Upon high amount of queries our law firm in Turkey received from our foreigner clients in the last couple of months, we have decided to publish this article, “Turkish Intellectual and Industrial Property Lawyers” which includes information regarding definition of an industrial design as per 6769 numbered Turkish Industrial Property Code, benefits of obtaining an industrial design registration in Turkey, terms and conditions for obtaining an industrial design registration as per 6769 numbered Code, qualifications real persons and legal entities shall posses for an industrial design application in Turkey, industrial design application and registration phases and stages, timeline for an industrial design application in Turkey, required documents you need to deliver to your trademark attorney for an industrial design application, along with a few more useful subheadings.
Our intellectual and industrial property law firm in Turkey is pleased to provide legal consultancy and offer legal services for foreigner real persons or legal entities who are willing to file an industrial design application in Turkey.
MESCI Law Firm, as an up front intellectual and industrial property law firm in Turkey has legally assisted thousands of foreign clients from different sectors such as cosmetics, fashion, food and beverage, telecommunication and pharmaceuticals. Please don’t hestitate to contact our law firm for a legal consultancy.
If you would like to learn more about legal services our law firm in Turkey provides beyond borders, you can kindly visit our main Article Intellectual and Industrial Property Law.
Register an Industrial Design in Turkey
Industrial designs are regulated under 6769 numbered Turkish Industrial Property Code Article 55 and ff. As per Article 55 of the Turkish Industrial Property Code, design shall be the appearance of the whole or part of a product resulting from the features of the line, contour, colour, shape, material or texture of the product itself or its ornamentation.
On the other hand, product means any industrial or handicraft item, including parts intended to be assembled into a complex product, products like packaging, presentations of more than one object perceived together (for example interior designs), graphic symbols and typographic typefaces, but excluding computer programs. If your product is an invention possessing the inventive step criteria, it will be beneficial to register your product as a patent.
However if you have designed a product already existing in the market (for example, a car wheel), provided that the design is new, it would be beneficial to register it as an industrial design. You can obtain more information regarding patents under Articles part of our web page.
A design shall be protected by the Industrial Property Code, provided that it is new and has an individual character. Unlike patent registrations, design registrations do not cover the production method of the product, the technical beneifts of the product and the intended use of the product. Therefore, these are not required to be declaret at the time of application.
An industrial design registration before the Turkish Patent and Trademark Office provides protection to the right owner only within the borders of Turkey due to principle of territoriality. A design registered and protected in Turkey cannot be protected in other countries.
Therefore, if you are seeking industrial design protection in more than one country; separate national design application must be filed in the countries in which protection is being sought, a national industrial design application with priority claim must be filed in each country which industrial design protection is being sought OR an international design patent application shall be made before WIPO under the Hague Agreement Concerning the International Deposit of Industrial Designs.
Non-registered Industrial Designs
A design shall be protected as a registered design in case it is registered in accordance with the provisions of the 6769 numbered Turkish Industrial Property Code and a design shall be protected as non-registered design in case it is presented to the public for the first time in Turkey.
It is also possible to provide protection to non-registered industrial designs with Unfair Competition Articles regulated under 6102 numbered Turkish Commercial Code.The term of protection of a registered design covers a period of five years as from the date of filing. This period can be prolonged in total up to twenty five years by means of renewing in five year periods.
The term of protection of unregistered designs covers only a period of three years as from first presentation date to the public of the design for which protection is demanded. After mentioned protection periods the industrial design becomes anonymized.
Industrial design shall be new in order to be registered as per Law. If a design is reachable by the community and which is, before the application is submitted, presented anywhere in the world by introducing in written or verbally or made public by usage or any other ways, mentioned design cannot be protected with registration.
However in the presence of certain situations listed in Industrial Property Code, the fact that the design has been disclosed to the public before the application shall not effect it’s novelty feature.
As per Article 57/2 of Turkish Industrial Property Code No. 6769, 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.
Which Industrial Designs Can Be Registered In Turkey?
Industrial designs can be protected with registration under the Industrial Property Code No. 6769, provided that they are new and distinctive. If an industrial design is not presented to the public in any part of the World; before application or priority date for registered designs and before the design is presented to the public for the first time for non-registered designs, it shall be accepted as a new design.
If overall impression created by a design on the informed user differs from overall impression created by any design presented to the public on the same user; before application or priority date for the registered design and before the design is presented to the public for the first time for non-registered design, it shall be accepted that this design includes an individual character.
At this point it is important to emphasize that an informed user can be defined as a user who has used the same type of product for a certain period of time, has information about the features of the type product, is aware of the developments about the product and can notice product changes based on other users.
As per Article 56/6 of the 6769 numbered Industrial Property Code, in assessing distinctive character, the degree of freedom of the designer in developing the design shall be taken into consideration. For example, design options available to a designer who design car wheels are much narrower than the design options available to a fashion designer who designs underwear and overwear products.
Where the standards and mandatory technical features of the product restricts the freedom of choice of the designer, such restriction is being taken into account during the examination of the distinctiveness criteria of the design for which registration is requested. Novelty and distinctiveness researches are being made by Turkish Patent and Trademark Office upon application.
- Designs that are not considered new and/or do not have distinctive features (Article 56);
- Designs that do not comply with the desgin and product definition specified in the law (Article 55);
- Designs contrary to public policy or morality; appearance characteristics dictated by the technical function (Article 58);
- Appearance characteristics of the product which must necessarily be reproduced in its exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in (Article 58);
- Designs that include the inappropriate use of sovereignty signs taking place in the scope of Article 6 ter of the Paris Convention and that covers signs, arms, certificates of achievement or denominations which are outside of this scope but interest the public order and becoming public knowledge in terms of religious, historical and cultural values and for which registration permit shall not be granted by relevant authorities (Article 58)
shall not be in the scope of protection. Thus such designs cannot be registered before the Turkish Patent Authority.
Benefits of Industrial Design Protection
There are a number of benefits that an industrial design registration will provide you in Turkey. Major benefits an industrial design registration in Turkey are as follows:
- Your industrial design right will be protected under 6769 numbered Turkish Industrial Property Code for 25 years if you pay annual fees for each five years thus you will have the opportunity to exclusively manufacture, use and sell the designed product for 25 years.
- With the grant of industrial design certificate, design owner can prevent third parties from producing, selling, using or importing the goods subject to industrial design registration or keeping those at hand for such purposes and for other reasons than personal need.
- Some e-commerce platforms remove the images of offensive commodities sold on the platform and the seller profiles that offer these commodities to customers, only if you submit your industrial design registration document.
- All industrial property rights can be protected before the customs authority if they are registered. Thus, it is possible to seize, confiscate and destroy of the aggressor products by legal means, before they enter in Turkish trade area.
- You can make profit by issuing license on the product for production, sale and/or marketing of the product by third parties or by assigning your patent right to a third party and transferring the right of ownership.
- Having a high number of registered industrial design applications creates a positive impression on investors about your business and design capacity and provides information regarding the areas of your expertise.
- With registration industrial design registration in Turkey, your design differs from the products of third parties released in the market.
- With industrial design registration in Turkey, the registered design is protected under the Industrial Property Law No. 6769 which provides more effective protection than the one provided under the unfair competition provisions of the Turkish Commercial Code No. 6102. If your registered industrial design is infringed by a third party, you may bring your case to the court and be awarded for the sales you have lost as a result of the infringement or you can directly claim the profit of the competitor/third party obtained by selling the aggressor products.
- It is possible to protect and shield the unique apprearance or aesthetic features of your product by industrial design registration in Turkey.
Documents Required For Industrial Design Applications
- Identity and contact information of the owner,
- Visual expression and representation of the industrial design reflecting appearance of the industrial design, which is also convenient for reproduction (Shall be minimum 8×8 cm and maximum 16×16 cm.),
- Name of the product which industrial design is applied and/or being used,
- Identity and contact information of the designer,
- Statement of the owner requesting the designer to be kept confidential, if any,
- Statement of the owner indicating transfer of ownership from the designer,
- Statement of the owner on postponement of publishing request, if any,
- Priority claim and documents, if any,
shall be presented to Turkish Patent and Trademark Office and application fees shall be paid during application to be made electronically through EPATS system that a trademark attorney in Turkey uses. A description explaining the product can also optionally be submitted to Turkish Patent and Trademark Office during the application. It is not obligatory to submit the description, which is the written text in which the visual characteristics of the product are expressed.
Clients shall duly note that, in accordance with the Industrial Property Law, if the design requested to be registered has a written phrase on it, the design registration does not provide an exclusive right on the said phrase. If it is desired to obtain a monopoly on a written phrase on the design, the aforementioned phrase must be registered as a trademark which will indeed be subject to an entire different application.
Registration of more than one design can be requested under the same application as per Law. However, if such an application is to be registered under the same file number, all the designs requested to be registered must be subject to the same Locarno Class. Design applications with multiple designs can be made under the same application dossier up to a hundred.
In case an application with multiple designs are filed, and mentioned designs are not subject to the same Locarno Class or the number of designs exceeds one hundred, the Turkish Patent and Trademark Office requests the applicant or his/her representative to notify within 2 (two) months about which designs will be processed.
Divided designs can be subject to a new application (a split design application). In case the divided designs are subject to a new application, the application date of the divided file is taken as the application date.
Industrial Design Application Procedures
First of all, the industrial design application shall be made by filling out an application form electronically through web page of Turkish Patent and Trademark Office and by submitting the required information and documents stated above. Following the application, application will be subject to a procedural examination by Turkish Patent and Trademark Office.
If it is seen that there is no deficiency in terms of the conditions specified in the Law, the application date becomes definite as of the date of electronic application. If a deficiency is detected by the Office regarding the application documents, a definite period of 1 month is provided to the applicant so that deficiencies can be fulfilled and/or corrected.
In this case, the design application date becomes definite as of the date that deficiencies are eliminated. The dates applications are being definite are important as they are the beginning of the protection date.
If there is no formal defect detected or if the defect is corrected, an evaluation is made on whether the design meets the criteria of novelty and distinctiveness and whether if the design can be registered as per Law. If the design meets registrability criteria specified in the Law, the design shall be published in the Bulletin.
Third parties, within 3 (three) months from the date of publication can present their objections indicating that design is not distinctive or new; is one of the designs outside the scope of protection stated under Article 58; the application was made with bad faith and/or that it involves unauthorized use of an intellectual property right.
In case of a third party objection, Turkish Patent and Trademark Office gives the applicant a definite period of 1 (one) month to present his/her counter statements along with his/her evidences. If such an objection is accepted by the Turkish Patent and Trademark Office, the registration of the design is being invalidated.
On the other hand, if it is understood by Turkish Patent and Trademark Office that the design cannot be registered in terms of registrability criteria before the design application is published, the design application is partially or completely being rejected. In this case, the applicant can object to the decision of the Institution within 2 months upon service of the decision.
Both objections raised against wholely or partially rejection of the design decision of the Office and raised by third parties against registration of the industrial design upon publishing shall be examined by Turkish Patent and Trademark Office, Commission For Review and Reevaluation.
Clients shall note that, design registrations takes approximately 6-8 months if the application is not rejected by the Office or there is no objection raised to the publication of the industrial design.
Persons To Benefit From Industrial Design Protection
Citizens of Republic of Turkey, natural or legal entities demociled or engaged in industrial or commercial activities within the borders of Republic of Turkey, persons who have the right of application according to the Paris Convention or 15/4/1994 dated Agreement Establishing the World Trade Organization, according to reciprocity principle, persons whose citizenships are in states that provide Turkish citizens the protection of industrial property rights shall benefit from protection provided with the 6769 numbered Industrial Property Code.
Citizens of the Republic of Turkey based in Turkey can make their own industrial design applications by applying to the Turkish Patent and Trademark Office. However, of course, in such a case, it is very likely that a real person Turkish citizen who does not have sufficient knowledge of the Industrial Property Law will miss the legal deadlines that must be followed to register his/her industrial design before the Turkish Patent and Trademark Office and suffer from loss of rights.
In order to prevent such a problem, we strongly recommend Turkish citizens to make their industrial design applications through a patent attorney and/or a trademark attorney.
On the other hand, it is required by law that real persons or legal entities residing in a foreign country shall authorize a trademark attorney and/or a patent attorney residing in Turkey to make their industrial design applications to the Turkish Patent and Trademark Office on behalf of them.
Pursuant to Article 160 of the 6769 numbered Industrial Property Code, persons residing abroad can only be represented by a patent attorney based in Turkey and/or a trademark attorney based in Turkey. Transactions carried out by the principal without being represented by an attorney are deemed not done.
What Is A Priority Document?
Priority right means that after an applicant files an industrial design application in a contracting state, she could, within a limited period of time, file another industrial design application in another contracting state based on the first application for protection of the same industrial design right.
In other words, if you made an industrial design application in a foreign country, based on this application and by presenting the priority document and depositing the required amount, you can make an industrial design application in Turkey within 6 (six) months and if there has been entrance of the same industrial design in Turkey within mentioned time, such an aggressor industrial design is being rejected which will enable your application to be accepted.
Clients shall duly note that, priority claim shall be made during the industrial design application and the priority document shall be presented within 3 (three) months following the Turkish industrial design application. Otherwise, the applicant cannot benefit from the priority right.
When To Apply For Industrial Design Renewal?
You can renew your industrial design once in every five years. As per Article 69 of 6769 numbered Turkish Industrial Property Code, the term of protection of a registered designs covers a period of five-years as from the date of filing. This period may be prolonged in total up to twenty five year by means of renewing the industrial property right within the period of each five-year.
Request of renewal shall be made by the industrial design owner within within six months before the expiry of the protection date. If no request for renewal is made to the Turkish Patent Office within this period, renewal application still can be made within six months following the expiration with the condition that an additional fee is paid.
Renewal applications are being concluded generally within 1 or 2 months in Turkey. Our law firm in Turkey only needs a signed and stamped Power of Attorney in order to complete the work on your behalf only, since renewal applications don’t require further document.
Intellectual And Industrial Property Law Firm In Turkey
An intellectual and industrial property lawyer in Turkey has deep knowledge of 6769 numbered Industrial Property Code, 30047 numbered Regulation on the Implementation of the Industrial Property Code and other related national and international regulations, follows current developments in the field of trademark law and industrial design law and provides various services regarding trademark and industrial design law.
In this context, a trademark lawyer provides legal services within the scope of trademark and industrial design law and can file and follow any lawsuit before the Civil Courts for Intellectual and Industrial Property Rights. If a trademark lawyer is also a trademark attorney, he/she can make trademark applications and industrial design applications before the Turkish Patent and Trademark Office, follow the application and registration process and make all kinds of legal transactions required before Turkish Patent and Trademark Office.
Our law firm in Istanbul consists of intellectual and industrial property lawyers in Turkey and in this context, we carry out the trademark and industrial design application processes of our clients, follow all kinds of legal proceedings before Turkish Patent and Trademark Office, and defend rights of our clients in the best way before the Civil Courts for Intellectual and Industrial Property Rights regarding disputes involving our clients’ registered trademarks and industrial designs.
Our law firm in Turkey that is operating with a law team of dedicated and reputable lawyers registered before the Istanbul Bar Association which differentiates our perspective from traditional patent firms, having clients all around the World from United States of America to China, from UAE to England, from Russia to India. Our staff are well experienced in handling any transaction before Turkish Patent and Trademark Office, complex litigations filed before Specialized Courts for Intellectual and Industrial Property Rights and Commercial Courts of First Instance regarding trademark, industrial design, patent and utility model disputes.
Our law team uses it’s extensive knowledge on law to protect your interests, ensure your full IP potential and maximize your position in the sector. Not only protecting your trademark, but also to witness it’s transformation to a global brand is important for us.Your industrial design registration in Turkey can provide significant benefits within the borders of Turkey from manufacture and marketing to sale of your products.
These benefits along with the right industrial design protection strategy will allow your business to grow, be recognized in the market and eliminate your competitors. If you believe your industrial design is original and will be commercially valuable, you can contact our intellectual and industrial property lawyers in Turkey for a legal protection strategy built for your industrial property right in Turkey and to register and renew it before the Turkish Patent Office!