Emre Kerim Yardımcı Okan Çan January 16 2017 Protection of trademarks and geographical indications under new IP law Deriş Patents and Trademarks Agency | Intellectual Property - Turkey Emre Kerim Yardımcı, Okan Çan Intellectual Property TrademarksGeographical indications and traditional product namesParliament enacted the new IP Law on December 22 2016, which will enter into force once it has been approved by the president and published in the Official Gazette. The law is based on the draft IP law released for public consultation between February 24 and March 4 2016 (for further information please see "Trademarks: geographical indications, prosecution and enforcement") and will introduce some major changes regarding the protection of trademarks, patents, industrial designs and geographical indications.TrademarksColour, motion and sound marksColour and sound marks have been included in the definition of signs that may be trademarked. More importantly, the requirement of capability to be represented graphically and reproduced by printing is removed in view of existing electronic means, in order to pave the way for motion marks.Registered geographical indications as absolute grounds of refusalTrademark applications consisting solely of or comprising a registered geographical indication will be rejected on absolute grounds at the examination phase by the Patent Institute.Introduction of consent lettersThe new IP law introduces a letter of consent, by which the owner of an earlier trademark may consent to the registration and use of an identical or similar trademark filed for similar goods or services. A letter of consent should be notarised and submitted to the Patent Institute together with the trademark application or on refusal.Two-month opposition periodThe three-month opposition period has been shortened to two months and is still calculated as of the publication date of the application in the official Trademark Bulletin.Bad faith as explicit ground for opposition and invalidityBad faith is explicitly cited in the new IP law among the grounds for opposition. The Patent Institute and the courts already considered bad faith in opposition and invalidity actions; this practice and the law will become harmonised.Madrid Protocol trademark applicationsTrademark applications filed via the Madrid Protocol system that designate Turkey will be granted from the first hour and minute of the day on which they are received by the Patent Institute, thereby ahead of any national trademark filing on the same day.Counterclaims of non-use during oppositionThe new IP law enables the applicant of an opposition trademark to require evidence of the use of the trademark on which the opposition is based if the opposed trademark's five-year grace period for non-use has expired. The examination of the opposition will be limited to goods and services for which use has been proven by the opponent. Failure of the opponent to prove use will result in rejection of the opposition.Mediation during opposition proceedingsIn an effort to encourage mediation, the Patent Institute will be entitled to invite parties to settle oppositions through mediation as per the Mediation Law.Cancellation by Patent InstituteThe Patent Institute will implement administrative cancellation proceedings within seven years of the IP law's entry into force. These proceedings will include cancellation of a registered trademark on the grounds of:non-use;becoming generic (as regards the products or services for which the trademark is used);deceiving the public (as to the characteristics, quality or geographical source); anduse of a guaranteed trademark contrary to technical regulations.Fair-use clause broadenedThe 'fair-use' definition has been broadened, whereby the proprietor will be unable to prohibit a third party from using a trademark in the course of trade for the purpose of identifying or referring to goods or services where the use of that trademark is required to indicate the intended purpose of a product or service – in particular, as accessories or spare or equivalent parts.Renewal of trademarks for limited classes or goodsThe IP law foresees the possibility of the renewal of a trademark for limited classes or a listing of goods or services. The provisions will be determined in the implementing regulations; nonetheless, a simplified procedure where the trademark owner will opt for the classes and or goods or services to be renewed is expected. At present, there is only one option: the submission of an independent request for limitation of the trademark before the renewal.Extension of trademark infringement actsUnlike the existing trademark law, the new IP law specifically provides that the use of a trademark as an essential part of a company or establishment name or its illegal use in comparative advertisements can be prohibited.Counterclaims of non-use by defendant in cancellation and infringement actionsThe new IP law states that, during the examination of a cancellation action instituted on the basis of the risk of confusion between trademarks, the non-use of the trademark on which the cancellation action is based can be asserted as a counterclaim by the defendant. The law also states that a non-use counterclaim can be put forward in trademark infringement actions by the defendant.Invalidity and cancellationThe previous decree-law referred only to the grounds of invalidity with retroactive effect, whereas the established jurisprudence makes a distinction between cancellation and invalidity. In line with existing practice, the new IP law sets the absolute and relative grounds of rejection of a trademark as grounds of invalidity, while grounds such as genericness, deceptiveness, failure to use guarantee or collective marks according to the technical regulations and non-use are grounds for cancellation.AcquiescenceThe new IP law clearly states that where a trademark owner has known or should have known of the use of an infringing trademark, but did not act against such use for more than five uninterrupted years, the trademark owner will be unable to claim the cancellation of the infringing trademark on the grounds of its prior trademark registration, unless a third party has acted in bad faith.Simplified destruction for trademark infringementsIn case the number, size and type of products subject to a crime cannot be stored, the court can order the destruction of counterfeit goods at the stage of indictment once the public prosecutor has secured the necessary samples. The provision will be applicable only for trademark counterfeiting.International exhaustion of rightsThe new IP law introduces the international exhaustion of rights principle to replace the existing national exhaustion principle.Registered IP rights no longer valid defence against infringement claimsIt was previously accepted that trademark and industrial design rights which had been successfully registered with the Patent Institute constituted a legitimate right against an infringement claim, unless the registered right had been cancelled and removed from the registry. Such case law caused preliminary and permanent injunction requests to be delayed or rejected until cancellation of the infringer's trademark or design right. The new IP law will 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 the earlier IP right. The provision will evidently require an intensive clearance search before an IP right can be used.Criminal provisionWhile the IP law introduces criminal provisions for trademark infringements, there are no criminal provisions concerning patent, industrial design and geographical indication infringements.The new law regulates criminal offences concerning trademarks. Producing goods or providing sale, import or export services for commercial purposes that infringe registered trademark rights will result in a prison term of between one and three years and pecuniary fines.Geographical indications and traditional product namesTraditional product namesTraditional product names are included in the definition of 'IP rights'. A 'traditional product name' is defined as a product proven to have been used on the respective market for at least 30 years and which is manufactured using traditional raw materials or via traditional production methods.Audit of geographical indication and traditional product namesThe audit term for the use, manufacture and sale of geographical indications and traditional product names will be effected annually from their date of registration in the Trademark Bulletin.The use of an emblem, to be created by the Patent Institute, is required on the product or its packaging, particularly with respect to geographical indications.For further information on this topic please contact Kerim Yardimci or Okan Çan at Deriş Patents and Trademarks Agency by telephone (+90 212 252 6122) or email ([email protected] or [email protected]). The Deriş website can be accessed at www.deris.com.tr.