TURKEY- Novelty Examination of Design Applications

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The Turkish Industrial Property Code no. 6769 (IP Code) grants protection through registration for designs that fulfill the novelty and individual character criteria.

According to the IP Code, novelty and individual character of a design application is set forth as conditions of protection, while Turkish Patent and Trademark Office (“Turkish PTO”) is entitled to carry out ex officio examination of novelty to grant protection.

The practice during the repealed legislation Decree-Law no. 554 on the Protection of Industrial Designs:

The repealed legislation Decree-Law no. 554 on the Protection of Industrial Designs regulated novelty and individual character as conditions of protection as well. However, the Decree-Law no. 554 did not require an Industrial Design application to be ex officio examined for novelty and individual character at the application stage.

The accustomed Turkish PTO practice prior to the IP Code tended to publish Industrial Design applications which complied with the formal requirements for third party oppositions without prior examination for conditions of protection or lack thereof. For this reason, novelty of an Industrial Design would not have been examined before the Turkish PTO unless a third party opposition was filed during the Decree-Law no. 554 period.

The practice during the New IP Code:

Article no. 56 titled “Novelty and individual character” of the IP Code states that a design shall be considered to be novel if no identical design has been made available to the public anywhere in the world before the date of reference. Whereas, the IP Code also provides an exception to the rule in the form of a grace period; allowing that a design application can be filed in Turkey within 12 months period as from the first public disclosure of the design.

Following the enactment of the IP Code, Turkish PTO was entitled to carry out ex officio novelty examinations on design applications as regulated under Article no. 64 titled “Examination” of the IP Code. The provisions under Article no. 64 provide that the Turkish PTO has the duty and authority not to register ordinary designs that do not meet the conditions of protection set forth under the IP Code. In this context, Article 64/6-d of the IP Code entitles Turkish PTO to refuse applications based on lack of novelty.

Currently, Turkish PTO carries out a search to ensure the novelty of design application filings. In the event that the design was found to fulfill the novelty criteria, Turkish PTO moves on with the publication of the design application for third party oppositions. However, in the event that the design application was found to lack novelty, Turkish PTO issues a refusal decision with an accompanying search and examination report to indicate the lack thereof.

The Turkish PTO explains that the examiners currently use the image search feature of Internet search engines and/or EUIPO Designview database hence the Turkish PTO does not have a specific system developed for the subject novelty research at the moment.

According to a recent Turkish PTO decision received following the ex officio novelty examination conducted on a design application in view of the novelty criteria set forth under the IP Code, the application was found to lack novelty as it has been detected that the subject design was previously disclosed to the public. The subject design was found to have been disclosed to the public a few years ago through a YouTube video content as explained by the Turkish PTO with an accompanying search and examination report provided attached to the refusal decision.

Comment:

Turkish PTO’s ex officio examination on the novelty of a design application introduced with the IP Code is expected to reduce the amount of third party oppositions and increase the quality of design registrations.

It should be noted that the reliability of examination and registration proceedings carried out before the Turkish PTO would certainly affect the number of filings and the results of the infringement and invalidity actions to be instituted in the upcoming future.   

Even though the above explained Turkish PTO decision did not provide information on the search databases used for the novelty examination, it is observed that the Internet search engines and social media platforms are taken into consideration during the novelty searches performed.