Turkey adopts a post-registration opposition mechanism for design applications. In Turkey, there are two possibilities for invalidating registered designs.
The first possibility is to file an opposition to the registered design within 3 months from the date of publication in the Official Design Bulletin (“Bulletin”). Once the opposition is accepted by the Turkish Patent and Trademark Office (the “Office”), the design is removed from the Design Registry and invalidated.
Another possibility is to file an invalidation action before the specialized IP Courts, i.e., the Civil Court of Intellectual and Industrial Property Rights (“Court”). Even if the right holders do not oppose to the registered design before the Office within the 3-month period, they may file an invalidation action for the registered design to be removed from the Design Registry.
In this article, we will be explaining the general issues concerning the invalidation of the registered design in Turkey.
Grounds for Opposition and Invalidation
In both the 3-month opposition period and invalidation action, the opponent can rely on one or more grounds to prove that the respective design should be invalidated.
The grounds for opposition and invalidation of the registered design may be related to both public interest and the earlier rights of an opponent.
According to Articles 67/2 and 77/1 of the Industrial Property Code numbered 6769 (“Code”), design registrations can be invalidated on the following grounds:
Not complying with the definition of design and product: According to the definition in Article 55 of the Code, a design refers to the appearance of the whole or a part of a product resulting from the features of the lines, contours, colours, shape, materials or texture of the product itself. Also, a product is defined as any industrial or handicraft item, excluding computer programs. If a design or product does not comply with these definitions, the design is invalidated.
Lack of novelty and individual character: According to Articles 56 and 57 of the Code, the registration of a design application is subject to the conditions of novelty and individual character of the respective design. Therefore, the invalidation of designs that lack of novelty and individual character may be requested.
Violation of public policy or morality: Designs that violate public policy or morality shall be invalidated either by the Office or the Court.
“Must Match” features: Appearance characteristics that are imposed by a technical function shall be excluded from the scope of registration.
“Must Fit” features: Appearance characteristics of an article or a product that must be reproduced in certain forms and dimensions for the mechanical connection with other products shall be excluded from the scope of registration.
Improper use of symbols: Designs that contain inappropriate use of sovereignty signs taking place in the scope of Article 6 of the Paris Convention and that covers signs, arms, certificates of achievement or denominations that are outside of this scope but interest the public policy or relate to religious, historical and cultural values can be invalidated.
Unauthorized application: Designs that are filed by persons who are not genuine right holders shall be invalidated.
Bad faith: If the design owner has made the design application in bad faith and the existence of the bad faith is proven, the invalidity of the design shall be decided.
Unauthorized use of other persons’ intellectual property rights: If the design includes the unauthorized use of other intellectual property rights, the invalidity of the design shall be decided.
The respective grounds can be claimed on the opposition’s procedures before the Office or the invalidation actions before the courts.
Opposition Proceeding Before the Office
The opposition petition along with the grounds for opposition and relevant evidence supporting the respective grounds shall be filed through the online system of the Office within three months from the date of publication of the respective design registration in the Bulletin. The opposition period cannot be extended.
Persons, who reside outside of Turkey, may only be represented by trademark or patent attorneys registered in Turkey. However, it is not required to submit a power of attorney for opposition against a design registration.
If an opposition is filed within the deadline, the Office will notify the design applicant about the opposition and grant the applicant the right to file a response petition against the opposition within one month from the date of notification.
The opposition shall be examined by the Re-examination and Evaluation Board (“Board”) of the Office based on the abovementioned opposition and response petitions. If the Board concludes that the registered design violates a ground for refusal, an invalidation decision of the relevant registered designs will be issued. Otherwise, the opposition will be dismissed. The decision on the opposition will be notified to the parties, and the decisions of the Board are final.
Since the Board’s decisions are final, the respective decision on the opposition can be canceled by a cancellation action against the respective final decision, which may be initiated before the Courts in Ankara, within two months from the date of notification of the respective decision. The respective court’s jurisdiction is exclusive.
Invalidation Action Before the Court
Invalidation action (i.e., nullity action) is a lawsuit that allows registered designs to be removed from the Design Registry due to the existence of one of the invalidation grounds. The persons, who fail to meet the deadline for the opposition, would still be able to file an invalidation action against the design registration before the Court.
It should be noted that it is not necessary to raise an opposition to the registered design within the opposition period to file an invalidation action against the design.
Invalidation actions will be handled by the Courts of the defendant’s place of residence.
The invalidation decision has a retroactive effect. Article 79/1 of the Code explicitly states that the invalidation decision is effective from the date of the design application and the protection provided to the registered design by the Code will be considered as never to have been existent.
After the invalidation decision is finalized, the court shall send the decision to the Office ex officio. The design shall be removed from the Design Registry and published in the Bulletin. The decision on the invalidation of the design has a judgment against all.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
Elif Koturoglu
Attorney at Law | Trademark Attorney
Evren Firat Goklu
Attorney at Law | Trademark Attorney