Frequently Asked Questions:
DESIGN PATENTS

Revised January 2004

 GENERAL

 APPLICATION

 OPPOSITION

 LITIGATION

What is the legal basis for industrial design protection in Turkey?

Design applications can be filed according to the Decree-Law No. 554 entered into force as from June 27, 1995 and pertaining to the registration and the protection of industrial designs in Turkey.

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.

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)”.

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 which 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.

Who is entitled to obtain industrial design registration in Turkey?

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:

“Article 2 : The protection conferred by this law is available to the citizens of the Republic of Turkey or to natural and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Republic of Turkey, or to the persons entitled to file application under the provisions of the Paris or Bern Conventions or the Agreement Establishing World Trade Organisation.

Natural or legal persons other than those referred in the first paragraph of this Article, who are nationals of states which accord legal and de facto protection to the nationals of the Republic of Turkey shall enjoy, according to the reciprocity principle, design protection in Turkey.

Article 4 : Where the International Agreements having entered into force according to the Laws of the Republic of Turkey contain provisions which are preferential/more favourable to those of this present Decree-Law, the persons referred to in Article 2 may request to benefit from such preferential/more favourable provisions.”

Which products are covered under design protection?

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

• “Design” means the entirety of the various features such as line/drawing, form, shape, colour, texture, elasticity, material or other characteristics perceived by the human senses in appearance in whole or part of a product or its ornamentation;
• “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.

How long is the protection period for design patents?

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”.

What are the patentability criteria for designs?

To enjoy protection under this Decree-Law, the designs to be registered must be new (Article 6) and must have a Distinctive Character (Article 7). It is to be noted that, the term “Distinctive Character” (Art. 7) meaning in Turkish “Ayırd Edici nitelik” has been given in the English translation prepared by the T.P.I. as “Individual Character” which in Turkish means “Özgün Nitelik”.

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.

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 deemed 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.”

What are the conditions that do not destroy novelty?

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 preceding 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.

Is there an examination procedure for determining novelty and distinctive character?

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.

Can a multiple design application be filed?

There is 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.

When is the Certificate of Design Patent issued?

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 Certificate of Design Patent, as under the earlier practice, but shall notify in lieu thereof that the design has been registered. The Certificate of Design Patent shall issue, pursuant to Article 13 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.

Can the publication of a design registration be deferred?

The applicant may 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.

Should the designer be identified when filing a design application?

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”. This information must be given in the filing petition.

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.

What happens if the applicant of the claimed priority and the applicant in Turkey are not the same?

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.

Is a description of the design application required?

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). In multiple applications, a separate description is to be filed respectively for each one of the design(s) filed under the same (multiple) application.

The Regulation of December 31, 1997 provides that the description shall:

• a. specify the design by explaining in detail the visual representations filed to this effect and
• b. indicate, clearly, the differences between the design as filed and the designs available/known to the public and
• c. mention, clearly, the element(s) and feature(s), of the design, in respect of which protection is being claimed and
• d. 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 and

not describe the design with the terms “as in the visual representation” which shall remain categorically unaccepted.

What are the visual representation requirements when filing a design application?

According to Article 8 of Implementing Regulations, requirements pertaining to visual representations in a design application are as follows:

• - Visual representations should be submitted in a set of 10 specimens in 8 cm. x 8 cm. and can be prepared as drawing, picture, graphic, photograph or a similar way, but must clearly show all special characteristic of design and must be suitable to publish
• - For three dimensional designs, visual representations of, at least, the front view, side view and top view of the design are to be filed
• - 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.
• - 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.

Is a Power of Attorney required during filing?

Yes, a power of attorney is required during filing which 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).

Is there an extension of time for submitting the power of attorney?

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, i.e. power of attorney, 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.

What is the time period for submitting the priority document?

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).

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).

Is there an opposition period?

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.

How can a registered design be revoked?

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.

Which courts are competent for the institution of the actions concerning intellectual and industrial rights in Turkey?

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 set-up by the Ministry of Justice.

Both civil and criminal actions regarding Intellectual and Industrial property matters are handled by the “Civil Court of Intellectual and Industrial Property and Criminal Court of Intellectual and Industrial Property” established as specialized courts. Said courts are presently only established in Istanbul, Ankara and İzmir.

Currently for the jurisdictions other than Istanbul, Ankara and İzmir, 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 3rd Penal Court hears the penal actions for all Intellectual and Industrial Property matters whereas the civil actions are distributed amongst the Commercial Courts of the jurisdiction.

These Courts are competent also for all actions to be instituted versus T.P.I by third persons negatively affected or having suffered damage by the decisions of the T.P.I in any industrial property matter.