EMERGING ISSUES IN TURKISH INTELLECTUAL PROPERTY LAW Published by Suluk & Kenaroglu Law Offıce at Smashwords Copyright © 2011 by Suluk & Kenaroglu Law Offıce Smashwords Edition, License Notes All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the copyright owner. TABLE OF CONTENTS PREFACE ABBREVIATIONS I. TURKISH INTELLECTUAL PROPERTY LAW SYSTEM In General Revision Studies On Legislation Proceeding Procedure The Process of Preliminary Injunction The Position of Experts in Lawsuits The Obligation of Securing Deposit for Foreigners The Principle of Cumulative Protection Exhaustion Principle and Parallel Importation Loss of Rights due to the Remaining Silent Customs Applications in the Fight against Counterfeit Goods and Piracy II. TRADEMARK LAW In General The Obtainment of Trademark Right and Genuine Holder-Ship Uniqueness Principle in Trademark Law The Notion of Bad Faith and Its Place in the Turkish Trademark Law Well-Known Trademarks Pharmaceutical Trademarks Unconventional Trademarks Trademark Crimes III. PATENT LAW In General Utility Models Pharmaceutical Patents Data Exclusivity and Supplementary Protection Certificate Compulsory License Patent Infringement and Criminal Measures IV. DESIGN LAW In General Spare Part Designs Invisible Designs The Partial Invalidity of Designs V. COPYRIGHT LAW In General Collecting Societies Copyright Agreements Indemnity for Copyright Architectural Work TV Program Formats Notice and Take Down Procedure Right of Retransmission VI. UNFAIR COMPETITION LAW In General Unregistered Inventions and Unfair Competition Unregistered Designs and Unfair Competition FOREWORD Law is national, in other words it is local and each law system is peculiar to itself. The dizzy developments in the information age result in incredible alterations regarding IP law. Although the rules of law bear a national character, the alterations in this area hold global character at some degree via international agreements. Nevertheless, despite all the harmonization endeavors via international agreements, IP law is still preserving its national character. Although a crucial ground is covered by force of Common Market, the national character even in EU is not completely ruled out. Briefly, the nationality in IP law is still too dominant. In these days even the medium sized firms have commercial activities, such as manufacturing, sales and marketing outside of their own countries. Therefore, the commercial players that carry on business in the international arena cannot stand against the protection of IPRs in the international scale. According to the IMF records, when purchasing power parity is predicated on, with the 932 billion $, the Turkish economy is the 16th biggest economy of the world and on the other hand, Turkey, with the % 8.9 growth rate, is the second most growing country, after China, in the world. Thus, it seems not possible for companies having business in international area to neglect Turkish market. Compared to previous years, with the consolidation of the economy and the awareness in the community, Turkey has begun to reserve crucial amounts of share to the R&D studies. According to the data for 2008, Turkey has spent approximately 5.4 billion $ to R&D and the rate of this amount to the national income is 7.3 per thousand. The aim of the government for 2013 is to pull this rate to 2%. It has been transferred a considerable amount of share to R&D from the public budget in recent years and the transfer will be continued. In other words, the R&D studies are in the tendency of a fast increase and the increase will be even faster in the near future. As a matter of fact, with respect to trademark, patent and design applications filed within the Turkish Patent Institute, the interest of both the local and foreign firms has increased particularly in Turkey. Today in Turkey, it is made over seventy thousand trademark applications per year and it is on the third rank in Europe regarding trademark applications. Twelve thousand of the all trademark applications have been filed by foreign applicants. It should be taken into the account that total number of the annual trademark applications was around only sixteen thousand in 1995. The number of patent applications, which were approximately one thousand five hundred in the mentioned year, has escalated to seven thousand in 2009. On the other hand, total amount of the annual design applications has reached to thirty thousand in the recent years. These numbers confirm our finding on the fact that Turkey has become a very important market for companies having business in the international area. In the study that you are holding now, after the general issues on nearly all areas of IP law, we focused on the emerging issues and problematic subjects. Some of the problems, examined in this study, arise as such by its nature, just like the problems in well-known trademarks while the others occurred because of the applications peculiar to Turkey, such as the protection of unregistered innovations or designs under unfair competition regulations for an unlimited period of time. Our study has been prepared more of by taking the IP problems that the foreign companies have experienced in Turkey into consideration. The readers will on one side be introduced to the problematic areas of Turkish execution; on the other side will be able to observe the variations from the general executions in the world. ABBREVIATIONS App/Appr: Approximately art: Article bis: Additional CU: Customs Union ECJ: European Court of Justice EEA: European Economic Area EPC: European Patent Convention EU: European Union FRAPA: Format Recognition and Protection Association FSEK: Copyright Code INN: International Nonproprietary Names IP: Intellectual Property IPC: International Patent Classification IPRs: Intellectual Property Rights MarKHK: Trademark Degree Law MESAM: Musical Work Owners’ Society of Turkey Nr: Number PCT: Patent Cooperation Treaty PRAFA: The Format Recognition and Protection Association PLT: Patent Law Treaty R&D: Research and Development SME: Small and Medium Sized Enterprise SMEs: Small and Medium Enterprises SPC: Supplementary Patent Certificate TL: Turkish Liras TLT: Trademark Law Treaty TPI: Turkish Patent Institute TRIPs: Agreement on Trade Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods TV: Television UCC: Universal Copyright Convention UK: United Kingdom UPOV: International Convention for the Protection of New Varieties of Plants USA: United States of America WCT: WIPO Copyright Treaty WIPO: World Intellectual Property Organization WPPT: WIPO Performances and Phonograms Treaty WTO: World Trade Organization I. TURKISH INTELLECTUAL PROPERTY LAW SYSTEM 1. IN GENERAL The protection of Turkish intellectual property rights (hereinafter IPRs) goes back to the time of Ottomans. The Patent Code dated 1879, which was adapted from the French Patent Code dated 1844, is the sixth patent code of the world. On the other hand, the first Turkish Copyright Code was regulated in 1850 while the first Turkish Trademark Code was regulated in 1872 by the influence of French law. The process of codifications on the subject matters continued after the foundation of Turkish Republic in 1923 as well. In recent years Turkey has made crucial reforms in IP legislation with the effect of globalization. The year 1995 could be accepted as a milestone in this context. Starting from 1995, depending on liabilities derived from the 1/95 EU - Turkey Association Council Decision, Turkey has entered a rapid course of harmonization of her legislations with the EU law and the international agreements. As a result of these endeavors a series of legislations entered into force in the areas of both copyright and industrial rights. In this context, in 1995 and the forthcoming years the legislations date back to the time of Ottomans, such as copyright, patent and trademark have completely changed. Again in 1995 the regulations on designs, utility models and geographical indications were entered into force for the first time. The regulations on integrated circuits and plant variety protection were implemented in the forthcoming years. However, the implementation process created some serious problems, since the regulations were made through decree laws rather than codes. On the other hand, although 15 years has passed over the implementations, the gaps and lapses in the related regulations have not been obviated yet. As a result, currently Grand National Assembly of Turkey is still working on the draft codes on the related areas of IP law. The drafts are still waiting to become law and to enter into force. Turkey became a party to some conventions and international agreements, such as Paris in 1925 and Bern in 1952. Starting from 1995 Turkey approved the other fundamental agreements, such as WTO/ TRIPs, PCT, Madrid Protocol, Hague, Rome, WCT and WPPT. In this context, as soon as the preparations on the draft laws become law, the Turkish IP legislation would become totally harmonized with the international standards. Thus it is approved by all authorities when the subject matter was laid on the table during the accession negotiations with EU that the background of the IP laws of Turkey are appropriate to the international standards. However it is also acknowledged that the problems are pilled up on the matter of actualization/enforcement of the rules. Furthermore, Turkey has also developed in the administrative structure along with the law reform. The Turkish Patent Institute (hereinafter TPI), which was founded in 1994, has a modern structure. Nevertheless there has been no improvement in the structure of the Turkish Copyrights and Cinema Administration, which is under the auspices’ of Ministry of Culture. The relevant institution is in the shape of a classic governmental body. The common problem of both institutions is the absence of qualified examiners and experts. The disputes over IP were being subjected to the authority of the general courts for long time. As a result of the technical and legal expertise that the law requires, in 2001 the specialized courts of IP were founded. Since then the specialized courts have been handling the IP related cases. Currently there are more than 20 IP courts in Istanbul, Ankara and Izmir. In the other cities county courts are authorized to handle IP cases. Especially in the recent years both the number and the quality of the court decisions have been increasing and the case law has been developing rapidly with the decisions of both first-degree IP courts and the Supreme Court. The contribution of the education of some judges of the IP courts in the foreign countries is very big in this sense. The numbers of the active trademark and patent agencies have also increased after 1995. Today there are hundreds of patent and trademark agencies all around Turkey. This rapid increase is relatively unhealthy although it aims to satisfy the needs of the sector. Although the sector necessitates experts in the fields, the trademark attorneys that have no prior law education or patent attorneys that do not posses technical background a far away from solving problems, rather they become the problem. Today, the number of the active patent attorneys, who posses technical background, is less then 100. Similarly there is a very little amount of trademark attorneys in the field that posses a law degree. Unfortunately, this is one of the biggest weaknesses of the system. A special interest to the IP law education in the recent years is also observed. The IP law classes that used to be elective have become compulsory lectures at some universities. Moreover there are considerable amount of academic articles published and again both official and private enterprises arranging various different activities on the subject matter. As it was already marked in the “Foreword”, the number of trademark, patent and design applications have incredibly increased in the recent years. In addition to the applications and the registrations and the disputes passed to the courts are in the tendency to accelerate too. The reason could be deemed as the fact that now the local firms are discovering the importance of the protection of IPRs and the interest of the foreign firms is increasing as well. The mentioned positive developments reflect to the process of legal remedy. For instance, in the area of IP law disputes the Supreme Court manages to conclude approximately one thousand and five hundred cases in a year. Furthermore depending on the increase in workload new IP courts are being founded in every day. As to the developments in copyright area, the collecting societies founded in the field of copyright law and especially society of musical works have begun to prepare their tariffs and to collect considerable amount of royalties from the users. They also play a crucial role in the fight against piracy. Briefly, it can be expressed that there has been essential improvements in the Turkish IP system compared to the pre 1995 regulations, despite some shortcomings and flaws. These improvements are not only in the legislative, administrative or judicial phases but also the interest of the related sectors is increasing every single day. 2. REVISION STUDIES ON LEGISLATION a) General Information As mentioned above (see In General) Turkey has renewed its IP legislation in 1995 and also made codifications for the first time in relation to the several aspects of IP such as; design, utility models and geographical indications. Therefore it could be said that the year 1995 is a milestone for the Turkish IP law. Codification activities have been continued also after 1995 and the process has not been completed yet. There are many reasons for the legislation studies not to maturate. First of all, the issue has a very dynamic structure by the effect of globalization. Truth to say, many countries have to make serious amendments in their legislations with the approval of TRIPs. In order to be adapted to the new developments, the legislation studies of the countries have turned into a never-ending endeavor. Secondly, reasons specific for Turkey also slow down the maturation of process. For instance, in 1995 the legislation with respect to patents, trademarks, designs and geographical indications were regulated by the government through decree laws, instead of acts, in order to quickly fulfill the international obligations. However, it has caused crucial negative legal consequences to regulate such areas by decree laws. For instance, the Constitutional Court has cancelled most of the criminal provisions of the decree laws, only because they were not regulated by acts. These cancellations hinder seriously the fight against piracy and counterfeiting. Nevertheless, the Parliament has not promulgated the necessary legal regulations yet except limited provisions regarding trademarks. On the other hand, the legislative revision studies should be separated into two categories as copyrights and industrial rights. Because management of the copyrights is in the hands of Ministry of Culture and Tourism, industrial rights are in the hand of TPI. Therefore different experts, who are totally independent from each other, must be executing the legislative studies in relation to these two fields. b) Copyright The Copyright Code Nr. 5846, dated to 1951, was in sleep for a long time so to speak. Since the right owners had not prosecuted their rights sufficiently, the Code could not find an application field until 1995. For example, although it was acknowledged in the Code to establish collecting societies, the first collecting society was finally established, with a delay of 35 years, in 1986. Here the biggest factor is the state of being indifferent to their rights by the right owners. The first amendment in this Code had been made in 1983. But the main amendments were made in 1995 and afterwards. 5 out of 6 amendments, which is the total number of amendments so far, were made after the mentioned date. With the ones in 1995, 2001 and 2004 almost one third of the Code were amended. Thus the Code, which was adopted from the German Copyright Code, dated to 1901, has become a ragbag. By conscious or unconscious interferences, supplementations against the philosophy of the code were made and the systematic of the Code has damaged. Lastly, the Ministry of Culture and Tourism is in the preparation of a new amendment consist of 40 articles. It is easy to forecast that the systematic of the Code will be damaged even more, since the draft has also been prepared with the same method. Here the thing to do is to take the opinions of the related environment and write down the amendment text with the participation of the academicians, who have studies on the copyright field. c) Industrial Rights Today’s legislation regarding trademarks, patents, utility models, designs and geographical indications consist of the decree laws put in force in 1995. The legislative studies, which were rushed in order to fulfill the international obligations were transformed into executive acts by a night and codified as decree laws. Of course the legal consequences of the wrongful road followed were very heavy. Most of the regulations enacted by decree laws, actually, should have been legislated by acts. For example, according to the Turkish Constitution Law the courts may only be founded by an act. However, the intellectual and industrial courts in Turkey have been founded by decree laws and their status is still arguable today. Although 15 years have passed from these regulations, the decree laws have not been transferred into acts. Today there are four separate codification studies with respect to patents (including utility models), trademarks, designs and geographical indications. It is not expected for these studies to become enactments in the short run. The authorities that took this into consideration have prepared a separate draft consist of 6 articles in order to fill the gap that was created by the cancellation decision of the Constitutional Court. In this draft, the criminal and civil sanctions in relation to patents (including utility models), designs and geographical indications are dealt. 3. PROCEEDING PROCEDURE a) Competent Court In the resolution of disputes regarding Turkish IP law, the legislator, which took into consideration the technical and expertise dimensions of the disputes, proposed the establishment of IP courts to carry out the duty in this field. For that purpose IP Civil and Criminal Courts were established in 2001 and they consist of only one judge. Depending on the increase of the disputes in this field, the number of the established IP courts in Istanbul, Ankara and Izmir are increasing as well every single day. In the mentioned three cities until now more than twenty IP courts has been established. In the cities, where there has not been a IP court founded yet, the Civil and Criminal Courts of First Instance are in charge in the capacity of IP courts. The judges, who command the IP courts, come from a law background and the technical issues are solved by the assistance of experts. In the IP related disputes the case that is filed by the right owner, according to the qualification of the case, may be filed either in the court where the plaintiff or the defendant is resided or in the place, where the action subject to the case was committed or the effects of the act were took place. In the cases that will be filed against the right owner by third parties the court in the domicile of the defendant is the only competent court. In the situation, which either the plaintiff or the defendant does not reside in Turkey, the competent court is the court authorized to handle the court actions for the address, which is the address of the attorney of the plaintiff/defendant’s office, registered in TPI records. If the record is deleted then the courts in Ankara, where the headquarters of TPI is placed are authorized. b) The Proceeding Procedure In IP cases, invalidation of a present registration, cancellation of a given verdict, determination of the infringement occurred, determination of the absence of the infringement, assignment of the right as a result of usurpation, prevention of the infringement, annulment of the consequences of the infringement, compensation for the damages occurred, seizure of the products and instruments that are subjected to infringement, acknowledgement of the property right to the right owner on these products and instruments or their annihilation and announcement of the ruling to the public can be claimed. Each of the mentioned claims can be subjected to an independent court action, but it is also possible to file a court action with all the mentioned claims. The written proceeding procedure is recognized as the general procedure for the civil and criminal court actions in Turkey and the proceedings in IP cases are carried out according to the general proceeding procedure. In the criminal cases, investigation and prosecution are subjected to a complaint by the right holder in principle. In other words, a public action cannot be filed ex-officio, unless the person, whose rights are violated, files a complaint against the infringers. There are also some exceptional cases, such as banderol crimes, that are ex-officio investigated and prosecuted by the public prosecutors and the courts. The right owner may withdraw his/her complaint or renounce his/her action any time before the verdict is finalized. The case drops with the withdrawal of the complaint or the renouncement of the case. In the cases, where there is more than one perpetrator, the case drops totally even when the complaint is withdrawn only for one or several perpetrators. A person, who withdraws his/her complaint or the case, may file a complaint or a case again with respect to the same issue. Therefore, withdrawal of the case depends on the permission of the defendant. However, the plaintiff does not require the permission of the perpetrator to renounce the right of filing a complaint or a case regarding the mentioned violation. Yet the person, who renounces his/her right, is not entitled to file a case or a complaint on the same issue later on. The case will drop in the event of waiver of the right, just like it happens in the abandonment or withdrawal. In civil suits, the right owner may request the transfer of the property right of the counterfeit products and instruments to him/her. In the criminal suits, it is not possible to grant the property right of the products and instruments to complainant. In practice, the civil and criminal cases are filed usually simultaneously. The possession of the counterfeit products is generally given either to complainant or to perpetrator in their capacity of trustee. In the proceeding phase, it can be alleged by both parties that the products that are subjected to examination are not the same with the ones that were seized. In order to eliminate this prejudice, to give the possession of the products that are claimed to be counterfeit to the court safety room is the most appropriate solution. On the other hand, just like in the general procedure, preliminary injunctions can be demanded in criminal and/or civil courts actions based on IPRs. The preliminary injunction issue in IP cases will be separately examined below. c) Burden of Proof The burden of proof is generally on the plaintiff. However there are some exceptions of this general rule. For instance, in the invalidation actions based on the non-use of the trademark, the burden of proof is on the defendant. In other words, in the invalidation actions based on non-use ground, it is sufficient for the plaintiff to claim that the trademark has not being used. If the trademark has actually being used, it is expected from the defendant to prove it. Otherwise, it is deemed as the plaintiff proved his/her case and the case would be accepted. Besides these exceptions, the burden of proof is always on the plaintiff. d) Evidences The IP actions are subjected to written proceeding procedure in principle. Therefore, the parties have to prove their claims especially by written information and documents. Within this context, lots of materials, such as the commercial books, invoices, catalogues, brochures, e-mails can be submitted to the file as evidence. During these cases the parties can call witnesses or submit affidavits to the file under the circumstances that the court accepts such materials as evidence. However since the affidavit application is uncommon in Turkish law, the evidence value of the affidavits, especially the ones that are submitted are low. The parties may demand from the court to assign an expert or an expert panel for examination of the file and use the expert report as evidence. Furthermore, the parties can also obtain reports with regard to a pending court action from the experts which are not assigned by the court. However, of course the reports that are prepared by private experts upon request by one of the parties are not considered equal with the reports prepared by the experts appointed by the courts. Most of the courts do not take these private reports into consideration. Some judges do not even permit the submission of these kinds of reports to the files. e) Duration of the Proceeding The duration of a civil or a criminal court action filed before the IP courts is approximately 1 to 3 years in Turkey. There are several reasons under this lengthen period of time. For instance; the courts generally appoint an expert panel for examination of the file and when the report is lacking or not adequate or upon the objections by the parties, it sometimes become compulsory to appoint a second or even a third expert panel for re-examination of the file. Thus, duration of the expert examination(s) on the file takes around 1 to 2 years. Upon the appeal of the verdict held by the IP court, the duration of the appeal examination before the Supreme Court takes approximately 15 to 18 months. Additionally, re-examination of the decision of the Supreme Court can also be demanded and the re-examination phase usually takes 6 to 8 months. Briefly, the approximate duration of the finalization of an IP court decision including the appeal and the re-examination phases takes 1 to 5 years. f) Cost of the Proceeding The cost of proceedings and the attorney fees in Turkey are very low compared to European countries. According to the data of WIPO Magazine, February 2010 Edition, for a patent case it is paid approximately 100.000 Euro in Spain, 80.000-150.000 Euro in France, 750.000-1.500.000 Euro in UK as attorney fees, whereas in Turkey approximately 10.000-50.000 Euro is requested as an attorney fee. The official costs of proceedings are also very low in Turkey. For instance, the official filing fee of an invalidation action is less than 100 Euro. In the further phases of the proceeding, the file is sent to a panel of experts, consist of 3 people. The fee for the expert panel is approximately 750 Euro. In the case, when the file is sent to a new panel of experts, the mentioned amount shall be paid for the new expert examination as well. On the other hand, the official cost of appealing an action is approximately 100 Euro. As in action for damages, in the cases, in which the matter of dispute is a certain amount of money, a certain percent of that amount, namely % 0.60 is deposited in the treasury of the court as the legal fee. Lastly, it should be mentioned that the party who loses the case covers all the legal fees and proceeding expenses, except the attorney’s fee that is paid to the winning party’s attorneys. In the case that the opposing party is represented by an attorney, the losing party condemns to pay a certain amount of legal attorney fee in favor of the opposing party’s attorney. 4. THE PROCESS OF PRELIMINARY INJUNCTION Pursuant to the art.103 of the Code of Civil Procedure, when there is a risk that the action in dispute might create an important danger or cause an irreparable damage, then the judge has the right to decide for a preliminary injunction against the defendant at the beginning of or during the court action. Nevertheless the preliminary injunction cannot be held in a way that provides the outcome of the main judgment. This article is the basis of the preliminary injunction procedure in the civil law disputes. IPRs are protected by private legislations. As a part of these private legislations the procedure of preliminary injunction is also specifically regulated. As a consequence, it is possible within the system to achieve faster and wide ranging preliminary injunction decisions in the scope of IP law. The incentive of this special regulation for IP law is the fact that in almost every infringement of any IPR, there is always a big risk of irreparable damage. For instance, on the contrary to the above-mentioned art.103, the art.77 of the Trademark Decree Law states that a preliminary injunction decision shall measure up to the ability of providing the effectiveness of the main judgment. In this context the owner, whose trademark right has been damaged has a right to demand preliminary injunctions, such as the cessation of the acts of infringement of the trademark rights of the plaintiff, the seizure of the infringing goods or ordering the placement of security for damages to be compensated. This regulation in trademark law can also be found in the Turkish Copyright Code. According to the art.77 of the Turkish Copyright Code the owner of a work shall demand preliminary injunction on the same context and by the same procedure with trademark owners. Similarly the art.64 and 65 of Design Decree Law and art.151 and 152 of Patent Decree Law contain the same regulations on the subject matter. The disputes on IPRs are in the duty of IP courts. Therefore the IP courts in the IPR disputes shall handle the proceedings for the preliminary injunction. However, depending on the general rules of procedure law it is seen that the preliminary injunctions claimed prior to the civil court actions (ex-parte) can be requested from the general courts and thus the decisions sometimes are held by the general courts as well. A preliminary injunction request can be filed before the filing of the main court action (ex-parte) or within the plaint petition at the time of the filing of the main action or during the trial at the first instance phase. It is allowed to file the request until the end of the first instance proceeding. If there is a preliminary injunction request prior to the filing of the main action, the subsequent court action (main action) must be filed within 10 days after the issuance of the preliminary injunction. All the evidences that will be submitted during the main court action must be submitted in advance when the request of preliminary injunction is filed. If the preliminary injunction request is ex-parte filed before the main court action, all the evidences that have already been submitted together with the preliminary injunction request must be re-submitted to the main file. This process prevents the advancement of the case and thus the decision and also brings extra costs. Therefore if there is not a very crucial and/or specific situation there is no need to request an ex-parte preliminary injunction prior to the main action and it would be better to file the request within the plaint petition for the main action. When the preliminary injunction is requested with the main case, it also takes one to two months to get an injunction. But at least this request does not affect the process of the case, since the examination on preliminary injunction request does not stop the regular flow of the proceedings. Both in the preliminary injunctions requested before or after the filing of the main action, the judge may seek for an expert report if it is required. The expert examination is another element that postpones the issuance of the final decision on the preliminary injunction request. Nevertheless the IP courts generally prefer to obtain at least one expert report. The duration of examination on preliminary injunction requests varies from 1 to 2 months to 8 to 10 months, which depends on the way the judge follows. The process may be concluded in 1 to 2 months if the judge decides to continue to the proceeding in the absence of the defendant, without sending any notification to him/her and also decides not to seek an expert report. However if the notification has made to the defendant and both of the parties has been called out to the courts and the judge decides to send the case file to an expert then this period may be lengthen to 10 months. If the action is also considered as a criminal act than it is preferable to file a criminal complaint to the public prosecutor other than requesting a preliminary injunction case when the length of the preliminary injunction proceeding in the civil courts are considered. The preliminary injunction decisions that are held within at least 2 months can be obtained in 2 to 3 days from the public prosecutor. The judge can rule in favor of preliminary injunction either gratuitously or by obliging the plaintiff to secure a deposit in return. When the deposit is obligatory that the party who got the preliminary injunction decision in favor must secure the amount of deposit in Turkish Liras in cash or lay up the letter of guarantee to the court’s pay office. The letter of guarantee can only be issued by the national banks of deposit. In practice it is not possible for a foreign enterprise that has neither a domicile nor an official branch in Turkey to obtain a letter of guarantee from the Turkish deposit banks. As a result the foreign firms may only secure a deposit in cash. The deposit will be held in the pay office of the court until the decision of the first instance court is become final and binding. Yet if the case is dismissed in the end of the proceeding and the defendant suffer damages, for example because of the preliminary injunction preventing him from use of the trademark, the defendant is entitled to file an independent court action in order to compensate his/her damages from this deposit. However it has to be mentioned that the rejection of the main case does not necessarily mean that the preliminary injunction decision was unlawful and/or the defendant has been suffering damages because of this decision. The defendant is obliged to prove that he/she had suffered losses precisely because of the unlawful preliminary injunction and to submit solid evidences to show the size of his/her damages. Since the secured deposit is not being valued in any ways, the amount of money that was secured loses its value as the time passes in the course of proceedings. This is the most essential element that impels the firms to think twice before requesting a preliminary injunction. The amount of the deposit may vary according to the volume of the enterprises of the both parties and/or the context of the commercial activity that will be prevented by preliminary injunction. This amount can be a couple of thousand or of hundred thousand Turkish Liras. In the special cases such as an infringement of a pharmaceutical patent, the million Turkish Liras can be requested as the guarantee. Within this year in one of the cases where our firm is representing the plaintiff, it was held to a preliminary injunction against the biggest Turkish national bank by the IP courts under the obligation of securing an amount of 150.000 Turkish Liras (app. 75.000 Euro) as a deposit. As a result the use of the trademark in consideration has been ceased as a precautionary measure. This amount is one of the highest amounts that have been appraised by the IP courts so far. In the light of this information it can be stated that the procedure of preliminary injunction carries a fundamental value in the area of IP law and may be deemed as a very important legal instrument for the aggrieved party. Especially when the duration of the lawsuits is taken into account, it is an essential advantage to solve a dispute at the very beginning of the lawsuit by requesting preliminary injunction. 5. THE POSITION OF EXPERTS IN LAWSUITS The courts seek the assistance of the experts for the subjects that necessitates special or technical knowledge and the experts are considered as the assistants of the judge. Following the collection of evidences the court sends the case file to the experts. In general, the courts order from the experts to submit a report considering the claims and the defenses. In practice it is rarely seen that the judges describe the duties in relation to what the experts will examine. However the application where the judges clarify the scope of the examination and the duties of the experts is more incisive. In practice a lawyer, a designer/an engineer/an artist, according to the relevant dispute and a financial advisor or a sector expert are inducted as a panel of experts. Both parties have the right to object to the ascertained experts within three days after the appointment of the panel of experts is learned. If the court finds the objection reasonable, than another expert is appointed instead of the objected one. As long as the objection is made depending on a solid ground, it is usually accepted by the courts. [...]... protection of 25 years originating from design law, where as copyright law provides a protection of life plus 70 years Again except the right of attribution there are no moral rights acknowledged for industrial property rights On the contrary the moral rights carry a big importance in the Turkish copyright law since it belongs to the continental law system In case of an infringement to the industrial rights;... the inventions are protected by patent and utility model certificate as well In Turkish legislation, in order to obtain a utility model certificate for an invention, it is required and sufficient to be novel and applicable to industry Differentiating from the draft texts in EU law on the subject matter, in Turkey the inventive step clause is not required In Turkish law, the absolute novelty principle... serious loss of rights in practice, since the courts are applying the principle frequently The courts apply the principle both in the invalidation and the infringement cases When the results are examined, for the right owners it is not a choice but a necessity in Turkey to act both against unlawful registrations and infringements Otherwise the rightful owner/ genuine holder of the right may lose the... doctrine, on the other hand we have tried to indicate crucial developments and current problems of the emerging issues Therefore, although the themes examined within this study may seem independent from each other, they were brought together since they are basically related to the current developments and problems of Turkish trademark law 2 THE OBTAINMENT OF TRADEMARK RIGHT AND GENUINE HOLDER-SHIP In Turkish. .. an IP right not asserting the right for a long time accepted as a loss of right In Turkish IP Law, the institute of loss of rights due to the remaining silent based on the equity principle and originates from the principle of good faith stated in the art 2 of the Civil Code The Supreme Court refers to the principle of acting like a prudent businessman (due diligence) as well in its decisions If the... may lose the case, where he/she is right, because of the late intervention 10 CUSTOMS APPLICATIONS IN THE FIGHT AGAINST COUNTERFEITING GOODS AND PIRACY a) Tracking Procedure in the Customs The determination, prevention and cessation of the IP infringement are not only possible inland according to the Turkish law, but it is also possible within the customs areas The right owners, who want to benefit from... application, in case of the determination of any goods that infringe the right subjected to the application in the customs, the General Directorate of the Customs seizes the related goods and informs the right owner to initiate the necessary legal process After this information the right owner must file a court action against the infringement within the legal period and also take a preliminary injunction... substantive law, there is no special regulation regarding the issue In accordance with the source law this term is determined as 5 years in the Draft Trademark Code Although there is no substantive regulation, this principle is used frequently in the Turkish case law The term of remaining silent is specified according to every concrete case For instance, in a decision of Supreme Court dated to 2000, the... result, in Turkish law the uniqueness principle in trademarks is acknowledged and this principle is softened by the decisions of Supreme Court on grounds of “loss of rights due to remaining silent” and “antecedent rights deriving from the use of the trademark by the parties” 4 THE BAD FAITH ISSUE AND ITS PLACE IN THE TURKISH TRADEMARK LAW There are two ways that bad faith can appear in the meaning of... legislation, it is gone backwards from the point, which was reached after long years of fighting against counterfeit In order for the trademark owners not to incur losses even more and in order to move forward in the fight against counterfeit, the draft law, which there is still ongoing studies, has to be promulgated as soon as possible III PATENT LAW 1 IN GENERAL Inventions in Turkey used to be protected by . EMERGING ISSUES IN TURKISH INTELLECTUAL PROPERTY LAW Published by Suluk & Kenaroglu Law Offıce at Smashwords Copyright. CONTENTS PREFACE ABBREVIATIONS I. TURKISH INTELLECTUAL PROPERTY LAW SYSTEM In General Revision Studies On Legislation Proceeding Procedure The Process of Preliminary Injunction The