to its registration and publication for opposition purposes in consideration of the provisions of Articles 3, 26 and 28. Therefore, this examination, concerns basically the formal aspects/elements of the application. Following the formal examination, the T.P.I. under the earlier practice in effect until December 31, 1997 registered the design, issued the design patent, and thereafter published it for opposition purposes in the Official Industrial Designs Bulletin. With the coming into force of the Implementing Regulation dated December 31, 1997 this practice has been modified in that following the registration of the design, the Turkish Patent Institute shall not issue the the Certificate of Design Patent, as under the earlier practice, but shall notify in lieu thereof that the design has been registered. The Cetrificate of Design Patent shall issue, pursuant to Article 3 of the Regulation of December 31, 1997, after the expiry of the opposition period of 6 months, provided no opposition is lodged within this time-period. Where an opposition is lodged, the Certificate of Design Patent shall issue or the design registration shall be, partially or totally, cancelled, depending on the decision to be rendered by the Higher Council of Examination and Evaluation" of the Turkish Patent Institute in consideration of the opposition lodged. Under the practice effective as from January 1, 1998 the particulars of the design registration shall be published, as under the earlier practice, for opposition purposes in the Official Industrial Designs Bulletin. The application filed shall remain confidential until the publication of the design registration in the Official Bulletin, for opposition purposes.

The opposition as provided in Article 37 of the Decree-Law is a post-registration opposition (and not a pre-registration one) in that, opposition may be lodged against a registered design within 6 months following the publication of same in the Official Industrial Designs Bulletin. In consideration of the opposition lodged, T.P.I. may decide to maintain or to invalidate the design registration, whether totally or partially, pursuant to Article 38, paragraph 3, provided that the opposition is lodged on the basis of the points (a) and (b) of the Article 43. On this occasion, it is to be noted that the translations of Articles 37 and 38 as prepared by the T.P.I. do not seem to reflect fully the text of said articles in Turkish.

As the design patent is registered and issues without a prior examination in respect of novelty, and "distinctive character", if no opposition is timely lodged within 6 months from the publication in the Official Industrial Design Bulletin, the cancellation of the design patent on ground of lack of "novelty" and/or "distinctive character" can be obtained only upon a court decision following the cancellation action instituted to this effect.

According to Article 58, paragraphs 1 and 3, in all court actions (to be) instituted in accordance of the Decree-Law No. 554 and against all decisions of the T.P.I. in implementing the provisions of the Decree-Law No. 554, the competent courts shall be the specialized courts to be established by the Ministry of Justice.

According to the paragraph 2 of Article 58 and Transitional Article 1; until the establishments of such specialized courts by the Ministry of Justice; the Supreme Council of Judges and Prosecutors shall determine from amongst the Commercial and Criminal Courts of First Instance those which will function as specialized courts.

At the moment, for the jurisdictions other than Istanbul, in the jurisdictions having more than one penal and/or commercial court, according to the decision of the Supreme Council of Judges and Prosecutors, the 3^rd Penal Court hears the penal actions for all Industrial Property matters whereas the civil actions are distributed amongst the Commercial Courts of the jurisdiction.

As far as the Istanbul area is concerned, with the Decision No. 59 dated January 25, 2001 -published in the Official Journal of February 01, 2001 / No. 24305- of the Supreme Council of Judges and Prosecutors the specialized "Istanbul Court for Intellectual and Industrial Property Rights" has been set up in the city of Istanbul which will be competent in all Industrial and Intellectual Property matters.

One important feature is the possibility given to the applicant to request in the filing petition the deferment of publication for a period not exceeding 30 months from the date of priority/filing of the application pursuant to Article 35 of the Decree-Law. As the request for deferment of publication up to a period of 30 months must be mentioned in the filing petition, specific instructions pertaining to the deferment or not of publication, need to be given prior to the filing of the application.

Another feature of the Decree-Law, consists in the possibility of filing multiple applications according to Article 28. This information must be given in the filing petition. According to Article 8, parag. (f) of the Regulation, in case of multiple applications it is necessary to file a description for each of the designs filed under the same application.

Another point that needs to be addressed is that as indicated on Article 26, paragraph 5, of the Decree-Law No. 554, "The identity of the designer shall be cited in the application. If the applicant is not the designer or not the sole designer, a declaration shall be made in the application as to the grounds/means whereby the right to apply for design patent is obtained".

As this information must also be given in the filing petition, the filing instructions should therefore include information as to the (legal instrument/means according to which the applicant company has obtained from the designer, the right to apply for a design patent.

According to the Decree-Law No. 554 and the resulting current Administrative practice, this information pertaining to the (legal) relation between the designer(s) and the applicant as to the ownership of the design and to the right to apply for a design patent, is to be supplied on a declaratory basis. At present, no documentary evidence is required, to be submitted in support of the declaration (to be) made in this regard.

When the applicant of the claimed priority and the applicant in Turkey are not the same, a declaration must be filed simultaneously with the application as to the (legal) instrument/means according to which the applicant in Turkey has obtained the right to apply for a design patent, the date when such right to apply is obtained and the name of the parties involved.

As the International Classification for Industrial Designs must be indicated in the filing petition, it would be appropriate to quote in your filing instructions the international class(es) according to the Locarno Agreement.

A written description of the design is to be filed with the application as required by Article 26, paragraph 2, of the Decree-Law No. 554.

The length of the description having not been determined whether in the Decree-Law or in the Regulations, the description should preferably be rather concise and may consist of a few paragraphs, obviously depending on the features and complexity of the concerned design(s).

The Regulation of December 31, 1997 provides that :

• for three dimensional designs, visual representations of, at least, the front view, side view and top view of the design are to be filed (Article 1 (a) parag. 3). These visual representations may be in the form of drawings/photographs embodying the design.
• a description is to be filed respectively, for each one of, at least, three visual representations embodying the design (Article 1 (e) parag. 1-first sentence).
• in multiple applications, a set of, at least three visual representations must be filed for each one of the design(s) filed under the same (multiple) application. In multiple applications, a separate description is to be filed respectively for each one of the visual representations filed for each one of the design(s) filed under the same (multiple) application (Article 1 (f)).

The description shall :

1. specify the design by explaining in detail the visual representations filed to this effect, and
2. indicate, clearly, the differences between the design as filed and the designs available/known to the public and
3. mention, clearly, the element(s) and feature(s), of the design, in respect of which protection is being claimed.and
4. declare the date when, the design is made available to the public by exhibition, distribution for marketing and sales purposes, use, description, publication, promotion or by activities having similar purposes. (Article 1 (e) parag. 1. last sentence) where the visual representation of the design contain element/feature(s) pertaining to trade marks, such element/feature(s) shall be accepted subject to bringing evidence in that the trade mark is registered in the name of the applicant. In the negative such element/feature(s) are to be excluded from the visual representation filed with the design application. Where the visual representation of the design consists in its entirety of element/feature(s) pertaining to trademarks they shall not be accepted as visual representation. (Article 1.(a), parag. 2.)
5. not describe the design with the terms "as in the visual representation" which shall remain categorically unaccepted: (Article 1 (e) paragr. 2 last sentence)

The date of presentation to the public (in Turkey or throughout world) of the products embodying the design is or upon which the design is applied.

According to the application form prepared by the administration 10 examples in (8 cm. x 8 cm.) of each one of the drawings/photographs embodying the design, in such a form so as to permit the publication thereof must be separately enclosed to the filing petition.

To this effect it would be approriate to enclose to your filing instructions a set of, at least, 20 specimens in (8 cm. x 8 cm.) of each one of the drawings/photographs embodying the design, separately.

As To The Power Of Attorney.

The Power of Attorney does not need to be notarial or otherwise legalized for filing the application. However, the withdrawal of the application or the voluntary cancellation of a desing registration necessitates the filing of a notarial legalized Power of Attorney. (Article 8, parag. (c) of the Regulation).

In addition to the Power of Attorney, according to Article 8, parag. (d) of the Regulation, for the body corporates applying for a design patent it is necessary to file together with the Power of Attorney a "signature circular" which is to be notarial legalized. This "signature circular" is nothing, but an internal document issued by the body corporate citing and giving the names and signatures of the officers of the body corporate authorized/empowered to engage the concerned body corporate and thereby to act and execute documents in the name and on behalf thereof. With this document, the T.P.I. aims apparently to check that the persons having executed the Power of Attorney for the applicant company are duly empowered by said company to act and execute documents on behalf of same.

However, from the talks held with administrative officials, it appears that the signature circular will not be additionally requested in case where the power of attorney is notarial legalized in such a way that the legalization clearly attests the capacity of the person who has executed same to represent the concerned legal person/body corporate and to act and execute documents in its name and on its behalf.

As To The Priority Document -Certified Copy Of The Claimed Priority Application(s)

According to Article 31, parag. 2 of the Decree-Law No. 554 and Article 27 of the Regulation of November 05, 1995 "the priority shall be deemed not to have been claimed, if the priority document (attesting same) is not submitted within three months as from the date of filing of the application (in Turkey).

Pursuant to the Regulation of December 31, 1997 (Article 2 amending Article 12 of Regulation of November 5, 1995. This time-period can be extended for an additional period of one mounth.

In case the certified copy of the claimed priority is not filed before the T.P.I. by this deadline, the application is further prosecuted as a non-convention application, without the benefit of the claimed priority(ies).

According to Article 33 of the Decree-Law and Article 12 of the Regulation, of November 05, 1995, other documents in support of the application can be filed subsequently within three (3) months from the notification of the T.P.I. to this effect. Pursuant to the Regulation of December 31, 1997 (Article 2, amending Article 12 of the Regulation of November 05, 1995) this time-period can be extended for an additional period of one month. Failure to submit within this time-limit the outstanding supporting documents to the T.P.I. will cause the annulment of the design application.