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PATENT AND TRADEMARK PROCEDURES İN TURKEY

THE ROLE AND IMPORTANCE OF INDUSTRIAL PROPERTY RIGHTS

When it comes to industrial and commercial activities, a wide field from production of goods and services to accession of produced goods and services to consumers comes to mind.

In order to build healthy relations between sectors including consumers who have a part in industrial and commercial activities, in other words, for industrial and commercial activities to be carried out properly according to international technical and legal rules, knowing the industrial property rights well and respecting these rights is rather important.

Today, respect for industrial property rights is not only a conscientious obligation but also a non-negligible obligation which is established with both national and international legal rules. Unauthorized production of a product by people other than the ones having industrial property rights is called “imitation” of a product. Using this unauthorized way (imitation) is a crime. When an entrepreneur violates industrial property rights of any other entrepreneur he/she can face severe punishments such as closure of his/her workplace. Every person who takes place in commercial activities, should know and notify the origin of the goods he/she possesses. Because people who sell and distribute the imitated product and help ease these activities are as responsible as the people who produce them.

The point of these regulations conditioning respect for industrial property rights is not to punish the entrepreneurs but to protect them against unfair competition, briefly, to provide them retributions for their efforts and to encourage them. Today, the thing that places Coca-Cola, Microsoft and IBM among the biggest trademarks in the world is that they have been protecting the right of manufacturing and selling their products nimbly from the beginning. International corporations, which work on computer technologies, such as Microsoft and IBM are at war against unlicensed use, in other words, imitation. The ones that copy these products unlicensed and use them unauthorized are punished severely.

Entrepreneurs can have the industrial property rights with the products such as invention, mark, design, etc. produced with their own effort; it is possible to transfer these rights. Industrial property rights can be transferred to someone else, can be licensed and change hands by means of legal procedures such as inheritance and transition. In other words, industrial property rights are not limited to application owners but it can be transferred to heirs.

Regardless of how they have been obtained, industrial property rights reform capital in a kind of businesses and gain value as operated. Today there are international systems providing protection and guarantee to these rights all over the world and at the same time in Turkey which consists part of almost all these systems.

It is not a must for these rights to be managed (used) by the owner. These rights can carry interest for the owner by means of being transferred to another entrepreneur and being used by license. In more clear way, after an entrepreneur possesses the right of any product or innovation, he/she does not have to use or produce them in order to gain interest from them.

Today, the system called ‘franchising’ works similar to licensing procedure. This system consists of purchasing the right of using a specific method of production and selling.

Well then why do entrepreneurs want to take over someone else’s rights by licensing or transferring them instead of doing business on their field of which prosperity rights are registered in their name? There may be more than one reason for this. However, one of the most encountered reasons is that sometimes it is risky to get into the market with a new system or product. Entrepreneurs do not want to take such a risk. In such cases, under the support and guarantee of a product/mark which proved itself valuable, they may establish a commercial relation relevant to the distribution of goods and services with the owner of the above mentioned mark or company against certain remuneration.

Today, world’s leading companies gain profit from the sales of rights of patent, mark and design, in other words, right transfer. Fast food chains such as McDonald’s, Burger King; computer leaders such as Microsoft and IBM; textile companies such as Levi’s, LC Waikiki, Zara and Kanz are the first ones that come to mind on this subject. For example; After LC Waikiki, which is of French origin, signer a manufacturing contract for a period, a Turkish company purchased all of the rights of the mark, including royalty.

Industrial property right is not a new subject in our country. It has a long history even though it came up to the fore in the period of Turkey’s relations with European Union and during globalization of the economy. Industrial property rights are gathered into 5 titles. In the Paris Convention Pertaining the Protection of Industrial Property Rights, in which Turkey is a party, titles are as follow;

Patent and utilization models;

Trademarks and service marks;

Geographical signs;

Industrial designs;

Integrated circuit topographies.

WHAT IS TRADEMARK? WHY IS TRADEMARK REGISTRATION IMPORTANT?

Every sign that helps distinguishing goods and services of one factory from another is called trademark. In today’s world, in which advertisement and promotion services are widespread, the importance of trademark is well-known by almost everyone. Thus, an entrepreneur is interested in how to obtain a trademark in Turkey and abroad, not on what this trademark will look like. Trademark right is considered to be originated when a sign is made known in the market by using it continuously for goods or services.

Today, many of the world’s leading brands have become to be known just for their distinguishing signs without the need of the corporate name of the firm. Nike’s curved line, Adidas’ three leaves or three inclined strips, Mercedes’ star, Peugeot’s prancing lion have all and each of them distinctive characters that remind the brand. So when we encounter these signs in different styles we do not have difficulties in recognizing them. In our country, these are Dalin’s chicks, Sabancı’s two circles, etc.

A business is considered the owner of a trademark by default by using it for years even if it is not registered before. It is like a business name that becomes a trademark after using it continuously.

If a business is the owner of a trademark by default by using it for years why does it need to have a trademark registration certificate? Either existing by default or will be acquired later, a trademark registration is needed for proof. Trademark registration certificate is always useful for such cases. However, it is only valid in the country it is registered. So registering the trademark is important for fighting against pirate productions and imitations.

For entrepreneurs not to face someone else’s vested trademark right and be exposed to harm of it, they have to register their trademark before launching it to the market under a brand name or undertake its export.

Trademark registration certificate is given in the case when no coincidence happens after the application or no obstacles are seen for the registration. The duration of the trademark registration is 10 years. Provision of the registration continues only if it is renewed every 10 years.

A registered trademark or trademark that is applied to in Turkey is possible to be registered in other countries and the opposite of this is possible too.

HOW IS TRADEMARK REGISTRATION APPLICATION MADE AND WHY IS IT IMPORTANT?

In Turkey, trademark registration application is made in Turkish Patent Institute.

After the application, if there is nothing wrong with procedural review, a research is made relating whether there are any obstacles against the trademark or registration.

If there are no obstacles, the announcement is published and presented to the public.

In the event of no objections to this announcement it is decided to register the trademark.

In the case of any objections, rightfulness of the objection is investigated and if accepted, the registration application is declined.

As understood from these steps, trademark registration certificate is a document preventing trademark conflicts that may appear when the good is being launched in the marketplace. Conflicts regarding this certificate are to be solved by specialized courts.

WHAT ARE THE CONDITIONS FOR TRADEMARK REGISTRATION?

A registrable trademark should be distinctive for all intends and purposes. This phenomenon can only be fully explained by the expression “alametifarika” that was used until 1960s in Ottoman Empire and can be named as “distinctness signs”. Shortly, alametifarika of something is brand of that thing.

With reference to this criterion, we organized the qualifications of a registrable trademark. Good or service applied for trademark registration;

WAYS OF UNDERSTANDING AND REMOVING TRADEMARK INFRINGEMENT

We need to know the content of our trademark registration certificate to figure whether an act infringes our registered trademark or not. The content of the trademark registration certificate is not made up only of the goods and services on the certificate’s front and back face. Features such as the creation style of goods and services list, the fame of the trademark in  the market, the trademark’s correspondence to the firm, etc. are factors that specify the content of the trademark registration certificate.

WHAT IS A WELL-KNOWN MARK?

A registered mark may be used properly and non-stop for years and as a result of this proper use, it may be the first mark to come to mind reflectively in the market. Marks that reached this position are called “well-known marks”.

A mark may only be known within its sector. These marks are called “known marks”.

WHAT IS A WELL-KNOWN MARK? WHAT ARE THE CRITERIA FOR IT?

Even though there is a definition of a well-known mark in the Paris Convention and other conventions involving industrial property rights, there is not a precise definition for this concept. International legislation avoids to give a well-known mark definition in order not to impose strict rules, because the conditions under which a mark is being perceived can change. For this reason, recognition of a mark is not measured by its definition but based on how many criteria it can meet.

WHAT ARE THE RIGHTS PROVIDED FROM TRADEMARK REGISTRATION?

We have explained that trademark registration is important because it acts as a proof document. So, what are the rights that this proof document provides to its owner?

STATUS OF MARKS TO OTHER PROTECTED SHAPES AND SIGNS

Conflicts appearing in the cases when a trademark is used along with other shapes or designs are solved usually by courts. It is possible to mention some of the general rules that clarify the subject although this is a matter of lawyers. Some of the rules are as follow;

LEGISLATIVE REGULATIONS REGARDING CONFLICT OVER TRADEMARK AND PATENT

Industrial property rights are under protection since 1800s in Europe and Turkey. Thus, a lot of studies and legislative regulations have been made on the subject.

It is useful to organize the laws in force on industrial property in Turkey for entrepreneurs to consult them when needed. Even if it is necessary to receive help from a professional or a legal expert on this subject, knowing the legislative regulations on the subject will help following the process.

WHAT IS ILLEGAL USE OF REGISTERED MARK AND WHICH ARE THE RESULTS OF IT?

A mark is cancelled in the case that it has not been used without any justification within 5 years from the registration date or if the use of the mark is discontinued for 5 years. However, cancellation does not happen by itself; it happens when it is demanded from the court by the people harmed by this situation.

Illegal use of the mark is a crime subjected to severe punishments. The situations listed below include illegal use of the mark ;

Identification notice that must be notified, made contrary to facts by the owner of the mark right;

Removing a sign, which has mark protection, from the good or package;

Introducing yourself as a mark owner without authorization;

Using signs that make the impression that you have a mark protected by law even if you do not.

WHAT IS A PATENT? HOW IS A PATENT APPLICATION MADE?

The shortest definition of a patent is an invention certificate. Patent is a certificate given for the new inventions that use an innovative technique and that can be applied to industry. A Patent takes the mentioned rights under preservation. The subjects that cannot be considered as inventions and thus cannot be given patent are indicated in the regulations on industrial properties. According to this, subjects that cannot be given patent as they are not inventions are as follow;

Discoveries, scientific theories, mathematics methods;

Plans, methods and rules related to psychical activities, commercial activities and plays;

Literary and artistic works, treatises and creations having aesthetical properties;

Methods, which have no technical aspects, related to resilience, regulation, presentation and transmission of information and computer software.

WHAT ARE THE PROCEDURES TO GET A PATENT? WHERE THE APPLICATION SHOULD BE MADE?

In order to get a patent certificate, the application should be made with accorance to the international standards. As every patent is valid within the country where it is registered, application should be made considering this feature in particular.

While a patent that is valid only in Turkey can be gotten with an application, by managing mechanisms produced with international conventions, with the same application or a separate or a mutual one or before 12 months, it is possible to get a patent everywhere in the world. However, as there are final terms in the procedure, strategies to be applied should be determined as well.

VALIDITY TIME FOR A PATENT CERTIFICATE AND CONDITIONS FOR IT

In order for a patent certificate to continue being valid :

It is a must to pay the re-registration fee regularly each year onwards from the application date;

It is a must to carry it into effect within 3 years onwards from the publication of the deliverance decision.

However, if the re-registration fee is not paid in time it is possible that the patent right is steel provided and that the unpaid re-registration fee will be paid along with an “additional charge” upon a “notification of force majeure”. In the case that the certificate is not carried into effect within 3 years onwards from the publication of the deliverance decision, the license can become effective through a license offer.

It is beneficial and crucial to clarify the management of the patent interests by the entrepreneurs. One of the purposes of giving a patent certificate is to reward the owner for the invention; another one is to create a possibility to present it to public use.

IN WHICH CASES A PATENT CERTIFICATE BECOMES INOPERATIVE?

In some cases, the court may decide the inoperativeness of a patent certificate. These cases are as follow:

It should be proved that;

The invention belongs to the subjects that are not to be given patent;

The invention is not defined clearly and it should be precised so that it is possible for a professional on technical area to carry it into effect;

The invention is out of the scope of patent application;

The owner of the patent does not have the right to demand a patent certificate.

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THINGS YOU NEED TO KNOW IN CASE OF COPYING OR IMITATING A PATENTED PRODUCT

Patent certificates protect the rights of the owner of an invention. A little explanation on how these rights are protected may be necessary. In regulations on patent rights, aspects harming the patent owner called infringement acts are determined in a detailed way. These situations as follow;

Unauthorized imitation of the product relating to invention by producing it partly or wholly;

Selling and distributing these products due to knowing that they are produced by partly or wholly imitation;

Launching the products to trade bloc in a different way;

Importing the products for this aim;

Having them for commercial purposes;

Using them by means of applying them;

Unauthorized utilization of the methods relating to invention or launching the products obtained directly from invention methods relating to invention;

Extending the limits of the license taken unauthorized from the owner, unauthorized transfer of this license to a third person;

Participating, helping, encouraging and easing these acts;

Avoiding to notifying how and where you get the imitated products you have.

THINGS YOU NEED TO KNOW BEFORE APPLYING FOR DESIGN REGISTRATION

The process followed by the Turkish Patent Institute relating to industrial design registration application is composed of;

Formal examination;

Registry to the record;

Publication;

Objections;

Documentation stages.

Whether the required documents for the application are presented or not, if presented, convenience of the documents is controlled in the formal examination. In the case when any deficiency is detected a notification is made to the relevant person to eliminate it.

In the stage of registry to the record, industrial design registration application that has no deficiency or removed its deficiency is registered to industrial design record after the formal examination.

In the publication stage, applications registered to the record are announced on the Official Industrial Design Registration Bulletin for 6 months.

Objection can be made on the grounds that the design does not have the innovation and distinctive characteristics or there is an ownership of right by presenting objection petition within 6 months of the announcement date. Decision relating to the objected design is made in the light of reasons and presented documents.

Documentation stage is not having any objections relating to registration of the application within the 6 months objection period or preparing design registration certificate after the rejection of the objections.

With the right of registration obtained as a result of these stages designs can be protected effectively. Protection term of the registered designs is 5 years from application date. This term can be extended to 25 years by renewing it every 5 years.

HOW TO GET A UTILITY MODEL CERTIFICATE?

Invention can be protected by utility model certificate as well as patent. Most of the provisions on patent rights are valid for utility models. In other words, there is no difference between the two with regard to the protection of the right. The only difference between them is the method in registration procedures and the protection period. However, utility model certificate does not exist in every country.

Utility model certificate came into force in 1995 in our country to encourage small scale industrialists and individual invention studies.

For an invention to be registered for utility model certificate there is no stipulation of “exceeding the known status of the technique”. To express it more clearly, while an invention relating to utility model certificate could be shown up during research and development study, it could be an idea that solves a technical problem practically and applicable to industry. In general, invention relating to utility model certificate makes a present product more functional. For example; grappling iron that makes locks safer could be a good utility model. A multi grappling iron system that is designed to make locks safer could be a good utility model, too.

WHAT IS A GEOGRAPHICAL INDICATION? HOW IS A GEOGRAPHICAL INDICATION REGISTERED?

A geographical indication is a name or sign that show the geographical roots of a good or provide trust and request for a good by referring to an area, region or country due to factor, matter, motive, material or method that shows the geographical roots of a good. In other words, a geographical region (country, city, etc.) may be important criteria for the quality of a good. There are some geographical regions or cities that are famous for their goods.

There are certain goods correspond to their geographical regions around the world, too. These goods are produced by the very original methods of the region they correspond to starting with the raw material. The thing that makes these goods different is their production method. For example; Isparta rose oil can only be made from Isparta rose. It is not possible to produce this oil from another kind of rose. Another example is Hereke’s silk rugs. They are weaved from the threads dyed with special madder. The thing that makes rugs special is not only their weaving style but also the materials used. In fact, the patterns used for rugs differ from region to region. For these characteristics, law foresees the necessity of the protection of these geographical signs as well as patent and trademark.

Registration for Geographical Indications

Registration for geographical indications is made for the protection of the quality of geographical indications relating to goods and making production at a certain standard. Registration for geographical indications is such as to support regional production because related good is protected by the manufacturers in that region. While a trademark belongs to a person or an establishment, a geographical indication cannot belong to a person or an establishment because it identifies a geographical region. Every person or establishment that is located in the geographical region and produces the good identified by relating geographical indication has the right to use the said geographical indication. For this reason, application of registration for geographical indication is made by natural or legal person that is a manufacturer of the said good, chambers of commerce and industry, producer associations and other related public enterprises. Thus, those who make production in the region that has geographical indication benefit from the protection provided by the registration.

HOW IS THE REGISTRATION OF INDUSTRIAL DESIGNS MADE?

General meaning of design is characteristics perceived on an entire product or part of it by human sensations. While these characteristics can be a decoration, a different line, figure or shape, it can be color, fiber, material or elasticity. The product that design is applied can be an object, combined system or parts of this system, sets, etc.

If a design carrying this definition is innovator and has distinguishing qualifications, it can be protected for five 5 year-periods (25 years in total) by being registered by the designer or people/businesses that this designer authorizes. Registration of design, as in other industrial property rights, can be made and protection can be provided in foreign countries conveniently for procedures regulated by international agreements. As long as other applications in other countries are made within 6 months of the first application, the designer can benefit from the right of priority.

REGISTRATION FOR INTEGRATED CIRCUIT TOPOGRAPHY

Protection of Registration for Integrated Circuit Topography Act came into force later than the one relating to trademark and patent. “Protection of Registration for Integrated Circuit Topography Act”, mattering especially for electricity, electronic and machine sectors, came into force in 2004, in Turkey. Before mentioning the rights given by the act, let’s look at the definition of the conceptions “integrated circuit” and “integrated circuit topography”.

Integrated circuit is an intermediate formed or final formed output designed to carry out an electronic procedure. It has at least an active element and the entire intermediate couplings or a part of it is gathered in/or a piece.

Ata Kurumsal

Ata Institutional Consulting is a leading consultancy company in its field, with expert personnel, with 12 years of experience, providing residence permit, work permit, Turkish citizenship consultancy and corporate consultancy services to foreigners. Ata Instiutional Consultancy

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