Intellectual Property Law
In the field of Intellectual Property Law that can also be seen as the metaphysical area of the law, not the ideas but their expressions recorded on a physical medium and objectified as such are protected. Protectable intangible products may include works, inventions, designs, integrated circuit topographies, trademarks, geographical indications, commercial titles, company names, Internet domain names etc. that can be classified depending on how they are shaped. Legal protection of the intangible products is expressed with the term “rights on intangible products” or shortly “intellectual rights”. The World Intellectual Property Organization (WIPO) divides intellectual rights into two categories. The rights on scientific, literary and artistic works are classified as author rights and rights related with inventions, designs, trademarks, geographical indications etc. are interpreted as industrial rights. The rights of artists that perform a work, producers who make audio-visual records and radio-television companies on such woks are defined as neigbouring rights. The protection of intellectual rights is ensured by various legal arrangements depending on the form of expression of the idea. Some intangible products are protected with certificates or inherently, under the provisions of a specific law or several laws
A patent is a certificate given by a public institution to the owner of an invention which can be applied in the industrial field. This certificate provides to the owner of the right a monopolistic negative right by which the owner may authorize others to use the invention and prevent its unauthorized use. The protection of an invention by a patent expires in 20 years after the date of the relevant patent application. This duration can’t be extended. After this period of 20 years, the invention may be used by everyone.
Although there are some conditions in patent laws on how a patent protection allegation can be put forward against third parties, the patent protection for an invention starts on the date of patent application.
In Turkey, the protection of inventions is ensured by two separate certification system: Patent with Review and Utility Model.
An invention is a new technical solution which includes an inventive step to solve a technical problem. According to the relevant legislation about the inventions, an invention needs to satisfy the following requirements to be protected by a patent;
The invention must be novel (it shouldn’t have been published or disclosed to public anywhere in the world prior to its application),
It must include an inventive step -“going beyond the existing state of the technique”- (the inventions shouldn’t be known by a specialist expertized in the relevant technical field in which the invention belongs to) and
It must be susceptible to industrial production (it should be reproducible).
An invention must have a technical feature as a prerequisite to be protected by a patent. To decide whether an invention does have a technical property or not, the invention can be evaluated with the following criteria, as an example.
Does the invention create a technical consequence?
Does the realization of the inventions require technical approaches?
Does the invention solve a technical problem?
Is the invention prominently or at least indirectly defined with concrete technical methods?
The evaluation of whether the subject matter is an invention that can be protected by a patent must be made separately from the examination of patentability criteria of inventions.
Özden & Güçlü Legal offers services such as searching the patentability of inventions and conducting freedom-to-operate analysis, providing legal opinions, preparing patent specification, rendering patent portfolio management, establishing national and international registration strategies, providing answers and legal opinions against negative patent research and examination reports and providing answers against third party claims, following up the payment of installments and transactions about the use of the patent with the assistance of specialists, engineers and European patent attorney solution partners (see the “Our Team and Solution Partners” tab of our web site).
Özden & Güçlü Legal also offers attorney services for dispute settlement and preventive consultancy services before and after the disputes are evolved as well as consultancy services for patent wise strategic management and commercialization of intellectual rights and contractual services. You can find the details of these services under the Innovation topic of our web site.
LAW OF ARTISTIC AND LITERARY WORKS
All kinds of intangible and artistic works that are defined as scientific, literary, musical, fine art and cinematographic according to the Law of Artistic and Literary Works No. 5846 are deemed as works. The owner of a work is the real person who has created it. The owner of an adaptation and a compilation is the person who has adapted or compiled it, provided that the rights of the original author are not prejudiced. As far as cinematographic works are concerned, the director, the composer of the original soundtrack, the script writer and the dialog writer are co-owners of this work. In animated cinematographic works, the animator is one of the co-owners of the work. “Authority to Disclose the Work to the Public”, “Authority to Designate the Name”, “Right to Prohibit Changes in the Creation”, “Rights of Owner of the Creation Against the Possessor (Buyer or Beneficiary of the Work) and Proprietor” are moral rights of the author. These rights can only be used by its author and can’t be transferred or inherited.
The right of usufruct of a creation that is not yet presented (published) to public exclusively belongs to its author. And the right of usufruct of a work presented to public is limited with the rights defined as economic rights in the Law: “Right of Adaptation”, “Right of Reproduction”, “Right of Distribution”, “Right of Performance” and “Right to Communicate a Work to Public by Devices Enabling the Transmission of Signs, Sounds and/or Image.” Economic rights are not interconnected. Permitting the use of any of these rights shall not mean that permission is automatically given to use the other rights. The works that are protected under the Law of Artistic and Literary Works enjoy a natural protection from the moment of their creation.
Another category of right ownership protected within the scope of the Law of Artistic and Literary Works is neigbouring right ownership. The term of neigbouring right is about the rights seen as close, similar or related to works and used to refer to the rights of the performing artists, phonogram (voice recording) and film producers and radio-television companies. A link is established between such products and the works and the right holders are given the right to allow others to benefit from their products under certain conditions, provided that the rights on the works are not prejudiced.
A work doesn’t need to be recorded (registered) or approved by any institution to be protected.
But certain transactions can be made in order to protect the rights on the creation and particularly to facilitate proving the ownerships of the rights.
The Ministry of Culture and Tourism has a registration system in place for that purpose.
Many people and particularly the authors of artistic and literary works are concerned that their works or ideas could be stolen and used without authorization. Consequently, they adopt methods like having their works approved by different institutions or send them to their own address by registered mail to demonstrate the initial date of dissemination. The time stamping applications i.e. Tasdix or CopyRobo are being used to create digital time stamps that can be used as evidence in conflicts before the courts to demonstrate the time when the data are electronically stamped and publicized in a computer environment and that no change has been made on them since that date.
If the user has a mobile signature, the certificate generated by Tasdix or Copyrobo after a transaction made with this mobile signature includes the data about the user who has made these transactions. See http://www.tasdix.com/DataBank.aspx; https://copyrobo.com/
The first area of expertise of Att. Önder Özden and Att. M. Fatih Güçlü, founding partners of Özden & Güçlü Legal, in the field of intellectual property law is “Law of Artistic and Literary Works”. The founders who have various articles and books in this field had provided consultancy services as attorneys of the collecting societies empowered to defend and make collections on behalf of the authors, neighbouring right owners and right holders, before founding Özden & Güçlü Legal. They have represented publishing houses, authors and artists in the field of the law of artistic and literary works. They have also contributed to the work on modification of the Law on Artistic and Literary Works in collaboration with different law firms and associations.
Due to the technological advances, innovative and competitive environment, the visuals and legal protection of appearances of products have become more important and rendered a competitive power and advantage to the corporates. We need to mention at first that three dimensional size of a product and two dimensional decorations on it are accepted as being part of the “design” concept.
The design means the external look of a product. This look can be the shape of the product or the looks/layouts that consists the lines, illustrations, decorations, colors and various other items. But the most important point that one should not overlook is that the look/appearance comprised by the design protection doesn’t include technical features of the product. If a product has functional features that include innovation which go beyond the known state of the technology and susceptible to industrial application, it should be protected by the patent law instead of design law. Nevertheless, a product having technical functions may also have an external look comprised of new features that make it significantly distinctive than similar products in the market. In that case, this product can also benefit from the design protection. Consequently, a single product can theoretically be protected by several intellectual rights, under the context of “Cumulative Protection”. The important point here is to determine with which rights and in which areas a product should be protected from the beginning when innovative ideas transform to products, in a strategic manner and in conformity with the commercial goals of the company.
Designs must be “novel and distinctive” and must fulfill the criteria of being novel in the whole world to be eligible to protection. These two criteria are prerequisites for designs to be registered and protected pursuant to the provisions of the Turkish Industrial Property Code. The concepts of “artistic and literary work of scientific and technical nature that bears the characteristics of its owner” specified in the Law of Artistic and Literary Works, “the sign that provides distinctiveness” specified in the trademark law and “a product that doesn’t create confusion with the goods of others” specified in the unfair competition clauses (Article 54/5) of Turkish Commercial Code No.6102 demonstrate the criteria of eligibility for the cumulative protection.
In our country, designs are protected by the registration system of Turkish Patent and Trademark Office and the protection period is five years and can be renewed with periods of five years up to 25 years in total. After 25 years they fall in public domain. We should mention by the way that the designs that are not registered can also be protected under the newly enacted Industrial Property Code No.6769 and unfair competition rules of Turkish Commercial Code or even by the provisions of the Law of Artistic and Literary Works as a “work”.
Considering the above, we may say that designs are one of the most viable industrial rights that are susceptible to cumulative (aggregate) protection of which we have mentioned above. A design can also be protected by patent, trademark and in general, unfair competition provisions beside the design protection, if it fulfills the requirements of such provisions. For instance, a cartoon character of Walt Disney Company may be simultaneously protected as a work, a trademark and a design. If we further develop this example, if they produce a toy of this character and this toy includes some technical features that go beyond the known state of the art which makes it distinctive from similar products, it can even be protected by patent registration.
In case the designer discloses its product prior to filing an application on which the design is applied to public by exhibiting, selling, communicating to public etc., this design shall be deemed to have been made available to public. The novelty which is one of the criteria of eligibility for registration is then destructed and the design can’t be registered anymore. Nevertheless, the lawmaker has also envisaged a grace period in order to reduce the pressure on the designer in this respect: this grace period is a term of 12 months commencing from the date of application. Public disclosures/statements made during this period by the owner of the design or third parties upon the permission of the design owner does not destruct the novelty of the design.
On the other hand, the application process of designs is now subject to substantial review in respect of novelty criteria under the newly enacted Industrial Property Code No.6769 similar to the application processes of trademark and patent.
Another branch, that has been developed in the recent past years and is gaining more and more importance, of the field of design law which protects the external appearances of the products, is packaging designs. The original design of a product or visual designs on the packaging may be protected by design registration if its form combinations satisfy the requirements. The small local grocery stores which were selling wide range of products where we used to buy our daily needs in our childhood are now replaced by supermarkets in huge shopping malls and unlike the small grocery stores where there was only one seller who could personally recommend the products, customers in supermarkets are generally left alone with the products. This situation unavoidably makes new packaging designs that can influence customers and the innovative ideas in this field more important.
Özden & Güçlü Legal, in addition to its experience of many years in registration process, consults its clients on the necessity of creating a proper design/packaging design and tries to minimize the related legal risks. At this point, it collaborates with its solution partners specialized in designing and helps its clients to create a proper market strategy surrounded by visually the most appropriate and legally the least risky designs. Under the context of preventive law, Özden & Güçlü Legal aims to prevent its clients to adopt wrong strategies thus to save time and money. Besides rendering all types of contractual services in this field of Law, Özden & Güçlü Legal also offers litigation services.
New inventions, utility models and original designs are products protected by intellectual rights and a distinctive mark is required to offer and sell such products to consumers so that they can be distinguished from other similar products. Distinctive marks are of significance for corporates. A trademark, briefly, is a distinctive sign that allows a corporate to distinguish its products or services from the product or services of other corporates. We can also say that a trademark is “the fingerprint of a company”. A trademark is a distinctive sign which represents all the assets of a company.
All kinds of marks that can be displayed by drawings or expressed in similar ways, printed and reproduced, including but not limited to personal names, words, shapes, letters, numbers, shape of the goods, packages, can be used as a trademark. Pirelli, Coca Cola, Ferrari are each a product brand, or in other words a trade mark while brands like McDonalds, Starbucks, Hilton are service marks. In short, a trademark must have a structure that can be displayed by drawings or expressed in similar ways, printed and reproduced. It should also have a distinctive character with respect to the product or service to which they refer. For instance, the word “Wafer” can’t be distinguished by a wafer product and therefore it can’t be protected with respect to this product. But the same word “wafer” can be protected as a service mark, let’s say, for a café-restaurant. This means that, a trademark gets more distinctive as it is gets more distinct from the group of products or services to be protected by this trademark. We can make the same deduction with respect to “Apple” which is now a well-known brand in the industry of computer and other electronic products, the word “Apple” doesn’t describe company’s products at all.
Speaking of distinctiveness, it’s important that a trademark can also be technically distinctive. Technical factors like visual characters, colors, color combinations, vocal harmony, number of syllables, shape and word combinations that can create a difference as a whole, whether the trademark has a story etc. are important parameters that increase the perceptual selectivity and distinctiveness of a trademark to make it a strong trademark from the beginning. The brand “Sony” is a good example of such trademarks. This word has no meaning and doesn’t describe the relevant products and is therefore a trademark with strong distinctiveness right from the beginning.
In Turkey, trademarks are protected for a term of 10 years under a registration certificate to be issued by Turkish Patent and Trademark Office pursuant to the relevant laws and regulations. A trademark can be protected indefinitely with a renewal fee to be paid once in every 10 years. Based on this fact, when a cumulative protection (which includes several intellectual rights) is concerned, we observe in practice that trademark protection is sought initially.
When creating an intellectual right protection on a product based on innovative ideas thus obtaining a proper trademark protection, having an appropriate application/prosecution strategy is very important. We see often that advertising agencies or brand specialists create trademarks without making a prior legal risk analysis and then these trademarks are being brought to trademark attorneys for registration. Very often, a preliminary research shows that filing an application for such trademarks may be legally risky and therefore, we tell our clients that such application wouldn’t be advisable. Today, it is indispensable to include a lawyer to the process of trademark creation together with the technical team to avoid such situations which cause wasting time and money. Another important point to mention is that the application strategy should also include international trademark registration procedure in line with the commercial goals of the companies and include the registration of domain names. On the other hand, relevant goods and services thus, classes must be correctly determined when filing a trademark application and the owners of the trademark who know the industry better than anyone are recommended to collaborate with the trademark attorney to determine classes in which the trademark should be registered.
It shouldn’t be forgotten that trademarks which can easily be distinguished due to goods and services in which they are registered, with a strong customer perception and a story will create a difference in the relevant industry and accepted as strong trademarks from the date of their creation compared to trademarks which don’t involve creativity and are found by combining a few common/generic names. It’s obvious that when such trademarks are correctly created, protected and managed they can constitute an important item among the intangible assets of the registrant and that their value can even exceed the total value of the tangible assets of the company. Therefore, the phase of creation and registration of a trademark is the most important phase for a trademark.
Özden & Güçlü Legal, in addition to its experience of many years in prosecution services, informs its clients on the necessity of establishing a proper trademark strategy and focuses on mitigating potential legal risks. At this point, Özden & Güçlü Legal collaborates with its solution partners who are specialized in visual trademark design and helps its clients to create a proper market strategy comprised of visually and technically the most appropriate and legally the least risky trademarks. Under the influence of preventive law, Özden & Güçlü Legal aims to prevent its clients to adopt wrong strategies thus to save time and money. Besides rendering all types of contractual services in this field of Law, Özden & Güçlü Legal also offers litigation services.