Turkey: Registration no longer constitutes legitimate use defence in Turkey
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Turkey: Registration no longer constitutes legitimate use defence in Turkey

Turkey has welcomed the new Intellectual Property Code (the IP Code) numbered 6769. This came into force on January 10 2017.

One of the major changes in the new IP Code is an explicit provision in Article 155 preventing later dated IP registrations being submitted as a defence in infringement actions.

Before the IP Code, there was established case law from the Court of Appeals stating that use of a registered IP right could not be prevented until the invalidation of the right was obtained. This case law resulted in de facto immunity for infringers allowing them to safely continue their infringements. In particular, the design registration system (which is rather quick as there was no ex-officio examination) was severely abused by infringers, and they obtained design registrations for the infringing packaging or infringing products. These registrations allowed them to safely use the infringing items until the end of the invalidation proceedings (at the minimum between one and two years).

As a result of the difficulties posed by case law for an effective fight against infringers, Article 155 of the IP Code has been welcomed.

So far, the courts have been hesitant when it comes to decisions, particularly in matters concerning preliminary injunction (PI) requests in infringement actions where the defendant holds a registered IP right. Interpretation of this Article by first instance courts has been rather strict for PI requests, and they have been rejected simply due to the need for an examination on the merits of the file which has resulted in continued use by infringers even in obvious cases of bad faith registrations. Recently the Bakırköy IP Court refused a PI request on the same ground, and this was appealed before the district court. The district court, by clearly referring to Article 155 of the IP Code, revoked the decision of the first instance court and rendered a PI order where the defendant was clearly acting in bad faith. We believe that this decision will guide first instance courts on the interpretation of the Article when it comes to PI requests and will allow trade mark owners to protect their trade marks against infringers by obtaining a PI order, even when a registered IP right exists.

Nevertheless, there will need to be a balance in the implementation of the regulation since the change introduced into the new IP Code rule also means that the risk of an infringement claim exists for trade marks which were registered in good faith.

Hande Hançar Çelik

Berrin Dinçer

Gün + PartnersKore Şehitleri Cad. 17Zincirlikuyu 34394İstanbul, TurkeyTel: + (90) (212) 354 00 00Fax: + (90) (212) 274 20 95gun@gun.av.trgun.av.tr

more from across site and ros bottom lb

More from across our site

Partners at Quinn Emanuel explain how walkie-talkie and real-estate analogies helped them win over a jury at the Eastern District of Texas
The heads of Malaysian firm HHQ’s new technology practice group say they can be frontline advisers on the intersection between AI, blockchain, and IP
Darren Jiron, Finnegan’s managing partner in London, discusses the firm’s growth plans and misconceptions about US firm culture
The EMEA region research cycle has commenced - do not miss this opportunity to nominate your work from 2023!
A former partner at Stroock & Stroock & Lavan, which voted to dissolve in October, has joined McCarter & English
As ChatGPT celebrates its first birthday, we are still grappling with a multitude of IP concerns
Sources say an official role at an IP industry body is great for generating business leads, but that shouldn’t be the only motivation behind taking on the responsibility
Breton is commissioner for the internal market in the EU at the European Commission
Kupecz is a judge at the UPC Central Division in Germany
Hakki is senior partner at Shearman & Sterling in the US and Dejonghe is senior partner at Allen & Overy in London