Existing legislation

Article 78 of Decree-Law 551 on Patents states that the holder of a patent cannot invoke patent registration in its defence in infringement actions against it that are based on other patents with an earlier priority date. Decree-Law 556 on Trademarks and Decree-Law 554 on Industrial Designs contain no such provision.

Proposed changes

Article 155 of the draft IP law states that the owner of a trademark, patent or industrial design right cannot invoke industrial registration rights as a defence against an infringement action filed by the rights holders of a prior right or prior application date.

Comment

Although Decree-Law 556 and Decree-Law 554 include no regulation regarding infringement claims, according to well-established case law, it was accepted that trademark and industrial design rights successfully registered with the Patent Institute constituted a legitimate defence against an infringement claim, unless the registration had been cancelled and removed from the registry. This case law caused preliminary and permanent injunction requests to be delayed or rejected until the cancellation of the infringer's trademark or design right. The only exception was a relatively recent Supreme Court decision which ruled that a registered industrial design right should not constitute a legitimate ground for defence if the registration has been filed in bad faith.

The draft IP law aims to codify a common provision by which registered trademarks, patents and industrial design registration rights do not constitute a legitimate defence against an infringement claim brought by the owner of an earlier IP right. The provision will require an intensive clearance search, even where a registration exists, before an IP right can be used.

For further information on this topic please contact Okan Çan at Deris IP Attorneys by telephone (+90 212 252 6122) or email (okan.can@deris.com). The Deris website can be accessed at www.deris.com.tr.

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