The Industrial Property Code 6769 (IP Code) grants protection through registration for designs that fulfil its novelty and individual character criteria. Under the IP code, the Patent and Trademark Office is entitled to carry out ex officio examinations of novelty in order to grant protection in this regard.

Practice under repealed Decree-Law 554

The repealed Decree-Law 554 on the Protection of Industrial Designs regulated protection conditions for novelty and individual character. However, it did not require an industrial design application to be ex officio examined for novelty and individual character at the application stage.

Prior to the IP Code's entry into force, the Patent and Trademark Office tended to publish industrial design applications which complied with the formal requirements for third-party oppositions without prior examination of protection conditions or the lack thereof. For this reason, the Patent and Trademark Office did not examine an industrial design's novelty unless a third-party opposition had been filed.

Practice under new IP Code

Article 56 of the IP Code (Novelty and individual character) states that a design shall be considered novel if no identical design has been made available to the public anywhere in the world before the application date. The IP Code also provides an exception to this rule in the form of a grace period, which allows for a design application to be filed in Turkey within 12 months from the design's first public disclosure.

Following the IP Code's entry into force, the Patent and Trademark Office can carry out ex officio novelty examinations on design applications (under Article 64 thereof). Article 64 provides that the Patent and Trademark Office has the authority and duty not to register ordinary designs which fail to meet the IP Code's protection conditions. In this context, Article 64/6-d of the code entitles the Patent and Trademark Office to refuse applications based on lack of novelty.

At present, the Patent and Trademark Office carries out a search to ensure the novelty of design applications. In the event that a design is found to fulfil the novelty criteria, the Patent and Trademark Office publishes the application for third-party oppositions. However, in the event that a design application is found to lack novelty, the Patent and Trademark Office issues a refusal decision with an accompanying search and examination report.

Patent and Trademark Office examiners use online image search features as well as the EU Intellectual Property Office Designview database, as the Patent and Trademark Office has no specific system for novelty research at present.

According to a recent Patent and Trademark Office decision following an ex officio novelty examination of a design application under the IP Code, the application was found to lack novelty as the subject design had been previously disclosed to the public via a YouTube video, as explained in the accompanying search and examination report attached to the refusal decision.

Comment

The Patent and Trademark Office's ex officio examination of the novelty of design applications under the IP Code is expected to reduce the amount of third-party oppositions and increase the quality of design registrations.

The reliability of examination and registration proceedings carried out by the Patent and Trademark Office will undoubtedly affect the number of filings and results of infringement and invalidity actions that it undertakes.

Although the Patent and Trademark Office decision examined above did not provide details of the search databases used in the novelty examination, internet search engines and social media platforms are considered during the novelty searches that it performs.

For further information on this topic please contact Emre Kerim Yardimci or Asli Tireli at Deris Patents and Trademarks Agency by telephone (+90 212 252 6122) or email (kerim.yardimci@deris.com or asli.tireli@deris.com). The Deris website can be accessed at www.deris.com.tr.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.