What is the primary domestic legislation regulating designs in Turkey?
Turkish Industrial Property Code no. 6769 (“Turkish IP Code”) is the main legal instrument stipulating the general principles and rules concerning design prosecution proceedings and IP-related legal events. If conditions were suitable, designs can be protected by copyright and unfair competition law provisions as well.
What are the design-related international agreements Turkey is a signatory of?
Paris Agreement, 1883
Berne Convention for the Protection of Literary and Artistic Works, 1886
Convention Establishing the World Intellectual Property Organization, 1967
Agreement Establishing the World Trade Organization, 1995
The Agreement on Trade-Related Aspects of Intellectual Property Rights, 1995
Hague Agreement Concerning the International Registration of Industrial Designs, 1999
Locarno Agreement Establishing an International Classification for Industrial Designs, 1968
Which institution is competent to receive design applications in Turkey?
Turkish Patent and Trademark Office (“TPTO”) is the competent authority to register designs in Turkey.
Which territories are covered by TPTO’s jurisdiction?
Only the Turkish Republic is covered by the jurisdiction of TPTO. TPTO does not have authorization for the design prosecution proceedings in Northern Cyprus.
Who can enjoy design protection provided with the Turkish IP Code in Turkey?
Turkish citizens, real or legal persons residing or engaged in commercial or industrial activities within Turkish national borders, persons entitled to apply under the Paris Convention and the Agreement Establishing the World Trade Organization, and nationals of states that provide protection for industrial property rights to Turkish nationals in compliance with the reciprocity principle are entitled to enjoy the protection provided with the Turkish IP Code.
Which classification system is used by Turkish Patent and Trademark Office?
Design registration is based on the Locarno Classification in Turkey.
How does design define under the Turkish IP Code?
Design is the appearance of the whole or a part of a product resulting from the features of, the line, contour, color, shape, material or texture of the product itself or its ornamentation.
What kind of protection types are available?
There exist two kinds of protection as non-registered design and registered design.
How does non-registered design define under the Turkish IP Code?
A design can be protected as non-registered design in case it is presented to the public for the first time in Turkey. A non-registered design provides protection up to 3 years as from the first public disclosure of the design.
What are the requirements of design protection in Turkey?
A design must be new and has an individual character.
What does novelty mean for a design?
A design is considered as new if no other identical design has been made publicly available in any part of the World before the filing date or priority date. Making available to the public means releasing on the market, use, description, publication, promotion or so on by means of exhibition and sale. Disclosure to a third person under conditions of confidentiality is not considered as making available to the public.
How long is the grace period in respect of novelty?
There is 12 months grace period. A disclosure shall not affect the novelty or individual character, if a design for which protection is claimed has been made available to the public during the 12-month period preceding the date of filing of the application or, if priority is claimed, the date of priority by the designer his successor in title or a third person in consent with the designer or his successor or in abuse of the relation with the designer or his successor.
What are the filing requirements to represent the designs in a design application?
The designs should be represented by clear photos or drawings for design applications. The representations should be in JPEG format and have at least the sizes of 8x8cm, 8x16cm, or 16x16cm and a resolution of 900 DPI.
If the designs will be represented by photographs, they should be represented on a plain surface and background and there should not be any other objects.
In case that the designs are represented by drawings, the drawings should have been drawn by use of electronic means and represented three-dimensionally using shades and parallel lines.
Is it mandatory to file the design applications along with a description?
It is not mandatory to submit a description.
Is it possible to defer publication of design applications?
Applicants can request that the publication of the designs to be deferred up to 30 months as from the filing date or the priority date if any priority is claimed.
Is it possible to keep the designers’ name confidential?
Yes. Designers can ask their name not to be disclosed.
Which classification system is used by Turkish Patent and Trademark Office?
For design applications, the Locarno Classification is used, which is an international classification system for industrial designs overseen by the World Intellectual Property Organization (WIPO).
Is it allowed to file multiple design application?
Yes. Multiple design application covering more than one design is possible provided that the products to which the design is applied belong to the same Locarno class and additional fees are paid for each additional design. A total of 100 designs can be claimed under a single multiple design application.
Is it permissible to file a single design application for a set of products?
One design application claiming the design of a set of products as a set of tableware including dishes, bowls, and plates is permitted.
How are the official fees for filing design application calculated?
There are two different types of official fees that must be paid to the Office. The application fee and the publication fee are the two fees. Both must be paid to the Office before or at the time of the application. The application fee is fixed and set by the TPTO annually. The size of the visual representations of the designs determines the publication fee.
Is there any requirement as represented by a trademark/patent attorney?
Not everyone is required to have an attorney represent them before the TPTO. However, the persons whose domiciles are situated abroad shall only be represented by trademark or patent attorneys. Any operations conducted by such legal entity without being represented by an attorney shall be deemed void.
What are the required documents/information for a design application?
Design application shall include the followings
The application form containing information about applicant's identity
The visual representation that reflects the appearance of the design and that enables reproduction through publication
The name of the product in which the design is incorporated or to which it is applied
The name of the designer or the names of the members of the group having designed the design
Information containing how registration request right has been obtained from the designer or the designers
The request of postponement of the publication, if any
Description, if any
Information regarding the priority, İf priority right is claimed
Is a Power of Attorney required?
Submission of the Power of Attorney (“PoA”) is not required for design registration in Turkey. On the other hand, when deemed necessary (such as withdrawals, partial renewals, letter of consents etc.), Office may request to submit of the original PoA evidencing the authority of the attorney.
In case of necessity, should a Power of Attorney be notarized and/or legalized?
PoA which needs to be submitted before TPTO, does not require notarization and/or legalization in Turkey, scanned copy of the original signed is sufficient.
Does TPTO conduct any novelty search or examination upon receiving the application?
TPTO conducts novelty search mostly through online search engines by uploading the visual and the online databases of other national and international offices. If TPTO considers that the design is not novel, the application can be refused. In such event, the applicant will be entitled to appeal the refusal decision of TPTO.
How long the publication term in Turkey?
If the design is not provisionally refused, the application is published in the Official Turkish Design Bulletin. The design applications are published for 3 months for the oppositions of the third parties in the Turkish Design Bulletin.
What happens after the expiry of the publication period?
If the application did not receive any publication during the publication period, TPTO grants a registration decision and issues a registration certificate for the application after the expiry of the publication period.
How long the protection term for the registered designs in Turkey?
The term of protection for registered design is five years started from the date of application. This term may be renewed for periods of five years up to a maximum of 25 years.
How long the protection term for the unregistered designs in Turkey?
An unregistered design only grants protection for 3 years from the date of its first public disclosure in Tukey.
How long does it take to register a design application straightforwardly?
If a direct national application is filed, the registration process takes approximately 6 months (examination for two months, publication for three months, and registration for one month), provided no ex-officio refusal and/or opposition is filed.
In the case that the design application is based on an international designation under Hague System, registration of a design application will take approximately 4 months from the receipt of the international application of TPTO if no opposition is filed.
Is there an opposition procedure against a design application?
Third parties can file an opposition against the published design applications.
What is the deadline for opposition?
Interested third parties are entitled to file an opposition against the application during the publication period. Thus, the deadline for opposition is 3 months from the publication date of the design application. There is no possibility of time extension to file opposition.
What types of objections or arguments can be claimed in oppositions?
Design or designs do not come into conformity with a design defined under the Law
Design or designs are lack of novelty and individual character as defined under the Law
Design or designs are contrary to public policy or morality
Design or designs are an appearance characteristic dictated by the technical function
Design application involve appearance characteristics of the product which must necessarily be reproduced in its exact form and dimensions to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in
Design application include the inappropriate use of sovereignty signs, religious symbols, or cultural values
Design application is filed with bad faith
Design application contains the unauthorized use of intellectual property rights of a third party
Is it possible to file an appeal against the decisions granted regarding the oppositions?
No, the oppositions are evaluated by a Board of Examiners and the decisions issued by the Board is final. On the other hand, any party can file a lawsuit against the decision for the cancellation of it before the IP courts within 2 months from the official receipt of the notification of the decision.
When does renewal fee become payable?
Renewal fee for a registered design falls due every 5 years, up to 25 years, falls due every ten years on the anniversary day of the date of filing and is payable up to 6 months before the renewal due date.
Is there any extension/grace period for payment of a renewal fee?
Yes, if payment of renewal fees are not made in due time, they may still be validly paid within 6 months of the due date, provided that a surcharge (typically 50% of the renewal fee) is paid.
Is it possible to partially renew a design registration?
A design registration can be partially renewed for some of the designs only.
Is Power of Attorney required for renewing a design registration?
If a design registration will be renewed wholly, Power of Attorney (PoA) is not required. On the other hand, if a design registration will be partially renewed Power of Attorney (PoA) which expressly covering the authorization for partial renewal is required.
When will renewal be effective?
Renewal will be effective as the day following the date on which the 5 years protection period ends.
Does number of views affect the official fee?
The official renewal fee is fixed, and it does not vary in proportion of number of views.
Does the right holders’ entity status affect the official fee?
Legal and real entities are expected to pay the same amount of official fee. The official fee does not change in accordance with the entity status or the size of entity.
Valid design applications and registered designs can be transferred to third parties through an assignment agreement.
Is the recordal of an assignment obligatory?
It is not obligatory to record an assignment in design register. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the design registry.
Can a registered or applied-for design be assigned partially?
Yes, a registered or applied-for design can be partially assigned.
Is there any deadline to record an assignment?
There is no deadline to record assignment of the rights in the design registry. The design remains effective independently from the assignment.
Is Power of Attorney required for recording an assignment in the design registry?
Power of Attorney is not required for recording an assignment.
Is uniliteral declaration sufficient for an assignment?
Assignment should be done mutually, and the express acceptance of the assignee is required for a valid assignment of the rights. In other words, Assignment Agreement should be signed both Assignee and Assignor.
Is there any requirement for legalization or notarization for recording an assignment?
Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.
Is the original of Assignment Agreement required?
A copy of Assignment Agreement is sufficient provided that it fulfills the requirements of the conditions for validity.
Is Turkish translation of Assignment Agreement required to record an assignment in the registry?
A Turkish translation approved by a sworn translator is required for recording assignment.
Is it possible to record an Assignment Agreement that covers multiple designs with a single request for assignment before TPTO?
It is not possible to record assignment for different designs with a single request. Assignments should be individually recorded per each file.
Is recordal of an assignment subject to official fee?
The recordal of an assignment is subject to official fee. If more than one design is subject to recordal, official fees should be paid for each case separately.
Should the Assignment Agreement be specifically drafted for Turkey?
There is no need for a specific Assignment Agreement that is particularly prepared for Turkey. Worldwide Assignment Agreements are also acceptable provided that it refers to the national Turkish design application or registration numbers therewithin.
Is there any statutory requirement for the scope or content of an Assignment Agreement?
There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by assignee will be sufficient. Furthermore, design application or registration number or numbers subject to assignment should be listed in Assignment Agreement for validity.
Is any document evidencing the address change required for recording a change of address?
No evidence is requested for recording change of address.
Is Power of Attorney required for recording change of address?
Power of Attorney (PoA) is not required for recording change of address.
Is it possible to record the address change only for selected cases?
The address change is reflected to all design applications and registrations of the concerning right holder.
Does recordal of an address change affect all registers (patent, trademark, design)?
The address change is applied to all registers namely, the address of the right owner will be changed in design register, patent register and trademark register.
Is recordal of an address change subject to official fee?
For change of address, official fee is not requested.
Is any document evidencing the name change required for recording a change of name?
An official document, i.e. an extract from Chamber of Commerce or Industry, Court or any officially authorized institution, should be submitted for recording change of name. The document should expressly mention the change of name and both old and new names of the right owner.
Is a translation of official document for recording change of name required?
Turkish translation of official document approved by a sworn translator is required for recording change of name.
Is a copy of official document sufficient for recording change of name?
A copy is sufficient for recordal furthermore, no notarization or legalization is required.
Is Power of Attorney required for recording change of name?
Power of Attorney (PoA) is not required for recording change of name.
Is it possible to record the name change only for selected cases?
The name change is reflected to all design applications and registrations of the concerning right holder.
Does recordal of a name change affect all registers (patent, trademark, design)?
The name change is applied to all registers namely, the address of the right owner will be changed in design register, patent register and trademark register.
Is recordal of a name change subject to official fee?
For change of name, official fee is not requested.
Is any document evidencing the merger and acquisition required for recordal?
An official document, i.e. an extract from Chamber of Commerce or Industry, Court or any officially authorized institution, should be submitted for recording merger and acquisition. The document should expressly mention the merger and acquisition and both old and new entities.
Are company minutes or proceedings of similar decision for a merger and acquisition acceptable?
Company minutes or proceedings of similar decision for merger and acquisition are not acceptable.
Is official certification of notary public regarding merger and acquisition is sufficient to record merger and acquisition?
Official certification of notary public is not sufficient to record a merger and acquisition.
Is a translation of official document for merger and acquisition required?
Turkish translation of official document approved by a sworn translator is required for recording merger and acquisition.
Is a copy of official document sufficient for recording merger and acquisition?
A copy is sufficient for recordal furthermore, no notarization or legalization is required.
Is Power of Attorney required for recording merger and acquisition?
Power of Attorney (PoA) is not required for recording merger and acquisition.
Is recordal of merger and acquisition subject to official fee?
The recordal of merger and acquisition is subject to official fee. If there is more than one design, official fees should be paid for each case separately.
Which types of licenses are available for recording?
There are two types of licenses, exclusive and non-exclusive. A license is not exclusive if it is not agreed so in License Agreement. In the case of non-exclusive License Agreements, licensor can use the design too and Licensor can grant sub-licenses for the same design. In the case of exclusive License Agreements, licensor cannot grant further licenses to third parties, and cannot use the design unless it reserves its rights obviously.
Can licensees assign their license rights to third parties?
No, licensees cannot assign their license rights to third parties unless any clause is available for right to assign in License Agreement.
What is the scope of rights for licensee in using licensed design?
Licensee can take any action, unless otherwise agreed, in respect of the use of design. If licensee does not act in compliance with the terms and conditions of License Agreement, licensor can put forward its rights of design against Licensee.
Should a design application have been granted for granting and recording a License?
No, License can be granted and recorded for a pending design application.
Is there any requirement for disclosing or declaring consideration in a License Agreement?
There is no requirement to disclose or declare consideration in order to validly license the rights.
Should term of license be indicated in License Agreement for recording a license?
Yes, term of license should be clearly indicated in License Agreement. Otherwise, it will not be possible to record license in the registry.
Can license be granted unilaterally?
No, license should be done mutually, and the express acceptance and declaration of the licensee is required. In other words, both licensee and licensor should simply sign License Agreement.
Is there any requirement for legalization or notarization for recording license?
There is no requirement for notarization or legalization of a License Agreement. Simple signatures of licensor and licensee on License Agreement are sufficient to record license in the design registry.
Is it possible to partially grant a license?
Yes, license can be granted partially.
Is recordal of a license obligatory? If not, are there any negative consequences where the License is not recorded duly in the registry?
Recordal of a license is not obligatory. However, licenses can only have effect against third parties, who are acting in good faith, as from the date of their entry in the design register. In other words, it is not possible to put forward the rights on the design against third parties acting in good faith unless and until they are duly entered in the design register.
Is the original of License Agreement required?
Not actually, a copy of the License Agreement is sufficient provided that the Attorney declares that the copy is same as the original.
Is the translation of License Agreement required to record a license in the design registry?
Yes, a Turkish translation approved by a sworn translator is required for recording License.
Is it possible to record a License Agreement comprising multiple design cases by one License request at Turkish Patent and Trademark Office?
License should be individually handled for each case (case by case).
Is Power of Attorney required for recording a license in the design registry?
Power of Attorney is not required for recording a license.
Is there any deadline to record a License?
There is no deadline and requirement to record License Agreement in the design registry.
Are official fees payable in order to record a design License?
Yes, official fees are payable for recordal of a license. If there is more than one design within the scope of license, official fees should be paid for each case separately.
Is a worldwide License Agreement acceptable?
Yes, it is acceptable provided that license refers to Turkish design application or registration number(s) therewithin.
Is recordal of license published?
Yes, license is published in Turkish Design Bulletin.
Can a pending design application be licensed?
Yes, a pending design application can be licensed; there is no requirement for grant or registration of application for license.
If a design application or design registration seized, is it still possible to license the rights thereon?
Seizure is not an obstacle to license the rights of a design.
If a design application or design registration pledged, is it still possible to license the rights thereon?
Pledge is not an obstacle to license the rights of a design.
Is there any regulatory requirement for the scope or content of a License Agreement?
In a License Agreement, design application or design registration number and list of goods and services subject to License, term of license are required; otherwise, recording license will not be allowed in the design registry.
