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At-a-glance: Türk Patent Enstitüsü Hipodrom Caddesi No 115, 06330 Yenimahalle/Ankara, Turkey Tel: +90 312 303 1000, Fax: +90 312 303 1173 Email: info@turkpatent.gov.tr Website: www.tpe.gov.tr For some years now, an awareness of the importance... [more]

For some years now, an awareness of the importance and value of IP among Turkish businesses has been growing. Combine this with a prosperous economy that has drastically increased the number of international businesses looking to establish operations in the country, increasing demand for IP protection, and you have a thriving market. "It has been very active. We experienced about 25% growth in terms of revenues," is one partner's summary of 2012. Another notes: "Turkey is becoming more attractive for the whole world, so we have a lot of enquiries about investment in Turkey and IP rights are a big part of that."

Some recent IP statistics have been extraordinary. In 2011, the number of domestic patent applications increased by 26% on the previous year while trade mark filings have grown exponentially – the 118,000 registered in 2011 was up 41% on 2010. Additionally, the number of patent applications made by foreigners in Turkey has doubled between 2000 and 2011, and there was almost an eight-fold increase in patent applications by local entities outside Turkey between 2010 and 2011.

Generally, these swelling numbers are attributed to the economy, the evolution of the IP market, and the Turkish Patent Institute's (TPI) drive to encourage innovation but, on the trade mark side there are two further reasons. One is a matter of jurisprudence. "Our court of appeals says once you have a registration, no matter if it's in bad or good faith they protect it unless it's cancelled," says one partner. Trade mark protection in Turkey is absolute and even if a mark is eventually cancelled, which can take up to three years, there are no criminal sanctions available under local law.

Together these two factors encourage trolls and counterfeiters. "During the opposition period companies must be very vigilant. You cannot stop the registration once it is granted and [if it is cancelled] they don't have to pay any damages. Abusive registrations are the worst part of this business, especially for innovative and foreign companies. They mean we face hundreds of cancellation actions," warns one attorney.

While this has become a problem for the whole industry, a change in the way judges rule and think is thought to be unlikely because of the implications for the domestic economy. "The judges know the impact it will have on small, local companies. It's not that the judges aren't aware of the situation; they are taking a position. The position can only change when the local economy won't be affected by it. But at the moment Turkey is a manufacturing country. It will change when the Turkish industry becomes more innovative and a trade mark creator."

Another contributing factor to the recent increases has been changes made by the Turkish Patent Institute (TPI) to registering trade marks under class 35. Traditionally it covered retail services and there was no need to indicate which goods an applicant hoped to register a mark for. But, in 2011 the TPI asked applicants to specify, with the theory being the same mark could apply to different products. While the intention was good, the execution was not. Fearing new registrations would invalidate existing general ones, everyone refiled. This led to a sharp U-turn by the TPI. "After one month it was facing a lot of criticism, because all the right holders that had filed under the entire class 35 said their rights had been erased, so the practice was changed again," says one attorney. "Now there is a new system for the new ones, but the old ones still cover everything. When you file now, if you want to have all the classes you can have them, but if you want to get perfume, you can get perfume but not against the older classes. It's quite complicated."

The contentious side of the market in Turkey has been active too, to such an extent that courts have become bogged down with heavy caseloads. "IP courts are really busy, too busy. Obtaining a preliminary injunction is difficult because of the volume of the work," remarks one litigator. Lawyers also lament the scarcity of specialist courts and judges. "There are only four or five IP courts. This is not enough for a country as big as Turkey," remarks one.

The government has drafted IP laws intended to replace the country's existing decree laws, which only contain civil sanctions for those found guilty of patent or design infringement. "The criminal provisions were cancelled by the constitutional court. It said a decree law cannot regulate criminal issues, that if you are going to put in criminal provisions you need an act of parliament," explains one partner.

While lawyers think criminal sanctions should be implemented to act as a deterrent, there is some concern that moving hearings from the civil to the criminal court will negatively affect patent disputes. "Patent litigation needs a more in-depth trial through technical experts. It's usually not very easy to understand why the patent is unique, so a patentee would prefer not to have his patent evaluated roughly and quickly by a public prosecutor," says one partner. However, when and if the drafts are likely to become law is uncertain. "IP is not a priority. There is a big list of things to be dealt with from the EU and IP is only a small part of the whole," notes one lawyer.

Changes to procedural law in civil cases implemented in October 2011 may alleviate lawyers' concerns about the speed and quality of decisions. "Deadlines have been reduced and are now inextensible," says one litigator. Additionally, an expert examination by someone in the relevant field is now compulsory. "Before the experts could be legal, but now the judge has to decide on legal matters and field experts are asked to answer specific questions which are not legal," the litigator adds.