 
# 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.

The duration that has been given to the experts to submit their report is approximately 2 months. However in practice mostly the deadline is always exceeded and the case files generally return from the experts within 6 to 10 months.

In the case of a delay the court shall demand, by sending a cahier, the submission of the report by the request of one of the parties. A criminal complaint may be submitted by the courts when the experts do not obey the date set forth in the cahier for the submission of the report. In this situation the court asks also for the return of the case file without any examination.

The parties can also object to the expert reports. If the report is not adequate, in the meaning of not clearing the necessary points or if there are contradictions in the report, then the parties may demand according to the situation either to obtain an additional report from the same experts or to appointment of a new panel of experts for a second report. The courts have a wide range of power of discretion in this matter and can accept the objection(s) of the parties or deny the request if it finds the report adequate. However the Supreme Court reverses the first instance decisions when they are based on an inadequate, incomplete, contradictory expert reports or the reports not suitable to audit.

To prepare a false report is a crime. If there is a doubt on the objectivity of the experts, the court or one of the parties can file a criminal complaint against the experts. The experts stand trial just like the judges in the high criminal courts for the negligence or the misconduct of the duty.

There are three people in the expert panels in general. It is usually assessed 1.500 TL (750 Euro) in total as the fee of three experts, approximately 500 TL for each. However this amount may vary according to concrete case and can be raised to the amount of 4.500 TL (2.200 Euro). As there is a possibility that the case file may be sent to a second or even a third panel of experts according to the situation this cost can be doubled or tripled.

The party who lost the case pays also the expert fees. However it must be mentioned that the plaintiff pays the fees of experts in advance after the court appoints the panel of experts. In the case of plaintiff winning the case the amount of money that plaintiff has paid as the expert fee will be collected from the defendant at the end of the trial.

In the practice of Turkish Law, the IP courts seek the assistance of experts nearly in every single case related to copyrights, patent, trademark and design law and unfair competition. The Supreme Court obliges the examination of experts even in the matter of similarity among trademarks and depends on the reason that the disputes regarding IP law necessitate special and technical knowledge. In our opinion the judges of the IP courts should be entitled to decide whether the trademarks constitute a likelihood of confusion or not. Likewise in design cases the judge of the IP court can act like an informed user and examine whether the designs are similar or not. Briefly the courts should not be held obliged to send the case files to experts unless they find it indeed necessary.

Since the practice of Turkish IP law is relatively new, yet neither the lawyers nor the sector experts possess adequate knowledge. On the other hand it is not usually possible in the big cities for the appointed experts to come together and prepare the report as a panel. Furthermore the specialized and/or sector expert usually faces difficulties in defining what to examine, without the guidance of the legal expert. Even if they make the right definition, they generally examine the facts according to their own knowledge, rather than the fundamental principles mentioned in the relevant codes. For instance in a design case, although the law does not require an aesthetic feature for a design material, aesthetic feature is sought for the design material to enjoy the design protection and they can examine the relevant designs from technical angles rather than confining the similarity with the visual properties of the designs.

Depending on these drawbacks in the expert examinations the cases regarding IPR drag on. Plus the IP courts generally obtain an additional report or a second report by forming another panel of experts. Furthermore if a contradiction between two reports is occurred, then just to overcome this contradiction between the first and the second report a new report may be requested by forming a third panel. Although the expert report is not binding for the judge according to the Supreme Court, the situation is deemed as a reason to reverse the judgment when the judge sought the expert report but held the decision on the contrary of the report. According to the Supreme Court to reach to a decision depending on an expert report, which is not suitable to audit is another reason to reverse the judgment. The 11th Civil Chamber of the Supreme Court is currently responsible for the disputes of IP law and it is determined that approximately 65 cases out of a hundred are subjected to reversal. Because of all these reasons it takes more than five years (including the appeal phase) for an IP case to be concluded. Despite all these endeavors the rightfulness of the judgments are still arguable. The negative contributions of the expert reports are considerable in these unlawful decisions.

As to the solution of the problem, the habit of sending every single case to the experts must be abandoned. In order for the expertise institution to work effectively, the people who are going to be experts should be educated. In this context, it can be stated that there is need for an expertise institution.

6. THE OBLIGATION OF SECURING DEPOSIT FOR FOREIGNERS

a) In General

As a general rule there is no requirement to secure a deposit or bond of any kind for the plaintiff, follower or intervener (real and/or legal person), who has a domicile in the country of filing. Nevertheless there are exceptions of this rule where foreign plaintiffs are obliged to secure deposit upon initiation of a court action. In case the court rejects the court action, the security is used to compensate for court and enforcement fees and the defendant's damages. The amount of the security is determined by the court. Generally, the amount can be deposited in the form of cash, securities, real property (mortgage) or bank letters of guarantee (bond). Although it seems like the procedure of deposit seems to be settled, it is experienced that problems may arise by reason of their foreign nationality or of lack of domicile or residence in the country, especially when the IP cases considered.

In Turkey this matter is subjected to several codes and of course regulated according to the international agreements that have been already signed. On this matter, first thing to concentrate on is the Turkish Judicial Code, nr.1086. Art.97 of the Code states that; it is obligatory to secure a deposit for real and/or legal person that have filed a court action or made a demand before the courts and enforcement offices and have no domicile in Turkey. Citizenship does not have an importance in this context. Therefore even the Turkish citizens that are not resided in Turkey shall secure a deposit. Having said that, it has to be reminded that this obligation is only for the plaintiff and the ones who start an executive proceeding. Therefore neither the domicile nor the nationality of the defendant has an effect in regards. Here the point to take into account is that the defendant has to claim the obligation of securing the deposit against the plaintiff. The claim is considered as a preliminary objection, which brings the second attention point: It must be asserted with the courts before the judge begins to explore the merits of the case.

The Turkish International Private and Civil Procedure Code, No: 5718 comprise a similar clause on art.48. The variation from Turkish Judicial Code art.97 regarding the merits of the rule is that the obligation of securing deposit in International Private and Civil Procedure Code is based on the nationality instead of domicile criteria. Thus even the foreigners that have a domicile in Turkey are not qualified to be exempted from this obligation. The exemption is expressed on the second paragraph of the article as the principal of reciprocity. In accordance with this principal; in order to be deemed as released from this obligation, there has to be an agreement among the countries that hinder the obligation of deposit reciprocity. The list of the bilateral agreements that Turkey has signed with other countries can be asked from the Ministry of Justice.

However this clause in International Private and Civil Procedure Code has obviated by the Hague Convention on Civil Procedure 1956 (hereinafter Hague Convention). According to the art.17 of the Hague Convention there may be no security, bond or deposit of any kind imposed by reason of their foreign nationality, or of lack of domicile or residence in the country, upon nationals of one of the contracting states, having their domicile in one of these States, who are plaintiffs or parties intervening before the courts of another of those States. As a result nationals from the contracting states of the Hague Convention shall be exempted from this obligation for the cases filed in Turkey.

b) Deposit in IP Cases

Although the general rules are mentioned above, when it comes to the regulations for IP rights, there may be some misunderstandings in relation to procedural regulations and the obligation of securing a deposit. These problems emerge from the wrong interpretation of the international agreements such as TRIPs and Paris Convention. The national treatment clause has accepted in both of these agreements in relation to the laws regulating IP. According to the national treatment clauses stated in art.2 and art.3 of Paris Convention and art. 3 of TRIPs; nationals of any party state shall, as regards the protection of IP, enjoy the advantages in all the other countries of the party states, which their respective laws now grant to their nationals (The Principal of National Treatment). Consequently, this provision accepts that all the nationals of the contracting states will have the same protection and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with. However in the following paragraphs it is decided that the provisions of the laws of each of the contracting states relating to judicial and administrative procedure, to jurisdiction and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industrial property are expressly reserved.

However in some cases, mostly regarding trademarks, the Turkish Supreme Court has ruled in favor of the foreign plaintiff by exempting him from the obligation of deposit, depending on the national treatment principle. But unfortunately, this application is not very consistent. During years the Supreme Court has changed its point of view many times. For instance, in two separate decision dated to 2001 and 2006, the Supreme Court ruled that the foreign plaintiffs are obliged to secure a deposit according to the art.32 of the International Private and Civil Procedure Code. The Supreme Court did not even mentioned principle of national treatment. Nevertheless in 2006 again it was held that on grounds of the execution of the national treatment principle the foreign plaintiffs are not under the obligation of securing deposit. The Supreme Court upholds still this approach and expressly stated this point of view in its decisions dated to 2007 and 2008 by expressing that according to the national treatment principle acknowledged in TRIPs and Paris Convention, there is no obligation for the foreigners to secure deposit.

It is obvious that the obligation of securing deposit is an institution related to judicial procedure and also the aim of these agreements are to harmonize the merits of the application of IP law not the judicial or the administrative procedure. Therefore it is not a proper application of these rules to rely on these agreements to abolish the obligation of deposit.

As a conclusion, with the exception of Hague Convention and the bilateral agreements that recognize the principal of reciprocity among the contracting states, it can be easily declared that the ones who file or follow up or intervene in a case in Turkey have the obligation to secure a deposit. This procedural rule is enforceable for all types of cases as well as IP. The deposit that is demanded during the filing is an institution related to the procedural law. Therefore it is not possible to state that the principal of national treatment in TRIPs and/or Paris Convention shall dissolve the obligation to secure a deposit for a foreigner. In other words; the articles regarding national treatment among the contracting states in TRIPs and Paris Convention does not hinder the art.32 of International Private and Civil Procedure Code that obliges the foreigners to secure a deposit; nevertheless art.17 of the Hague Convention does.

7. THE PRINCIPLE OF CUMULATIVE PROTECTION

An intellectual creation can fulfill the protection conditions of more than one applicable law that regulates IP. For instance, design law can protect the original design of a car; patent law can protect an invention which provides fuel saving by bringing an aerodynamic feature to the car by the help of design. Moreover if this design indicates the producer of the car, the trademark protection is also available to depend on. Briefly, if the requirements for protection of an intellectual creation by different IP laws are met at the same time, then the owner of the right has the possibility to be protected by all of them. This principle is called as the principle of cumulative protection. Therefore the IPRs could be compared to chains engaged.

The cumulative protection principle is specifically regulated in the Turkish IP legislation. For example, the art.4 of the Turkish Copyright Code orders that it does not prevent an intellectual creation to be protected by copyright law when even it is enjoying design protection under the condition that all the requirements of copyright protection are met. Again, there is a similar regulation in the art.1 of the Design Decree Law. Correspondingly in the art.169 of the Patent Decree Law states that under the condition that all the requirements are met; an intellectual creation that already enjoys utility model protection can also be protected as a design.

The subject matter is usually submitted to the court by the design law cases. The Supreme Court reaches to decisions expressing the designs that are neither new and individual nor registered shall be protected under the rules of unfair competition according to the labor theory. As a result of the influence of ongoing applications, the rules of unfair competition are interpreted commonly and widely.

It can also be said that the application of cumulative protection principle can sometimes go to extremes. For instance even when a right forfeits because the term is expired or the renewal fee has not been deposited, it is still possible to enjoy protection depending on the unfair competition law. As a matter of fact, the Supreme Court acknowledges both in its previous and latest decisions that a design may be protected by unfair competition even if it has not been registered at all or the term of protection has expired.

On the other hand it is very common for an intellectual creation, which is a subject matter of an industrial right to benefit from the copyright protection. There are crucial outcomes of the embracement of the cumulative protection principle in the scope of copyright law. The term of protection for utility models is 10 years and for a design material it is 25. However the term of protection in copyright law is life plus 70 years. For example, a vase that also posses an artistic quality enjoys 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 amount of claims for damages are limited to the actual damage occurred. Nevertheless in copyright law a compensation of three times of the damages may be demanded when the rights are infringed. Briefly to depend copyright protection, which has superiority over industrial property rights in regards to term of protection, the scope of protection and the amount of compensation is generally in favor of the right owner.

The Supreme Court interprets the term of applied art widely. For instance, in one of its decisions dated to 2006, they recognized a design of a coffee table as a work of fine arts. In another decision in 1996 the plates that are hanged on walls and a model of wine bottle were accepted as the works that are qualified for copyright protection.

As a conclusion, the principle of cumulative protection has a very widespread application field. In case of a dispute it is very beneficial for right owners to keep this principle in their minds. As the Supreme Court mentioned in one of its decisions dated to 2008, the court shall only examine the case file according to the ground(s) that the plaintiff based in his/her case petition on. Even in the presence of the conditions, the court can not held a decision based on a right that the plaintiff did not claimed at the first place.

8. EXHAUSTION PRINCIPLE AND PARALLEL IMPORTATION

The right owner, who has an IP right on the products, after he sells the products for the first time, cannot intervene with the further sales. For instance, the wholesaler that buys ADIDAS labeled shoes can sell these original shoes to the retailers and the retails can sell them to consumers. The wholesaler does not need permission from the owner of the trademark "ADIDAS" while selling these to a retailer. Yet the wholesaler would have gained the property of the shoes by paying their price. The legal status of the sub-sellers, who bought the shoes from the wholesaler, is not different. This situation, where the right owner (in this case the right owner of the ADIDAS) may not interfere with the further sales after the first sale of the products, is called the principle of exhaustion in terms of IP law. This principle is also known as the first sale doctrine.

Although both in the doctrine and in the decisions of Supreme Court the exhaustion of the rights is mentioned, actually the right subsists abstractly but it disappears in relation to the products, which are soled. Thus the Sebago decision of ECJ in 1999 points out this matter.

In order this principle to be applied two criteria shall exist together: i) the product must be put on the market by the right owner or with his/her permission (for example by a licensee) and ii) the products, which are subjected to further sales, must be original. In other words, if the product is put on the market without permission from the owner of the IP right, the exhaustion principle is not applied. Similarly, when the original product is put on the market by altering or worsening, the right is not exhausted; on the contrary this act constitutes a trademark infringement.

One of the most arguable matters in the IP law is for sure the principle of exhaustion. The principle of nationality is acknowledged in general in the matter of exhaustion of a right. In other words, the right of the one, who sells the product that possess an IP right for the first time, is exhausted only within the borders of the country, where the sale is occurred. So may the product, which is put on the market by the permission of the right owner in one country, be exported into another country? With respect to this question it can be mentioned of three types of exhaustion:

National Exhaustion: After a product that possesses an IP right is put on the market in a country by the right owner or with his/her permission, the right owner cannot prevent the circulation of that product within that country. Turkey has acknowledged the national exhaustion principle except for the integrated circuits for which the international exhaustion is acknowledged.

Regional Exhaustion: In this type, the principle of exhaustion is applied by accepting a region as a country. Within EU, the regional exhaustion is acknowledged. According to this principle, when a product is put on the market with the permission of the right owner in any country of EU, which currently has 27 member countries, the right exhausts within the whole region. Moreover, the countries within the European Economic Area (EEA) have been included to this region as well.

International Exhaustion: In this situation, when a product, that possesses an IP right, is put on the market anywhere on the world by or with permission from the right owner, the right exhausts and the right owner cannot prevent the sale of that product in another country. In case of the acceptance of this principle, for instance a product, which is put on a market in South Africa by its owner, can be sold in Turkey without the permission of the right owner.

It carries a crucial importance which type of principle is acknowledged, since the international companies can divide the countries into different markets and price them out whereby national or regional exhaustion. Here the notions of parallel importation and re-importation come into consideration.

Parallel importation is the importation of a product, which has been put on the market in another country with the permission of the right owner, to a market, in which the right is protected. The case, where a product that possesses an IP right is put on the market in the country of the right owner by the right owner himself, then exported to abroad and then imported back to the right owner's country is called re-importation. In re-importation the product is first put on the market in the territory (for example in Turkey), than exported to another country (for example to Germany) and afterwards imported back to the country, where it was first put on the market (to Turkey).

According to the national exhaustion, it is possible for the right owner to prohibit the parallel importation; however it is not possible for him to prohibit re-importation.

The national exhaustion principle acknowledged in Turkish IP legislation has turned into a different shape during the legislative applications. The Supreme Court has acknowledged a different system, which stands in between national and international exhaustion. The action of putting on market even one product with the permission of the right owner in Turkey causes the right to exhaust regarding the same products that is put on the market in abroad. Therefore, the products that are put on the market in abroad can be imported to and sold in Turkey without permission from the owner of the trademark by the third parties. Actually this application corresponds neither to national nor to international exhaustion. Thus, both in national and regional exhaustion the right exhausts only with respect to the concrete products that has been put on the market with the permission of the right owner in the related country or region. In other words the right does not exhausts abstractly; like it is stated in the Sebago decision of ECJ. Because with respect to the international exhaustion, it is adequate for a product to be put on the market in anywhere in the world. In the national exhaustion, the exhaustion is occurred restricted to that country, in which the action of being put on the market has substantiated. However, according to the Supreme Court's case law if one in number from the related products is put on the market in Turkey with the permission of the right owner the right to exhaust regarding the same products that is put on the market in abroad.

According to the Dexter and Police decisions of Supreme Court, dated to 1999, the right, in relation to the products subjected to the right, would be exhausted when these products for the first time put on the market in Turkey by the right owner or with the permission of the right owner and this exhaustion also includes the products that are put on the market in abroad by the right owner or with the permission of the right owner. In other words, the owner of the trademark right cannot prevent the importation of these products to Turkey, which have been already put on the market in abroad.

The Turkish Competition Board has dealt with the case regarding the Police labeled sunglasses as well and the board reached to the same conclusion with the Supreme Court by referring to its decision dated to 1999. The Supreme Court persists on its opinion in the forthcoming years.

With respect to copyright the situation is relatively different. In general copyright does not exhaust except the right of distribution. Regarding distribution right, national exhaustion principle is explicitly and definitely accepted (Art.23/II of the Copyright Code).

If the author used his/her distribution right by the assignment of the property of particular copies of the work (by sale or donation), the resale of these copies within the borders of Turkey does not infringe the distribution right of the author. Here the right exhausted is not the distribution right itself abstractly, but the distribution right on the original or the copies, which has been put on the market. If the distribution is made within the frame of the permit given by the author, the right exhausts. For instance, if the distribution is restricted with a contract with regarding number or region, a distribution against these restrictions does not constitute the right to be exhausted. Because in this case the copies subjected to distribution have been put on the market without the permission of the right owner.

The exception of the exhaustion of the distribution right is the right to rent and lend. In other words, renting and lending do not constitute exhaustion. For instance, a person, who bought a DVD of a movie can sell or donate the original DVD to someone else. On the contrary, he/she is not entitled to rent the DVD to someone else. To subject a pirated DVD to activities like utilization or sale is in any case an infringement of a right.

Downloading is not in the context of distribution right. Therefore, in this case the exhaustion does not occur. For instance, person, who purchased and downloaded a song from the Internet, is only entitled to enjoy this song; he/she may not sell this via Internet or by any other means.

9. LOSS OF RIGHTS DUE TO THE REMAINING SILENT

Every right must be exercised within the frame of good faith. Within this, the good faith of the right owner is required and the good faith of the third parties is protected. The case of loss of rights due to the remaining silent is acknowledged to protect the good faith of the third parties, whose rights will be damaged due to the enjoyment of the rights after remaining silent for a long time and also their trust to the present situation.

In this context, the owner of the IP rights is not entitled to exercise the right after all without reasonable grounds, if he/she formed the opinion, by not exercising it for a long time that he/she will not enjoy the right. Yet to file an action against the infringement of the right after remaining silent for a long time would be considered as bad faith, since the abuse of the right of action would not be protected just like the abuse of the other rights. The case of not requesting the invalidation of an unlawfully registered right for a certain period considered within this context. In other words, in case of an aggression to 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 right owner has a reasonable ground for the delay, then there will not be any loss of right. In this case, the infringer must prove that the right owner has no reasonable grounds for not exercising his/her rights for a long time and the enjoyment of the right after such a long time will prejudice his interest.

The issue is regulated with respect to trademarks in the source law, EU law, and the period of remaining silent is determined as 5 years. In Turkish 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 Supreme Court found a period of 10 months of remaining silent adequate for the loss of rights due to the remaining silent. Yet in the concrete case the plaintiff remained silent for approximately ten months to its neighbor company, which is using plaintiff's trademark and trade name. Although this period is variable due to the concrete case, in practice it is applied as 5 years.

In a decision of Supreme Court in 2005 it was held that; "the defendant has used the word "Çiftlik/Farm" by transforming the word into the essential component of the trademark...the case, which is filed after remaining silent to this use of the defendant for a long time does not comply with the art.2 of the Civil Code. The grounds of the court, which are in the same direction is right and the decision shall be approved only based upon this ground"

The Supreme Court based its ruling in the case, where the well known Italian brand GAS was in question and the owner of the brand Grotto SPA filed a nullity action, to the following grounds along with the reason that the trademark GAS is not well known in Turkey: "... the case is filed 10 years after the defendant's registration date of the trademark and the plaintiff did not object to the use of its trademark within this period either...".

In 2007 Supreme Court ruled as; "... the trademark in question was registered on behalf of the defendant on 16th of May 1990 in class 25 as a trademark, the case is filed after 14 years, the defendant had worked with the plaintiff between 1987 and 2001 and there is no proof showing that the trademark was registered in bad faith to be used as an instrument for blackmail or for the assignment of the trademark against payment in the future,...the case filed after such a long time is not appropriate..."

The Supreme Court stated as following in another case dated to 2007; "only in the case of an implicit permission by behavior to the infringement of a right, the issue of whether the invalidation of the trade name used in good faith for a long time by the opponent, would be subjected to an action or not, shall be deliberated and assessed by law according to the art.2 of the Civil Code."

It is experienced 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 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 this protection can apply to the General Directorate of Customs and request for the recordal of the related right and tracking the plagiarized or counterfeiting goods that infringe the mentioned right in the customs.

The application can be made directly by the right owner or their attorneys and is submitted to the General Directorate with an application form and the documents (like the copies of the trademark or design registration certificates) proving that the applicant is the right holder attached. In the application made by attorneys a notarized and legalized power of attorney must be submitted as well.

The application made by the right owner is taken into preliminary examination by the General Directorate. If there is no incompleteness, the tracking process is set to begin and the right owner is informed about the process. The General Directorate generally accepts the applications after the preliminary examination, but for some applications it is possible for the Directorate to ask for additional information and documents that are not mentioned in the legislation.

Separate applications have to be made for the tracking of every single IP right. For instance, if the right owner has more than one registered trademark in Turkey, he has to make separate applications for each of them. However one application can be filed for the serial trademarks or designs. The tracking being started as a result of the application lasts for one year and the application has to be renewed every year in order for the tracking to continue.

After the 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 decision from the court for the seizure of the goods that were caught by the General Directorate of the Customs until the end of the proceedings. If the necessary action is not filed and the required preliminary injunction decision from the court is not submitted to the General Directorate of the Customs within the legal period, the General Directorate releases the goods that were temporarily seized.

Therefore reaching to the desired purpose by requesting tracking within the customs is bounded to the filing of the court action following the application to the customs administration and to the decision of preliminary injunction. When the right owner files the necessary action within the period, the courts usually held the preliminary injunction decision in favor of plaintiff. Therefore, when the right owner takes the necessary legal actions by doing his/her part, it can be said that the right is protected in an adequate levels.

b) Free Zones

The free zones are the areas that stay within the borders of the country that are geographically settled, but deemed as out of the customs frontier with respect to external trade, taxes and customs legislations. It is granted broader exemptions and promotions for the industrial and commercial activities in the free zones compared with the ones granted to those within the country. In other words the free zones are accepted as extra-territorial just with respect to financial liabilities, such as taxes, duties and fees.

Except from the Exchange regime and the provisions enumerated in the art.12 of the Free Zone Code, Turkish legislation is executed within the free zones as well. In the mentioned article the IP legislation is not mentioned. Yet according to the IP legislations, the IP rights are also protected within the free zones. However until 2004 the free zones were left out of the scope of protection regarding IP rights by the Supreme Court decisions. The Supreme Court was in the point of view that the importation made to the free zone cannot be acknowledged as the importation made to Turkey. Therefore it was adopted that the IP infringement in the free zones cannot be heard before the Turkish Courts on grounds of nationality principle. This opinion was against the policy that reflects IPRs must be protected effectively and moreover it was not proper for the legislation.

We are of the view that the free zones are acknowledged as extra-territorial only in relation to financial liabilities, such as taxes, duties and fees. In other words, the Supreme Courts execution that accepts these zones extra-territorial by depending on the regulations made with respect to export-import regime was not incisive. Fortunately, the Supreme Court has changed the mentioned point of view afterwards and it has begun to accept the free zones as inland after 2004 as well. As a consequence, currently the Supreme Court has the opinion that the violation of rights occurred in the free zones are deemed to be occurred within the territory.

c) Transit Pass

According to the Trademark Decree Law, it is an infringement of a trademark right to sell, distribute or put the commercial use by any other means or place into a customs area, subject to a transaction approved by the customs or to a use of the products carrying a trademark without the authorization of the trademark right owner.

It is accepted both by the doctrine and the case law that the transit pass of the products that are subjected to an unauthorized use will constitute a trademark infringement. For instance, in the Leon Case that was subjected to a Supreme Court decision in 2004; it was filed an action by the trademark owner after it was discovered that the cigarettes, which were declared to the customs under the label of "Leon", wanted to be let into Turkey, were actually the bear the well-known trademarks "M. and M. Light" and thus they were seized by the customs administration. The defendant asked for the denial of the case by expressing that he is not the proprietor or a representative, he was only responsible with the carriage of the goods and containers according to the instructions that arrived to the port and the cigarette shipment in dispute was subjected to a transaction in relation to be sent to abroad in transit, without being put in the market inland. Despite these defenses, the case was accepted and it was held that the goods subjected to the transit pass constitute a trademark infringement too.

On the other hand, the Supreme Court reflects the opinion in many decisions regarding transit pass that it may be held in favor of a compensation for damages when it is requested along with the cessation of the infringement. The proof of the actual damage is not required for the determination of the compensation and also it is not necessary for the goods seized within the free zone to be put in the market in Turkey. The Supreme Court acts from the assumption that the damage was occurred even if the goods had not been put in the market yet and it is in the opinion that even when the actual damage cannot be determined, the amount of the compensation can be estimated by the judge by taking into consideration the circumstances in the concrete case.

II. TRADEMARK LAW

1. IN GENERAL

The first regulation regarding Turkish Trademark Law, which was brought into force during the Ottoman period, is Trademark Regulation dated 1872. This regulation on trademarks stayed in force until the first decades of the Republic and then replaced by the Trademark Code of 1965. The Code of Trademarks was prepared on the basis of international treaties, which Turkey was a party and mostly adapted from the Swiss legislations of that period.

After Turkey has become a party to the international treaties, some serious amendments were necessary to be made in the Trademark Code. The need for amendment increased due to the fact that the law was not sufficient to solve practical problems and due to harmonization process with European Union. In compliance with the undertakings given in the harmonization period, a target deadline was set to finalize the law amendment; however, required amendments were not completed in the set period of time. The government, which was persistent on making the promised revision, prepared a decree law covering the same matters. With this Decree Law nr. 556, dated 1995, Trademark Code of 1965 was repealed in one night. Today, the mentioned Trademark Decree Law constitutes the basis of Turkish Trademark Law.

At the international area, Turkey is member to numerous international agreements concerning trademarks. The major ones of these agreements are Paris Convention, TRIPS, Madrid Protocol and TLT.

Although the Trademark Decree Law is mainly in harmony with the related international regulations, it draws heavy criticism for not possessing the characteristics of a regular code. Besides being criticized for its above-mentioned character, the fact that Trademark Decree Law has been partially cancelled by the Constitutional Court for the very same reason and still, its force causes serious problems. Currently, there are some ongoing studies for preparing a draft Code of Trademarks, which would replace the current Decree Law. Nevertheless, this draft does not seem likely to enter into the force in the near future.

On the other hand, the problem concerns not only the infrastructure of the legislation; but there are also serious issues concerning the enforcement. Even though the fundamental principles regarding trademark law are regulated by the Decree Law, most of them are differently shaped by the Supreme Court decisions. Yet Supreme Court's approach diverges from the legislation on many occasions. For example, according to art.7/i of the Decree Law and art.6bis of the Paris Convention, a trademark that is well-known in a foreign country who is member to the Paris Convention, shall be protected in Turkey as well, even if it is not registered in Turkey. While this protection acknowledged in the legislation, is provided for identical or similar goods and services, the Supreme Court, in most cases, has ruled that these trademarks shall be protected in Turkey also with respect to different goods and services. Such differences between legislation and practice make it harder for law to carry a foresee-ability. In order to make predictions related to any certain matter, it has become almost essential to wait until Supreme Court establishes a consistent practice on that matter. Moreover most fundamental approaches that are embraced by the Supreme Court may vary in time and also may conflict with each other within the same period. Today many conflicting judgments of Supreme Court create inconvenience for practitioners and right-owners.

The important differences between the legislation and the practice stand out when we examine the trademark registration proceedings. This time the fact that legislation provisions are interpreted differently by TPI abolishes the foresee-ability. For instance, art.8/b of the Decree Law requires rejection of the applications filed for a trademark which is identical or confusingly similar to senior trademark application and/or registration covering same or similar goods and services. However, in the decisions that TPI grounded on this article, TPI rejects the latter application only with respect to "identical" goods and services. Just like the judicial decisions contradict within themselves, the fact that TPI decisions contradict with each other is another problem. It is possible to see in one opposition file, it is decided that opponent's trademark on which the opposition was based is well known; it can be decided after a short while in another opposition file that the same trademark does not considered to be a well-known. The reason of this and similar contradictive decisions are explained by the fact that the trademark examiners at TPI have different personal views. Despite all these, it should also be mentioned that the substructure and the applications of TPI have improved crucially in the recent years.

In this study on one hand we have tried to mention the basic principles of Turkish trademark law and the interpretation of these principles in practice by Supreme Court and 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 law there are two ways to obtain a trademark right. First of all, a trademark never used before could be picked and registered. In this possibility, the registration has a constituent effect for the acquisition of a trademark right. In the second possibility, the right on a trademark belongs to the person, who used the trademark for the first time and made the trademark familiar within the market without registration. In the doctrine this person is called "genuine holder" and here the trademark right has emerged before the registration and thus the registration made to the record has an explanatory effect. The unregistered trademark means the sign, which is not registered to a record, but being used de facto in the sense of a trademark.

The trademark right acquired by registration provides its owner a conditional right. In cases, where the genuine holder of a trademark is someone else, the right holder's right derived from the registration will continue until the genuine holder files a cancellation action and then registers the trademark on behalf of him/herself.

In practice it is frequently seen that a third party registers a trademark that belongs actually to someone else. Although the third person, who registers the trademark, might act unaware, generally he/she is in bad faith. In order to rule out this possibility, the Decree Law grants the genuine holder the right to oppose to the application filed for registration of the trademark by a third party (art.8/3). The right to oppose is acknowledged not only against the identical trademarks, but also against the confusingly similar trademarks. The opponent shall submit the evidence to TPI that proves the genuine holder-ship. In case of the refusal of the opposition, the opponent may file a cancellation action against the refusal decision.

However, most of the time the genuine holder is not aware of the fact that a third person has made an application for the registration of his/her trademark. Thus the opportunity to oppose to the mentioned application within the publication period expires and it is decided for the registration of the trademark on behalf of the third person. In this possibility the Decree Law grants the opportunity to file an invalidation action against the mentioned registration to protect the genuine holder (art.42). The invalidation action should be filed before the IP courts within 5 years after the registration of the trademark. Nevertheless, the action is not subjected to a time limit when the third person, owner of the registration, is in bad faith.

The conditions of the application of the genuine holder-ship principle are set forth in detail explicitly both in the doctrine and case law:

First of all, there must be a similarity or likelihood of confusion between the trademarks. Secondly, the genuine holder must have been started using the trademark before the application date of the third person or, if there is a priority date, before the priority date. It is subjected to the Supreme Court decisions whether the use shall be accrued within Turkey or not. The Supreme Court, in a decision dated to 1999, stated that; the protection provided to unregistered trademarks is not only related to the trademarks, which are being used de facto in Turkey and made familiar, it is also valid for the trademarks, which have been registered and being used in the member states of the international agreements that Turkey is a party, but has not been registered in Turkey yet. The Supreme Court did not seek for the foreign trademark to be well known either. On the contrary, the Supreme Court has referred to the nationality principle as one of the fundamental principle of Turkish trademark law and sought the condition of being used in Turkey in order to be entitled to claim genuine holder-ship on a trademark in a decision dated to 2000. The further decisions of the Supreme Court are in the same direction as well.

Thirdly, the genuine holder must use the sign as "trademark." The Supreme Court expressed in a decision dated to 2002 that an unregistered sign must be used in the course of trade in a way, which is peculiar to trademark law.

Fourthly, another argument on the issue is whether the notoriety condition shall be sought in relation to genuine holder-ship or not. To apply the principle of genuine holder-ship, it was sought in the Trademark Code, in force prior to the Trademark Decree Law, that the trademark must be used and made familiar on the market prior to the application date of the third person. In order to speak of the presence of notoriety, it was expected for the trademark maybe not to reach to the degree of being well known but to certain degree of familiarity. Nevertheless, the notoriety criterion was not mentioned explicitly in the Decree Law. The Supreme Court reaches to various decisions in regards. In a decision of 1999 it is sought for the notoriety by expressing "the priority right on the trademark belongs to the person, who created, used and is using and made it familiar on the market." A decision from 2002 was in the contrary. The Supreme Court continues to opine different views in the forthcoming decisions. However, it is accepted in the doctrine that the notoriety criterion shall be sought.

The degree of notoriety is disputable as well. In the doctrine, in order to acknowledge the genuine holder-ship the products and services that the trademark is used on must have started to be known by its customers in a specific place, region or a market. Therefore, it can be said that the notoriety is a state of familiarity, which does not reach to a degree of being well known.

Another problem occurs, when the person, who registered the trademark unlawfully on behalf of him/herself, tries to use the rights derived from the registration against the genuine holder. It is often experienced that the ones, who registered the trademark on behalf of them, prevent the genuine holders to enter the market with the mentioned trademark. Yet from a legal point of view, as long as the registration continues, the trademark belongs to the owner of the registration. The owner of the registration may restrain the third party uses of the trademark, including the use of the genuine holder. However in a decision of Supreme Court dated to 2001, the Supreme Court stated that the registration owner might not restrain the use of the trademark of the genuine holder. In accordance with the decisions of Supreme Court in regards, the genuine holder may ask for a preliminary injunction by applying to the court, in case the unlawful registration owner tries to prevent the use of the trademark of the genuine holder and ask for the prevention of the use of the rights derived from the registration against him/her. When the adequate evidence is submitted to the court, the courts generally accept these demands.

Consequently, the persons in bad faith want to benefit from the notoriety and advantages of the investments made to the trademark by the genuine holder by especially registering the unregistered foreign trademarks in Turkey on behalf of themselves. Therefore the principle of genuine holder-ship is a crucial instrument that provides a protection to the persons, who have not registered their trademarks in Turkey, against the third parties.

3. THE UNIQUENESS PRINCIPLE IN TRADEMARK LAW

According to the uniqueness principle in trademark law, there can only be one owner of a trademark in relation to same or same type of goods or services. In other words, a trademark may not provide a second independent and/or individual right for the same or same type of goods or services. Therefore it is not possible for a sign, which is identical or confusingly similar to a registered trademark, to be registered on behalf of someone else for the same or similar goods and/or services.

The uniqueness principle in trademark registration has mentioned in more than one article in Trademark Decree Law and the Supreme Court asserts that the principle is directly in relation with the public benefit. The legislator intended to protect the function of origin indication of a trademark and prevent the customers from being mistaken in relation to the trademark and/or trademark owner by acknowledging the mentioned principle.

According to the principle the letter of consent is not acknowledged in the Turkish registry system. In other words, even the owner of the earlier dated application/registration of an identical or similar trademark grants a written consent, it is not allowed to register the latter identical or similar trademark for the same or same type of goods or services. On the other hand there are obstacles derived from the uniqueness principle in the partial assignment of a trademark or in the assignment of some trademarks of a trademark series. As it is known, partial assignment of a trademark in respect of some goods and services or assignment of some trademarks in a trademark series is possible. However according to this principle, it is not allowed for a trademark to be assigned partially for the same or similar goods or services. For instance, it is not possible to assign trademark X for the corn oil, which is actually registered for sunflower oil, corn oil, butter and candies. However it may be assigned partially in relation to candies. Similarly, it is not allowed for a partial assignment in case a trademark series that covers same or similar goods and services. For example, it is not possible to assign some of the trademarks X MAN, X WOMEN, X KIDS, X PREMIUM, of which all are registered on underwear.

The Supreme Court also applies the uniqueness principle prevalently. In the QUARTZ decision in 2004, J-MOTION decision in 2006 and SUN PET decision in 2007, the Supreme Court has taken this principle into consideration.

However, the Supreme Court has softened this principle on grounds of "constitution of antecedent rights by use of the trademark" and "loss of rights due to the remaining silent". Thus the Supreme Court, in a decision dated to 2008 regarding an invalidation action filed against trademarks ECE TOFF and ECE LADY of the defendant, it has been accepted that both parties have an antecedent right on the trademark, in which ECE is the essential part and the invalidation action was rejected. As the rationale the Supreme Court expressed that the defendant has used the sign ECE in his/her trademarks before and after the registration and by placing this sign into the disputable trademarks the defendant comprised a trademark series. Therefore it is ruled that the ECE trademark series, which is used with an original writing and style, does not constitute confusion with the plaintiff's trademark. Consequently it is allowed for the both parties to use the trademark ECE on the same goods.

Again in the ÜLKER DONUT decision dated to 2008 the Supreme Court allowed the existence of the trademarks that belong to both parties together by stating that; the plaintiff, whose trademark application was rejected due to the presence of the trademark ÜLKER, has an antecedent right on the trademark ÜLKER as well, both parties are the right owners and there is no likelihood of confusion between the trademarks, in which the sign ÜLKER is the essential part.

The Supreme Court has determined in the DİRGENLİ decision in 2004 that the logo in the defendant's registered trademark creates confusion with the plaintiff's trademark but ruled that the plaintiff lost his/her right to file an invalidation action against the registered trademark of the defendant due to remaining silent for long years. Thus it is allowed for the both parties to use the same trademark on the same goods and services.

Again in another decision dated to 2006, the Supreme Court decided that the word ÇİFTLİK has been used as the essential part both in the plaintiff's and the defendant's trademarks and the invalidation action filed by the plaintiff after remaining silent for a long time would not comply with the principle of good faith. In another decision dated to 2007 the Supreme Court rejected the case expressing that the defendant has been using the trademark in dispute for 14 years and the case filed after such a long time is not acceptable.

As a 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 trademark law:

In the first possibility; the use of the trademark itself could be in bad faith. For instance, the owner of a registered trademark uses his/her trademark in a different way from its registration in order to create confusion with a competitor's trademark.

In the second possibility; the bad faith could appear in filing of an application for registration of a trademark. In this case, the aim of the applicant is to have registration for a trademark on which he does not have any right and which is identical or confusingly similar to somebody else's trademark which has already been registered and/or used in the market.

In practice, bad faith applications filed by the local firms for registration of the foreign trademarks having high commercial value are commonly experienced and causing serious problems for the genuine trademark holders.

According to the art.35 of the Trademark Decree Law it is possible to oppose against a trademark application on the basis of bad faith. Depending on the aforementioned article, there have been countless opposition actions by this time which have been filed against the trademark applications filed in bad faith. TPI has rejected lots of the mentioned applications due to the oppositions, without requiring any further ground, expressing that the applications have been filed in bad faith. For example, the trademark UGG, which has a great commercial value and is registered in abroad, but does not have a registration or use in Turkey (at the filing date of the third party's application) was tried to be registered by a local firm to TPI. The genuine owner of the trademark filed an opposition against the local application and the application was rejected by the TPI on ground of bad faith.

In the oppositions based on art.35 of the Decree Law, it is not required to submit an absolute proof of the bad faith of the applicant to the file and it is sufficient for the opposing party to put forward the evidences showing bad faith in a way that they present the truth real-like. Additionally, the opponent is not requested to prove the bad faith claim with most solid evidences, but to show that the applicant was aware that the trademark was owned by a third party and still he has applied to register the trademark in his name. For instance, it is not likely that local firm in Turkey created a trademark which is a combination of a fantasy word and a distinctive logo and applied to register the same for several goods and services on which the mentioned trademark had already been registered and used by a foreign company in many other countries. When the applicant is a customer of the products bearing the trademark that he applied for and thus was aware that the trademark was owned by a third party, the bad faith is also very clear. When the opposing party is able to prove the bad faith of the applicant with such evidences -as mentioned above- it is not necessary to bring forward more solid evidence than this.

Until 2008 the bad faith argument was taken into consideration only in the opposition phase or in the cancellation actions filed against the TPI's refusal decisions. In other words, the genuine owner of the trademark who did not oppose to the application that was filed in bad faith, at the administrative phase, was not able to argue the bad faith of the applicant afterwards. The reason for this rule is because the grounds for filing an invalidation case according to the art.42 of the Decree Law are limited by number and "bad faith" is not one of them. Nevertheless the Assembly of Civil Chamber of Supreme Court reversed its execution and decided in 2008 in R512 Case that the bad faith argument can be argued during the invalidation actions, just like the oppositions and the cancellation actions filed against the wrongful decisions of TPI. In conclusion according to this decision, from then on it is possible to claim bad faith by its own at any phase of the dispute.

Furthermore according to the art.42 the invalidation actions can be filed within 5 years as of the registration date of the trademark. However if the claims are based on bad faith of the registration then there is no time limit to file an invalidation action against a registered trademark.

It is known that the trademark protection is limited to the registered goods and services as a rule. However according to the decision of the Assembly of Civil Chambers of Supreme Court, invalidation of the trademark registered in bad faith can be demanded even for the different goods and services.

As a result, it can be easily stated that currently Turkish trademark registration system does not allow the registration of a trademark application in bad faith neither in the course of administrative actions nor in the course of a court action and the real owner of a trademark is absolutely protected against the applications filed in bad faith. Therefore bad faith argument becomes very important for the foreign firms, in the circumstances that there is no other argument to depend on, such as ante-dated applications or registrations, well known status or genuine ownership argument.

5. WELL-KNOWN TRADEMARKS

The trademarks in use are known more or less. For some trademarks this awareness is restricted to a very narrow environment, whereas some of them are known by a larger mass and some trademarks are known world wide. Therefore, actually the "notoriety" is a state that exists for every trademark. Then, regarding trademark law, for which trademarks does the "well-known" term is used? In trademark law, which kinds of advantages are offered for the well-known trademarks?

Two different articles in the Trademark Decree Law regulate the matter of well-known trademarks in Turkey. Below the special protection and the advantages that are offered by these two articles to well-known trademarks will be mentioned and the differences between the articles and the situation in practice will be examined as well. Furthermore the special registry of the TPI for the well-known trademarks and the advantages of being in this registry will be pointed out.

a) Well-Known Trademarks according to Paris Convention

Following signs shall not be registered as a trademark which have not been authorized by their owners, well known marks according to 6bis 1 of the Paris Convention

According to art.7/1(i) of the Decree Law, third party applications filed without permission of the genuine trademark owner for the trademarks which are in the context of well-known trademark description of the art. 6bis 1 of the Paris Convention shall be rejected by TPI ex officio. Pursuant to the mentioned provision the trademarks, which are recognized as well known according to the Paris Convention, are being protected as well-known trademark in Turkey as well.

The protection provided to well-known trademarks with this article is restricted to identical and similar products and services. In other words, in the article it is acknowledged that only the applications filed for goods and services that are identical with and/or similar to the goods and services on which the well-known trademarks are registered would be rejected.

The protection provided by the Decree Law art.7/1(i) does not require for the trademark to be registered or to be in use in Turkey. Furthermore, it is not necessary for the trademark to be known in Turkey either. A trademark, which is well known in the other member states according to the art. 6bis 1 of the Convention, will be protected as a well-known trademark in Turkey as well without requiring any other condition. The decisions of Supreme Court are in this direction as well. The Supreme Court, in BLACK & DECKER decision in 2004 stated that; "... the trademark that is well-known in one of the member states of Paris Convention is protected in Turkey as a 'well known trademark' pursuant to art. 6bis 1 of the Convention even if the trademark or the products bearing the trademark is not known in Turkey...." In the ROCCO BAROCCO decision, dated to 2000 it was expressed that; " the trademark which well-known in one of the member states of Paris Convention must be protected in Turkey as a well known trademark as well, even if the products bearing the trademark have never been sold in Turkey."

It is not required for the trademark that is subject to protection in Turkey according to the art. 6bis 1 of the Convention to have a world wide reputation either. Even the trademarks, which are well known in one or several member states of the Convention, are protected within this scope. Besides it is not necessary for the trademark to be known by everybody in the public. The trademarks, which are known commonly or even by the related environment in general, benefit from the protection.

In practice it is not possible to apply the art 7/1(i) as it is regulated. In other words the TPI is not able to reject ex officio the applications filed by the third parties for well-known trademarks. Yet TPI cannot investigate or determine by itself whether the trademark subjected to application is well known or not. Therefore the execution of the mentioned article depends on the opposition by the owner of the well-known trademark to the application within the publication duration. For instance in 2005, the application filed for the trademark BOTTEGA VENETA, registered and well known in abroad, by a third party was published by TPI, nevertheless rejected upon the opposition of the genuine trademark owner based on the art.7/1(i).

Art.7/1(i) can be claimed not only in the administrative phase, but also during the court actions. The invalidation action filed against an unauthorized registration of a well-known trademark by a third party can also be based on the mentioned article. Similarly, the trademark infringement actions filed against the unauthorized use of the well known trademark by a third party can also be based on the art. 7/1(i).

b) Very Well-Known Trademarks

The art.8/4 of the Decree Law is about the very well known trademarks. The aim and the context of this article is different from the art. 7/1(i) of the Decree Law and differences between the protections granted to the well known and the very well known trademarks are as follows;

i) Art.8/4 provides protection to the very well known trademarks which are registered or at least applied for registration in Turkey. In other words, the trademarks for which there is not even any pending application in Turkey cannot benefit from the protection provided with this article. However, it is not required for the well-known trademark to be used in Turkey according to this article either.

ii) Art.7/1(i) provides protection to the well-known trademarks only for the identical and/or similar goods and services, whereas art.8/4 introduces protection extended to the different goods and services as well.

iii) The well-known trademarks protected under art.8/4 are the "very well-known" trademarks, which are also known as famous trademarks. Therefore it is possible for a trademark, which is deemed as well-known trademark according to the art.6bis 1 of Paris Convention, not to be protected within this context. The well-known status required in this article has reached such a degree that the use of the identical or a similar trademark on different goods or services would damage the reputation or the distinctive character of the well-known trademark or will cause the unjust enrichment from the use of trademark. To consider a trademark within this context it is not required to be well known all around the world, such as FERRARI, HILTON, ARMANI or BURGER KING. Nevertheless the degree of well known should be over a certain level. Having a deep routed background, being used consistently in lots of countries for long years, being registered in lots of countries, acquiring very high sales figure and being promoted by high budget advertisement campaigns are important data that points out of being a famous trademark.

iv) It is disputable whether the protection provided by art.8/4 depends on being well known in Turkey as well or not. In the MAGGI decision in 2006 the Supreme Court expressed that; "it is not required for a local or a foreign trademark to benefit from art.8/4 to be well known all around the world. It is adequate to be well known in some countries. Besides it is also not required for these trademarks used in Turkey. Nevertheless in order for a trademark to be in the context of this article, it is required to be well known in Turkey." In the doctrine, there is a group of authors defending that protection in the scope of art.8/4 encompasses the trademarks well-known in Turkey. However in the practice it is seen that lots of foreign trademarks, which are not even known in Turkey, are protected within the scope of this provision by taking the high level of well-known status of the trademarks in abroad. In most of the decisions of the Supreme Court, it is seen that the trademarks, which are very well known in abroad, however not well known or not adequately well known in Turkey, are being protected within the scope of art.8/4.

It should be mentioned that 8/4 could also be claimed both in the administrative phase and court actions, just like art.7 (i). The invalidation action filed against an unauthorized registration of a well-known trademark by a third party can also be based on the mentioned article. Similarly, the trademark infringement actions filed against the unauthorized use of the well known trademark by a third party can also be based on the art. 8/4.

c) The Registration of Well Known Trademarks to TPI

As mentioned above, the well known status can be claimed both in the opposition and the court action phases. However in order to base any action on the well known status of a trademark the well-known status must be proved in each opposition or a court action separately and therefore in practice proving the well-known status of a trademark is onerous and expensive.

Thus the special registry by TPI is a very crucial instrument that rules out the burden of proof in case of resubmitting the evidences proving well-known status of a trademark. The art.13/d of the Code, nr. 5000 grant the authorization to TPI to determine whether a trademark is well known or not, and if it is well known to record the trademark in a special registry. In order to achieve this, the owner of the well-known trademark, which is either registered or in the application phase, should apply to TPI with the request of determination of the well-known status of the trademark. The TPI evaluates the well-known status over 18 different criteria. These 18 criteria are determined by TPI by taking the criteria determined by WIPO in 1999 into consideration. In the well-known status application, the well-known status of the trademark should be put forward in the light of these 18 criteria. The evidences that prove the alleged notoriety of the trademark must be submitted to TPI at the filing date of the determination request.

If the well-known status application is accepted by TPI, the trademark in question is acknowledged as a well-known trademark and enters into the well-known trademark register with a special number. Besides it is given to the trademark owner a formal document stating that the well-known status is determined and acknowledged. This determination is the evidence to prove the well-known status of the trademark and it is not limited by time. By submitting this document into the opposition or the court action files, the owner can prove the well-known status of the trademark without submitting any further evidences.

TPI can reject the well-known status application by deciding that the well-known status could not been proved adequately. In such case the refusal decision of TPI can be appealed before the Re-examination and Evaluation Board of the TPI. If the Board rejects the application as well then the applicant can file a cancellation action against the final rejection before the Ankara IP courts within 2 months as of the official notification of the decision.

Today in the special registry hold by TPI, there are more than 400 well-known trademarks registered. Among these, there are world wide well-known brands such as ARMANI, SONY, CNN, YAHOO!, APPLE, POST-IT, FORD, FERRARI, MARRIOT, RED BULL, KINDER SURPRISE, MOBIL, MARSHALL, CHANEL and trademarks that possess more restricted well-known status, such as LORIS AZZARO, ROADSTAR, CINZANO, GIRORGIO AIRE, GLASURIT, NEXT & NEXT STAR.

6. PHARMACEUTICAL TRADEMARKS

The general principles of trademark law are valid for pharmaceutical trademarks in principle as well. However, the differences arising from sector, product and consumer group cause the flexible execution of some rules with respect to pharmaceutical trademarks. The most important element that differs pharmaceutical trademarks from the rest of the trademarks is the informed and high level of attention consumer group. This difference has softened some requirements for a sign to become a trademark in relation to pharmaceutical trademarks. Since an informed and experienced consumer group would behave differently in most of the situations compared with ordinary people.

According to art.7/1(c) of the Decree Law "trademarks, which consist exclusively of signs or indications which serve in trade to indicate the kind, characteristics, quality, intended purpose, value, geographical origin, or designate the time of production of the goods or of rendering of the service or other characteristics of goods or services" shall not be registered. This rule is applied very strictly in general; however it is treated more flexible in respect of pharmaceutical trademarks.

The term that is selected as trademark for pharmaceuticals should be distinctive and not to be confused with the name of the active substance that is accepted by the World Health Organization (INN Code - International Non-proprietary Name) or with the generic name of the product. In other words, the name of the active substance of a pharmaceutical cannot be used as a trademark of that pharmaceutical. This restriction is also in accordance with the art.7/1(c) of the Decree Law. Nevertheless most of the pharmaceutical trademarks in the market has derived from the name of the active substance or brings to mind the active substance directly. For instance, the trademark ADENOSIN is registered for pharmaceuticals and used on a product which is produced from the Adenozin active substance. Another common method in the sector is to select the trademarks from the words that associate with the illness that the pharmaceutical treats. Thus, the trademark brings to mind the related illness directly. In other words, the selected trademark is related with the aim or with the quality of the product. Just like in the pharmaceutical branded as ACNEGEN, which is used for the treatment of acne. In the doctrine, it is acknowledged that the INN Code or the generic name of the pharmaceutical cannot be used as a trademark; nevertheless the similar words derived from those can be registered and used as trademark. Consequently, it can be stated that the practice is more flexible in favor of the pharmaceutical trademarks with respect to "level of distinctiveness".

It is interpreted in a very flexible way with respect to similarity and confusion among trademarks, when the subject is a pharmaceutical trademark. According to the art.7/1(b) of the Decree Law, trademarks identical with or confusingly similar to a senior trademark registration or application shall not be registered for the identical or same type of product or services. Art. 8/1(b) states that the application for registration of a trademark, which is identical with or similar to another trademark that has an earlier date of application or registration and covers the identical or similar goods and services shall be rejected upon opposition by the senior trademark. The aim of both articles is to hinder the likelihood of confusion occurs because of the similarity between trademarks. In this context regarding the other sectors other than the pharmaceuticals, BOMBY - BOMBA, CASAMIA - CASA, SATENPER - SATEN, KALE KİMYA - KALE, ŞÖLEN - PINAR ŞÖLEN, NINO DİNAMİT - DİNAMİT trademarks were found confusingly similar to each other by Supreme Court.

It is seen both in doctrine and in the case law that, when the matter is pharmaceutical trademarks, the similarity examination is treated more flexible as well. Yet it is thought that the primary consumer and the target group of the pharmaceutical and derivative products are not the ordinary people, who are the end-users of them. The primary consumers of the pharmaceutical and similar products are actually the doctors, who prescribe these products and the pharmaceutical warehouses and the pharmacies that sell these prescribed pharmaceuticals. Every loop in this chain is expert in this business, who realizes even the slightest differences regarding pharmaceuticals and pay attention to them. Whereas most of the time it is accepted that a different element of a figure or a different word will not hinder the likelihood of confusion between the similar trademarks, it is acknowledged that even a difference in one or two letters in a pharmaceutical trademark may prevent the likelihood of confusion on the part of the public. Thus the Supreme Court acts more flexible in its case law regarding pharmaceutical trademarks by considering these facts and leaving its general opinion in relation to ordinary trademarks. The Supreme Court held that LIPIDIL – LIPIDROL, ETOL – ETOLE, MELOX – MELOS and LIPIDEX – LIPITAX trademarks, which were willing to be registered for pharmaceuticals and similar products are not similar enough to cause confusion, since they address to an informed consumer group.

We are of the opinion that this applied flexibility in the doctrine and in the case law with respect to distinctiveness and confusion for pharmaceutical trademarks is appropriate in principle. Nevertheless it is not very incisive to execute this flexibility for all the pharmaceuticals and derivative products. Yet some of them can be sold without any prescription and some are in the over the counter (OTC) group, that address directly to the end user. Therefore regarding the OTC products the evaluation should be made by considering the end-users, consist of ordinary people.

7. UNCONVENTIONAL TRADEMARKS

A trademark, provided that it is capable of distinguishing the goods and services of one undertaking from the goods and services of other undertakings, may consist of all kinds of signs being represented graphically such as words, including personal names, shapes, letters, numerals, shape of the goods or their packaging and similarly descriptive means capable of being published and reproduced by printing (art.5 of Trademark Decree Law).

As it is seen above, in the code first the description of a trademark is made and it is enumerated with examples which signs can be considered as a trademark. In this description colors, sounds, tastes, scents and similar forms are not mentioned. However this enumeration in the code is not restrictive. Therefore the sound, smell, taste and similar forms that possess distinctiveness adequate to be qualified as a trademark may be registered as a trademark under the condition that they are expressible.

In the article the means of description are enumerated as being visualized by drawing or being described by similar means, being published and reproduced by printing. This enumeration is also not restrictive. Therefore other descriptive means may be deemed within this scope.

In the EU Trademark Regulation a similar description is made for the trademarks. Under the condition that they provide distinctiveness all types of signs that have the capability of being represented graphically shall be deemed as Community Trademark (art.4).

Today in Turkey the unconventional trademarks that provide the necessary requirements are being registered by TPI. Below some types of trademarks that come forward will be explained along with the examples.

a) Color Trademarks

In Turkey the colors are accepted as trademarks as long as they provide the requirement of distinctiveness and descriptiveness. However, the issue of distinctiveness is still an important discussion point in relation to color trademarks. In general, the distinctiveness of the color combinations is acknowledged and the combinations are being protected as trademark as long as they provide other protection criteria. On the contrary, it is not accepted that a single color would be distinctive enough and thus it is not allowed to register them. For example, the color combinations seen below were registered as trademarks by TPI, whereas many applications were rejected regarding trademarks composed of a single color:

The matter of distinctiveness gained as a consequence of utilization is an exception for the rejection of the single color trademark applications. For instance, lilac color was registered as a trademark by TPI on behalf of Kraft for the use on chocolates. In the registration, the consumer survey was very effective with respect to the acquired distinctiveness of the mentioned color trademark through the extensive use in the market.

b) Sound Trademarks

The sound trademarks shall be registered due to the possession condition of the beat on the clef, the details of the rhythm and the graphical representation of the notes. Nevertheless they are required to have the capability of being transferred into drawing or notes and therefore to possess the distinctive character. The sound trademarks, which have been registered until today, mostly consist of melodies or musical tones that can be represented via notes and some consists of polyphonic partitions and some of monophonic orchestral music.

TPI has acknowledged a similar approach with respect to the descriptiveness of the sound trademarks. Within this context, it is allowed in the application of TPI to register the sound trademarks, which the details of them are determined on the clef. For instance, the publicity melody of SIEMENS, two different melodies of the ALLIANZ Insurance Company and sound trademarks belongs to Gas Management Company AYGAZ were registered by TPI. TPI also requests the sound recording and the trademark tariff in the course of application with respect to the sound that is asking to be registered.

c) Scent and Taste Trademarks

Although currently there is no registered scent or taste trademark by TPI, the possibility of registering scents or tastes as trademark is not rejected in Turkish law. With respect to the registration, the characteristics of the concrete case are important and it is required for a scent or a taste to have the ability of being described and represented graphically and being distinctive. However, it is harder for scent and taste marks to provide these conditions, compared to sound and color trademarks. Yet the important thing is to be perceived and recognized identically by all the people, whose scent and taste feelings are triggered. This is very hard to achieve.

In these kinds of trademarks the descriptiveness is achieved by the chemical formulas of scent and taste. In order to do this, it is necessary for the chemical formula to be able to describe the components of the scent and taste in question exactly and to retain the components within time without any exposure. On the other hand along with the chemical formulas, the exemplar of the scent and taste in question must be submitted to TPI. However it is very hard to retain these exemplars verbatim during the protection period. Re-submitting the exemplars periodically to the registration authority in order to overcome the possibility of transition of scent and taste, vanishing or transition by similar means could solve this issue.

d) Three Dimensional Trademarks

Actually it is accepted for a long time that three-dimensional forms are qualified as being trademark. Therefore it is not very right to consider three-dimensional trademarks as an unconventional trademark. However it is not possible to acknowledge the three-dimensional trademarks between the traditional trademarks. Therefore we believe that it would be appropriate to mention the issue under this title.

Trademark Decree Law allows the registration of three-dimensional trademarks. It is adequate to submit the two-dimensional visuals (drawings, photos etc.) of the three-dimensional form in relation to descriptiveness. The matter in relation to three-dimensional trademarks is not the descriptiveness, but the distinctiveness issue. Most of the refusal decisions of TPI regarding three-dimensional trademarks are grounded on the distinctiveness requirement. For instance, in 2006 the applications filed for the following three dimensional trademarks for chocolate and confectionery, were rejected by the TPI on the ground that they were not distinctive.

On the other hand, the three-dimensional device trademarks, seen below, were rejected by TPI; however they were registered by the court order, as a result of the cases filed against the rejection decision of TPI.

At this point, it should be mentioned that the courts apply the distinctiveness notion much more broadly and resiliently than TPI. It is in such a degree that even applications of many three-dimensional trademarks rejected by OHIM was/is registered in Turkey by court orders.

8. TRADEMARK CRIMES

a) In General

The Turkish trademark law is regulated by the Trademark Decree Law of 1995 and the criminal acts of trademark infringement are also defined in the art. 9 and art. 61 articles of the Decree Law. By the art.61/A, added later on into the Decree Law by an Act, the criminal sanctions with respect to the related crime types were regulated. However, the added article, which was put into force by an Act, only regulated the criminal sanctions; the crime types, which are subjected to a penalty, did not appear in the mentioned article. Therefore the regulation was against the principle of "no crime without a previous penal law"; since although the additional article regulated the penalty, the crime types were regulated by a Decree Law which is an executive act.

It was appealed to the Constitutional Court in 2005 by the Ankara Criminal IP Court on grounds that the present regulation was against the principle of no crime without a previous penal law and it was requested the cancellation of the articles of the Decree Law in relation to the crime and the penalty. It is only possible to request the cancellation of the articles, which are being grounded in a pending case, when the courts request the cancellation from the Constitutional Court. Therefore in this solid appeal the IP court has requested the cancellation of the articles in relation to the case, which comprise the grounds of the cancellation application.

The Constitutional Court agreed on the lawfulness of the regulation and decided for the cancellation of the art. 9 and art. 61 of the Decree Law that includes the definition of the crime and of the provisions of the art.61/A, which were about the criminal sanctions and subjected to the appeal. In order to fill the gap formed by the cancellation decision, it was granted time to the Assembly to enact a regulation by "law" with respect to the cancelled matters. If the necessary enactment would have been drafted until the deadline, the new regulation would have entered into force before the cancellation decision, and then the cancellation decision would have not caused any chaos. Nevertheless the necessary regulation was not enacted during the given period of time and the related articles were abolished with the entrance of the cancellation decision into force on 05.01.2009. This caused for most of the basic trademark crimes to stand without any sanction and approximately nine thousand pending trademark penalty cases were dropped at that time being. This situation caused the long-term fight against the counterfeit goods to take a major blow.

The legislator entered into force the articles of the Trademark Decree Law, which were cancelled, by amending them partially with the Law nr.5833, dated to 28.01.2009 in order to fill the mentioned gap. But since the penalty provisions do not have a retroactive effect, this Law will only be applied to the trademark crimes committed after 28.01.2009. Consequently, it is pleasing that at least a law was implemented to fill the gap even if it was quite late.

b) Trademark Infringements Acknowledged as a Crime according to the Trademark Decree Law

By the amendment made by the Law nr.5833, the actions that constitute crime are enumerated restrictively as appropriate to the principles of penalty law. However the Law excludes most of the infringements from being acknowledged as a crime, which were accepted as trademark crimes earlier.

The first crime type described in the new regulation is to produce goods or services, to expose them for sale or to sell them by using the identical or confusingly similar trademark that belongs to someone else. It is held to imprisonment from 1 year to 3 years and judicial fine, which corresponds to the 20.00 days of imprisonment in case of the constitution of the crime. However it is not held for a penalty when the perpetrator, who exposes to sale or sells the counterfeit good, inform where he has provided the mentioned products and accordingly when the products are seized after the manufacturer is revealed. It is not sufficient only to reveal the manufacturer or to ensure the seizure of the products, both of them must occur together.

Before the amendment, to keep the possession of the trademark for commercial purposes, to import, to distribute or to put the goods in commercial use were acknowledged as a crime along with the acts of manufacturing, exposing to sale and selling. However with the amendment these acts are taken out of being a crime. This caused a big gap in relation to the crimes on counterfeiting of trademarks. For instance, right now to keep the possession of a trademark, which is known that it is counterfeit, for the commercial purposes or stock them does not constitute a crime. However in the practice, according to the character of the concrete case, the courts assess the situation of keeping the counterfeit goods in possession in the scope of exposing to sale and held for penalty. For example, if it is caught too many counterfeit goods in a store, it is expressed that the crime has occurred since it is thought that these goods will be exposed to sale. On the contrary, it is not always possible to make this much of a broad interpretation. Therefore, although the courts assess some acts within the scope of the crime via interpretation means, it can be said that the new regulations do not protect the trademark right very effectively. This gap is obviated in the Draft Trademark Code, which there is currently ongoing studies in relation, and the acts of storing counterfeit goods, subject them to a process approved by the customs or subject them to use, to carry or keep in possession for commercial purposes regardless of the means are acknowledged as crimes along with the current ones. However it is not possible to file a criminal case with respect to these actions until the draft become law.

The second crime type is the removing of a trademark from its place without the authority, which is protected by law and placed on the product or on the packaging. It is required for the constitution of the crime that the unauthorized person, who removed the sign, must have acted deliberately or recklessly. Within this context, to use the sign ® or another sign, which is known widespread and serves to this purpose, would make it harder for the perpetrator to claim that he was not aware of the fact that the mentioned sign is protected legally. In case of the constitution of the crime, it is held at most three years of imprisonment and judicial fine that corresponds to at least five thousand days of imprisonment.

The third crime type is to dispose someone else's trademark, when there is no authority to do so. To assign or grant license on or subject to a pledge someone else's trademark to a third person can be examples of this type of crime. It should necessarily be mentioned that to abuse the authority does not constitute this crime. The perpetrator here is the third person, which has no authority. In case of the constitution of the crime the perpetrator will be sanctioned imprisonment from two to four years and judicial fine that corresponds to at least five thousand days of imprisonment.

The imprisonment and judicial fine sanctions, mentioned in the article, were being executed to the real persons that were the perpetrator of the described crimes. However the legal persons do not have a criminal discretion. In case these crimes are committed within the frame of a legal person activities; it is held peculiar safety measures along with the other sanctions. However in practice, the authorities of the legal person are penalized, rather than the imposing of the safety measures.

c) Proceeding Procedure

The investigation and the prosecution of the trademark crimes depend on a complaint. The period of time for issuing a complaint is six months after it is being informed of the act and the perpetrator is learned. After the complaint, the prosecutor prepares the criminal charges and the case is filed approximately after 2.5 or 3 months. The first instance proceedings take 1 to 2 years, depending on the extent of the case. In case of an appeal regarding the decision of the first instance court, it takes 3 to 4 years for the Supreme Court to investigate it and held a decision.

The limitation of action in the trademark crimes is 8 years after the action is committed. Within this period the case must be filed against the suspect and the case must be finalized. The criminal time bar is 10 years after the decision is finalized. According to this, the held conviction verdict must be executed within 10 years. Otherwise the conviction quashes.

During making a complaint against a trademark crime, it is possible to request for the confiscation of the counterfeit goods subjected to the crime from the prosecution. The prosecution submits this request to the approval of the court on-duty. In the case of the approval of the request, the court on-duty decides the confiscation of the goods subjected to the crime and held for the search and seizure for the preservation of the goods until the proceeding are finalized. In case of an urgent matter it is possible that the search and seizure decision could be given by the prosecution. However in this case the decision held must be submitted to the approval of the judge within twenty-four hour. Otherwise, the consequences of this decision given by the prosecution abolishes by itself.

Lastly it should be mentioned that by the amendment made in the 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 1879 Patent Act, which was adapted from French Patent Act dated 1844. This act from the Ottoman period stayed in force for 110 years without undergoing major amendments.

Similar to the other fields of IP, modern regulations concerning patents were made in 1995 as well. In 1995, the Patent Act dated to 1879 was repealed and replaced by Patent Decree Law. With this Decree Law, protection for utility models was adopted for the first time as well.

Turkish Patent Decree Law is adapted mainly from German Patent and Utility Model Acts. However, some of the provisions such as the provisions regarding compulsory license were adapted from Spanish Patent Act.

Turkey is a party to Paris, TRIPS, EPC, EPC 2000, PCT, IPC, PLT, Budapest, UPOV and Biodiversity Treaties.

It can be stated that the Patent Decree Law is mainly in harmony with the above-mentioned treaties. However, due to rushed legislation, it is inaccurate and deficient in many ways. Thus, there has been an ongoing study for preparing a draft of a patent law consisting of 148 articles. However, this draft is not likely to become law and enter into force in near future. On the other hand, another draft of a 6-article text is planned to be carried into force in order to fill the gap of the penalty provisions of the Patent Decree Law, which were abolished by the ruling of Constitutional Court.

With foundation of Turkish Patent Institute (TPI) in 1994, Turkey became acquainted with a modern patent office. Services related to patent research and examination reports, however, are obtained from other countries due to infrastructural insufficiencies of technique and information as well as lacking qualified examiners. Since 2005, TPI has begun issuing research and examination reports in respect of some classes, yet more than 90% of the procedure for research and examination of the applications filed to TPI is still being held in the offices abroad.

In Patent Decree Law, the patent agent institution is also regulated. To become a patent agent, it is necessary and sufficient to be a university graduate and be successful in the exam that TPI conducts. Many patent agents, who do not possess an engineering background and fulfill these criteria, are working as patent agents in the field currently. Therefore the patent applications that are prepared by patent agents, who do not possess a technical background is standing in front of us as a crucial problem in practice.

Parallel to the improvements in the legal and administrative substructure, it is being experienced crucial increase in the patent applications. The number of applications, which were around 1500 in 1995, has passed 7.000 in 2009. This amount is approximately 10.000 per year with the number of utility model applications. Where the number of registered patents was around 50 in 1995, in 2009 this number has increased to 5.500. This amount increases even more when the utility models are included.

It should also be mentioned that the foreign application owners possess the domination with respect to patents, contrary to trademark, design and utility models. For example, only the 450 of the 5.500 registered patents were made by local firms in 2009.

Despite all these improvements on the Turkish patent system in the recent years, there is still a long way that has to be taken. This determination is valid for legal, judicial and also administrative substructure.

2. UTILITY MODELS

A spate of small innovations invented by companies, sometimes by individuals and mostly by SMEs usually do not meet with the inventive step criteria required for patents. Even when they met with the protection criteria, it is possible for an invention not to be patented due to the high costs. However today it is a necessity in many economies to promote the SMEs to make innovations and R&D. On the other hand the patent protection process takes relatively a long time. However, the registration procedure of utility models is shorter, cheaper and more practical. Due to these mentioned and similar reasons in Turkey, just like in some other countries, 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 is acknowledged as a rule with respect to utility models. In other words, if the invention that is subjected to utility models was accessed by the public in any part of the world prior to the date of application, then it is not novel. Similar to the patents, the utility models can benefit from the 12 months of application and exhibition priority right.

As utility model protection has the same aim with patent protection, the non-patentable subject matters and inventions do not granted with utility model certificates. Nevertheless some patentable inventions cannot enjoy utility model protection. Since the aim of the protection is same, an invention cannot be granted with patent and utility model certificate at the same time.
Although the aim of the protection is the same, there are crucial differences between patent and utility model protection. These differences can be summarized as such:

As mentioned above, differently from patens, in Turkey the inventive step condition is not required for utility models.

The term of protection in patents with substantive examination is 20 years, in patents without substantive examination 7 years, whereas the utility models are protected for 10 years.

Differently from the patents the utility model applications are only examined formally, there is no substantial examination as such.

Supplementary inventions, whereas method inventions and the products and the chemicals obtained as a result of these methods are patentable, these kinds of inventions are not granted with utility model certificate.

The fact that the formal examination is acknowledged is generally misused in practice. The procedure is like this: Starting from the date of publication of a utility model application anybody with an interest has the right to oppose to the application in writing within 3 months. The applicant is notified by TPI at the end of the three months from the objections that were made to the application. The applicant can chose one of the means mentioned below within 3 months after the notification: a) submit the replies to the objections to TPI and request the denial of the objection, b) change his/her claim(s), c) request the granting of the certificate by disregarding the objections.

In the case of preferring the third option by the applicant, TPI must grant the utility model certificate by disregarding the third party objections. In practice mainly this third option is used and thus the certification is granted to a utility model that does not necessarily meet with the requirements of protection.

This unlawfully obtained certificate is frequently used against the competitors. In order to balance this wrongdoing, the lawmaker acknowledged that in case of a cancellation action filed against a utility model registration, the rights deriving from the mentioned registration can not be used against third party's until the end of the court action. (Patent Decree Law art.158/II). In our opinion the lawmaker is trying to correct a mistake with another mistake. Then within this execution, the certificates that deserve to be protected become unable to be alleged against third parties until the cancellation action comes to a conclusion.

In practice the defendants, who are subjected to utility model infringement actions generally invoke the regulation in the art. 158 of the Decree Law. It should be emphasized that in order to apply this article, there has to be an action for cancellation filed against a certificate. The action can be filed either by somebody else or by the defendant of the infringement case.

According to the art. 164 of the Patent Decree Law, the same protection conferred to patents is valid for the utility models as well. The protection of both patents and utility models are the same with respect to scope of protection, except the differences mentioned above. The Supreme Court emphasized this issue specifically in a decision in 2002. Besides, under the circumstances where there is no clear provision on utility model certificates and in the case of there is no conflict with the character of the utility model protection, the provisions acknowledged for patents can be applied for the utility model certificates as well.

Lastly it should be mentioned that the utility model application could be converted into patent application and vice versa. However the conversion request shall be submitted before the TPI's decision of granting utility model certificate.

3. PHARMACEUTICAL PATENTS

The production of drugs in Turkey goes back to the beginning of 20th century. The establishment of the pharmaceutical industry in real terms coincides to 1950s. The first arguments on pharmaceutical patents started in those years.

With the enactment of Foreign Investment Promotion Act, dated to 1954, the foreign pharmaceutical companies have started to invest in Turkey. The local capital, which was encouraged by these investments, was directed to pharmaceutical industry as well.

The patent protection in Turkey was recognized by the Patent Code, dated to 1879, which is the sixth patent code of the world. The drugs were left outside the scope of protection in the art.3 of the Code. The term drug here implicates the medicinal and veterinary pharmaceuticals. The pesticides were in the scope of protection by the time of the mentioned code.

The innovator companies, which were cognizant of the fact that the pharmaceuticals are outside the scope of patent protection, managed to obtain patent for the method innovations by writing the name of the chemical active ingredient instead of drug as the title of the innovation. The facts like frailty of the patent system in Turkey on those days and the acknowledgement of the system of granting patent without examination smoothened the attempts of these innovator companies. As a result, these companies obtained patent protection for pharmaceutical methods between the years 1950 to 1961 and used these patents against the generic companies.

Upon these developments that caused serious arguments in the public opinion, the issue was subjected to Constituent Assembly. The Constituent Assembly made the interpretation in its Decision nr. 51, dated to 1961 that; the method innovations are outside the scope of patent along with the product innovations according to the art. 3 of the Code. Thereupon the mentioned article was subjected to Constitutional Court with the plea of unconstitutionality. Nevertheless the Constitutional Court denied the plea of unconstitutionality in 1967 and finalized the arguments for that moment. Consequently it was acknowledged that both the product and the method innovations are outside the scope of patents. This application lasted until 1995.

In Turkey the crucial reforms are usually substantiated by an external influence. With respect to IP in general, the protection of pharmaceutical patents in private, this tradition did not fail. The pharmaceuticals came under the patent protection in 1995 as a result of Turkey being a party to TRIPs and again by the approval of Customs Union with EU.

In accordance with TRIPs, it was acknowledged in the first text of Patent Decree Law; i) the pharmaceutical products would be protected from 2005; ii) the pharmaceutical production methods would be protected from 2000 under patent law. It is also accepted that a Cabinet Decree can also postpone this term to 2005. Nevertheless, Turkey decided for both the product and the method inventions with respect to pharmaceuticals to enjoy the protection starting from 1st of January 1999 with the dated 1995 Patent Decree Law in accordance with the demands of EU. Consequently, Turkey did not use the time that TRIPs had provided.

Turkey became a party to TRIPs on 01th of January 1995. According to the mandatory provision of TRIPs, Turkey has undertaken the responsibility of accepting the pharmaceutical patent applications from the mentioned date. However the domestic law (Patent Decree Law) entered into force in 26th of June 1995 barely. It should be emphasized that approximately 230 pharmaceutical patent applications were made during the term of 1st of January 1995 – 26th of June 1995. Yet at those dates the provisions of old Patent Code, dated to 1879 were in force and thus as mentioned above the pharmaceuticals were outside the scope of patents. Depending exactly on this argument, the generic pharmaceutical companies filed actions claiming that these applications had no legal basis and therefore must have been deemed as absolute null. The IP courts of Ankara denied this demand, the issue is still at the appeal stage in Supreme Court.

On the other hand, the Bolar exception is applied widely in Turkish Law. According to the art. 75/f of the Patent Decree Law the authorization of pharmaceuticals is the exception of patent protection. The Supreme Court reached to a decision in Eli Lilly vs. Sanovel Case in 2008 expressing that to apply for authorization of generic pharmaceutical does not constitute an infringement of a patent right.

The only country that leaves the pharmaceuticals outside the scope of protection before TRIPs is not just Turkey. During the drafting of the TRIPs text, it was suggested that the pharmaceuticals, which the patent protection is still valid in the countries that acknowledges patent protection should be protected in the countries such as Turkey, which subsequently includes pharmaceuticals into the patent protection. Thus it was aimed to provide protection to the innovations that are not new in the countries that subsequently includes pharmaceuticals into patent protection. There is no undertaking of Turkey with respect to this protection model, which is known as the pipe - line protection, neither in the context of international agreements nor in the scope of EU Turkey affairs. Therefore Turkey, by ignoring external suggestions, did not acknowledge the pipe - line protection.

Lastly, it should be mentioned that Turkey acknowledges the data exclusivity protection for 6 years. The Supplementary Protection Certificate has not been accepted yet. These issues will be explored under a different title.

4. DATA EXCLUSIVITY AND SUPPLEMENTARY PROTECTION CERTIFICATE

In order to obtain authorization from the Ministry of Health for a pharmaceutical product, results some tests and clinical trials that show the drug is effective and safe are submitted to the Ministry. The generic companies can either do these tests and trials by themselves or they can apply for an authorization depending on the results of tests and trials that have submitted to the health authorities by an innovator company. As the cost of these tests and trials are too expensive, the generic firms usually prefer the second option. This is called abbreviated application for authorization.

Most of the developed countries, such as USA, Japan and EU countries, by accepting data exclusivity, manage to prevent the utilization of the generic firms, even indirectly, from the data that has submitted to the health authorities by innovator firms. The data exclusivity is the utilization of only the owner of the data for a certain period of time and under certain circumstances. The data exclusivity is acknowledged to be a different protection from the patent protection and accepted as a new IP right.

It is disputed whether the art. 39/3 of TRIPs regulates data exclusivity or protects confidential information under the rules of unfair competition. The developed countries tend to interpret the related article as data exclusivity; on the other hand the developing countries are in the tendency to interpret the article as data protection. The absence of a time limit in the mentioned article shows that the article is related to data protection, but not data exclusivity.

The issue of data exclusivity caused heated debates between Turkey and EU. Turkey undertook to approve the data exclusivity under the 2/97 Association Council Decision. At the time of the undertaking the term of data exclusivity in EU was six years. Turkey acknowledged a system as below by making amendments on the Human Medicinal Products Licensing Regulation in 2005:

It is provided 6 years of data exclusivity to a medicinal product starting from the date of first authorization in Customs Union (hereinafter CU), which is authorized in one of the member states of CU after 1.1.2001 and applied for the authorization of its generic in Turkey until 1.1.2005, under the condition that the term of patent protection will not be exceeded.

It is provided 6 years of data exclusivity to the medicinal product in Turkey, starting from the date of first authorization in CU, provided that it was authorized first time in one of the member states of CU after 1.1.2005, under the condition that the term of patent protection will not be exceeded.

With another amendment on the Regulation in 2009, the data exclusivity regarding combinations is restricted. Accordingly, the applications for approval, which are in the form of additional dose, pharmaceutical form, route of administration and presentation applications and variations of a previously licensed existing medicinal product and in the case of, including the known compounds and each of the component / composition has an established medical use with a reasonable level of effectiveness and acceptable safety, the combinations that do not include a new indication except the known therapeutic indications, even though clinical studies have been done for each component are considered to be a part of the first authorization. Therefore, 6 years of data exclusivity is acknowledged for these kinds of products starting from the first authorization date. However, there is no new data exclusivity for the combinations, which is formed by further variations.

By contrast, the new medical products that includes known components, but there is no established medical use with a level of efficiency and acceptable safety of each component, that offers a therapeutic usage outside the known therapeutic use for the combined state of each component, in case of the clinical trial results are achieved, new application for approval can be submitted for such combinations. Therefore, in this case new data exclusivity is acquired.

The Ministry of Health, which is the authority for authorization, is in the opinion that data exclusivity does not prevent the abbreviated authorization application; it only prevents the certification of the license. The practice is on the same direction. The innovator companies brought this issue to court; nevertheless the case law is parallel to the application of the Ministry of Health. The Supreme Court stated in the UCB SA vs. Abdi İbrahim Case in 2008, "... the fact that the defendant made an abbreviated authorization application can not be qualified as an act that cause a danger of unfair competition according to the art. 56 and the following articles of Turkish Commercial Code, since... this act is considered as the use of a right of application derived from the legal regulations." The Supreme Court decided that plaintiff, which owns data exclusivity, had no right to file an action at this stage, since it was not certain whether the authorization would be granted or not. The Supreme Court repeated this opinion in UCB SA vs. Nobel Case in 2009. As a consequence, it is apparent that according to the Supreme Court, the data exclusivity does not prevent the application for abbreviated authorization; however it is an obstruction for the granting of the license. Therefore the action should be filed after the granting of the license.

As it known, the patents are protected for 20 years starting from the date of application. The launching of a medicinal product with an authorization takes approximately 10 to 12 years after the patent application. As a result, differentiating from other sectors, the medicinal products do benefit from the patent protection 8-10 years in real terms. The developed countries provided Supplementary Protection Certificate (SPC) to the medicinal products after the end of the term of the patent protection, in order to compensate the mentioned time, known as the bitten time in doctrine.

Although EU is applying pressure to Turkey to accept SPC, it has not yet been accepted by Turkey on the ground that the protection can be granted once Turkey is accepted to EU. If Turkey, who has tight affairs with EU, accepts SPC one day, it is expected from Turkey to implement the EU legislation into the domestic law. Thus, although in regard to data exclusivity the EU legislation has been followed, the situation is completely different with respect to SPC.

5. COMPULSORY LICENSE

a) In General

Compulsory license is the license, which is granted on the patent against the consent of the patent owner for the sake of third parties under certain circumstances.

The regulation of TRIPs with respect to compulsory licenses has been adopted into domestic law by Patent Decree Law, dated to 1995 with the TRIPs membership of Turkey. As there was no such regulation regarding compulsory licenses at the time of old Patent Code, which was in force until that day, the situations that cause granting of compulsory licenses today were the grounds of nullity. Although compulsory license is an institution that restricts the freedom of contract of the patent owner, it is a lighter sanction when compared with nullity of the patent.

The aim in compulsory license is to provide community with the opportunity to benefit from the invention that is left to the monopoly of the patent owner. Therefore the compulsory license becomes necessary when the patent owner avoids from providing the patent for the use of community without any legitimate reason. Thus it is accepted as a pre-condition that the patent owner did not offer a patent license before. If the patent owner has made a contractual license offer open to the public via TPI in order to grant license to third parties, nevertheless his/her offer was not admitted, then that patent cannot be subjected to a compulsory license.

b) Reasons

In order to grant a compulsory license on a patent, it is required one of the below mentioned reasons:

i) The Non-use of the Invention Subjected to Patent: According to the art.100 of the Patent Decree Law, although a period of three years past after the notice regarding the granting of the patent has published in the Patent Bulletin, if the patent owner did not put the patent to use without any justifiable/legitimate reason or the use of the patent had been suspended during an uninterrupted period of 3 years or more without justifiable/legitimate reason, then third parties may request the granting of a compulsory license.

Although the period of three years mentioned in the law passed, if the patent owner has begun to use his/her invention, then the compulsory license can not be requested. If there is a legitimate reason for the patent owner not to put the patent in use or suspend the use, again compulsory license can not be granted. The compelling reasons, such as war, disaster and mobilization are deemed as legitimate reasons within this context. Furthermore in the circumstances that although the patent has been put into use but then suspended because the patented invention is not demanded on the domestic market is deemed also as a legitimate reason.

The patent owner can practice the use by himself/herself or render the third parties to put the patent in use by granting licenses. In both situations the use must be in such a level that the needs of the community are fulfilled. The meaning of use in this context is to put the product or the method into the market in Turkey. Importation is not acknowledged as a use.

The only compulsory license decision in Turkey was given in 1997 on the grounds of non-use. In the event that was subjected to the decision, the plaintiff -a Turkish firm- filed a case against an Austrian patent owner with the request of compulsory license. The patent subjected to a compulsory license was put under protection in 1983 and it was related to "plastic determination units". The plaintiff demanded from the court to decide for the granting of a compulsory license on the grounds that the defendant did not manufacture in Turkey within 3 years, did not grant license to them despite their applications and that since the product is not manufactured there is a constant importation and currency loss. The defendant firm claimed in their defense that the legitimate conditions for compulsory license has not arisen, the market share has not occurred in a way that it will require manufacture, it is over costly to start manufacturing and alleged that actually the plaintiff is the biggest importer of the product and requested the rejection of the case. The plaintiff also stated that they have the opportunity to use the patent in question and put it into market in a way that it will fulfill the needs of the public. After two years of proceeding, it was decided to grant compulsory license in favor of the plaintiff in return for 1.000.000 TL (Appr. 500.000 Euro) deposit and a royalty of 5% and under the circumstances that the manufacturing and selling must only be made in Turkey. The decision of the first instance was finalized after the Supreme Court examination upon the appeal of the defendant. After the decision of compulsory license, the owner of the patent has stopped paying the patent fees and thus the patent become public domain.

ii) Public Interest: With or without the will of the patent owner, there can be a public interest in the use of some inventions by official authorities or by third parties via official authorities and make the patent available to the public. Considering this situation, art.103 of the Decree Law makes it possible to decide for a compulsory license for the sake of public interest.

In the situations regarding public health, national defense purposes and country's economic or technical development, public interest can be mentioned. However there can be public interest in other situations rather than these 3 situations and compulsory license can come to the fore. On the other hand, the matter of public interest should be evaluated by taking the public in general. The interest of a specific group is not considered as public interest.

Varying from other compulsory license versions, it does not prevent the granting of compulsory license for a patent to be in use or to be in the application phase.

The Council of Ministers gives the decision of compulsory license upon the offer of related ministry (Ministry of National Defense, Ministry of Health or Ministry of Industry and Commerce). In other words, there is no need for a court decision to grant compulsory license on grounds of public interest. However the decision can be cancelled by filing a case against the decision of Council of Ministers, as the decision is an administrative act.

The authority (Council of Ministers), which grants the license, determines the quality of the compulsory license by taking the characteristic of the solid case. As a rule, the compulsory license is nonexclusive. However, if it is mentioned in the decision it can be decided for an exclusive compulsory license.

iii) The Presence of Dependency between the Patents: If it is required to use another patent to operate a patent, then it is acknowledged that there is a dependency between the patents. There can be dependency among both product and method patents within themselves; there can also be dependency between a product and a method patent.

According to the art.101 of the Patent Decree Law, where there is a dependency between patents, the latter patent owner may request a compulsory license on the main patent by bringing evidence that the dependent patent serves a different purpose or achieves significant technical improvement.

When the compulsory license is granted on the main patent on grounds of the presence of dependency between patents, then the owner of the main patent may request a compulsory license on the dependent patent as well.

iv) Patent-of-Addition: Patent-of-addition is the patent that brings the invention, which is the subject of the main patent to perfection or the patent that develops it and stays in unity with the main patent. The difference of patent-of-addition from the dependent patent is that patent-of-addition is developed by the owner of the main patent, not by third parties. In other words, there are two separate patents owned by the same person; one is the main patent and the other is the patent-of-addition.

The reason why patent-of-addition is subjected to compulsory license lies under the matter of natural bond of it with the main patent. As a matter of fact, where there is a compulsory license granted on the main patent, naturally this license comprises its supplements. However this natural inclusion is applied to the patent-of-additions, which are present at the time of the compulsory license decision.

If there are new patent-of-additions after the granting of compulsory license, in order for the compulsory license to comprise them, a separate procedure must be run. The owner of the compulsory license, by propounding that the mentioned of-additions serve to the same industrial aim with the main patent and that there is a public interest in the use of them, should request the granting of the compulsory license for the later emergent patent-of-additions.

f) Usurpation of a Patent Right: According to the art.13 of the Patent Decree Law, where a patent has been granted to a person other than the rightful owner, it is vested to the rightful owner the right to institute a court action against the usurpation of the patent right and request for the assignment of the right to him/her. In this case, the person, who usurped the patent right without bad faith may request for a voluntary license on the patent that transferred to the rightful owner at the end of the trial. Furthermore, the persons that acquired licenses from the person, who usurped the patent right and has started to use or made serious investments to start to use the patent, may request from the rightful owner, who recovered the patent to grant them license on the patent. In the cases that the person, who recovered the patent rejects the requests on these voluntary license offers, the person, who usurped the patent right without bad faith and the person in good faith, who obtained license from him/her may request compulsory license on the patent.

c) The Granting Procedure

As explained above, the compulsory license decision on the grounds of public interest is issued by the Council of Ministers. In the compulsory licenses issued on the grounds of other four reasons, the procedure is pretty different. The person, whose end aim is to obtain a compulsory license, must make an attempt to acquire a contractual license from the patent owner. In the case that he/she cannot achieve a result on his/her attempts, then he/she approaches to TPI to establish a contractual license relationship between him/her and the patent owner and request for mediation. TPI conveys this request to the patent owner and reconcile to establish a contractual license relationship between the parties. If the parties cannot reach to an agreement despite the mediation of TPI, the person may go to the court and request for a compulsory license. The person, who requests compulsory license from the court, must prove that the conditions of compulsory license has met, the contractual license attempts remained inconclusive and if it is decided for compulsory license he/she has the authority to use the patent. After obtaining the statements and the evidences of the patent owner, the court reaches to a verdict on the compulsory license request. If it is held in favor of the compulsory license, then the court determines the license compensation with respect to the subject matter. The decision held may be revised or cancelled in case the conditions change afterwards. If there is no exceptional situation, the compulsory license granted is a simple license.

The compulsory license is a disused means in Turkey, just like in lots of the countries in the world. Although it does not appear in practice frequently, compulsory license is one of the most crucial restrictions applied to patent right. In the recent past the Ministry of Health has decided to take the necessary precautions to encourage the compulsory license with respect to pharmaceutical patents. There are studies going on in this direction. Therefore it would not be a surprise if this crucial instrument would appear in the practice in the near future.

6. PATENT INFRINGEMENT AND CRIMINAL MEASURES

In criminal law the principle of legality in crimes and measures (nulla poena sine lege) is valid. According to the principle, both the type and the measure of the crime shall be regulated ipso jure. According to another basic principle in criminal law, the type of the crime shall be unambiguous, in other words it shall be definite. The objective element of the crime is the action deemed as the crime and the act must be defined in the legislations unambiguously and simply and cleared of all doubts.

In the patent infringement cases it is not easy to determine whether the act constitutes an infringement to the rights derived from patent or not; whether the alleged infringing act is included in the scope of patent protection or not and if it is in the scope, which claims are intended to be infringed. In this context, regarding family patent infringement cases it is reached to varying results such as; in some countries there is no infringement and in others there is. Again a European Patent can be invalidated in some countries, whereas the same patent is acknowledged valid in some others. At this point, the patentability of an innovation and the nature of the infringement can differ from country to country. Even in the different cases filed in the same country with respect to same patent, different results can come up.

Within this circumstance, it should be dealt delicately the criminal measures that will be applied by virtue of an act, which the question of whether it constitutes an infringement or not is indefinite in nature and disputable and the determination can only be apprehensible as a result of detailed researches of the experts. Especially the issue of whether the infringement of a patent right should be penalized with imprisonment or not gains importance at this point. Within this context, there are no liabilities for the member states regarding imposing criminal measures against patent infringement, whereas it is foreseen in the article 61 of TRIPs that acts of piracy and counterfeiting must be penalized. On the other hand, on the first draft of the Proposed Directive on Criminal Measures aimed at ensuring the Enforcement of Intellectual Property Rights the criminal measures against patent infringement were acknowledged, however by further amendments made on the draft this provision was struck out.

The patent infringements were subjected to imprisonment from 2 to 4 years and heavy fine according to the art. 73/A of the Patent Decree Law, which was amended later by a legal provision. In addition to this, this amended provision was regulating only the measure; the crime type was regulated in the art. 73 of the Patent Decree Law. In other words, by regulating the type of the crime by a Decree Law, which is an executive act, the principle of nulla poena sine lege was violated.

In a criminal case filed against patent infringement, the first-degree court appealed to the Constitutional Court by virtue of the ambiguity of the patent infringement and depending on the reason that a crime could only be enacted by law and demanded for the annulment of the criminal provisions grounded in that case. The Constitutional Court accepted the demand and cancelled the provisions in 2009. In the same decision the Constitutional Court granted time to Parliament in order to re-regulate the issue by law until 10th of June 2010. The Parliament is still working on a legislative proposal consist of 2 articles regarding patent infringement that will fill the gap. In addition to this, all the pending patent cases were abated at the end of the term granted by the Constitutional Court, since no new legislation was implemented with respect to the issue. The Constitutional Court cancelled the parallel provisions that brought to appeal by similar grounds regarding Design and Geographic Indications Decree Laws. Thus approximately 4.000 criminal cases were abated in regard to patents, utility models and designs. A similar situation occurred in the beginning of 2010 with respect to trademarks and at that time approximately 9.000 criminal cases were abated. After these cases were abated the Parliament filled the gap regarding trademarks by Law nr. 5833. Therefore today trademark infringements are subjected to criminal measures.

It should also be mentioned that even in the absence of the Constitutional Court rulings; the criminal measures in the decree laws would become inapplicable due to the new Turkish criminal legislation. According to the art. 5 of the new Turkish Criminal Code, dated to 2004 crimes and the measures shall only be regulated by a legislative provision. All the regulations made against this provision are invalid. This rule actually originates from the Constitution. The enforcement of the mentioned provision was delayed few times, nevertheless implemented finally on 1st of January 2009. Therefore even when the Constitutional Court did not give the mentioned decisions, the criminal provisions of the Decree Laws would become void by the 1st of January 2009.

At this point, the draft of a legislative proposal regarding criminal measures to patent infringements is still in the Parliament. In the Parliament, mainly a dispute between pharmaceutical companies, namely generics and innovators is going on. Whereas the innovator companies are lobbying for the enactment of the criminal measures for the patent infringements, the generic companies are defending that there should be no criminal sanctions (taking UK system as precedent). When the last version in the Parliament is examined, it is seen that there are no prison sentences –differs from the first draft- instead judicial fine is envisaged. Nevertheless it has not been yet clear in what way the proposal, which is expected to be enforced in the forthcoming days, will become law.

Lastly it should be mentioned that the patent protection starts from the date of application. Within this context, the scope of the right derived from application caused arguments during the studies of the proposal. As a result of the arguments, in the Proposal it was accepted that the owner of the application could file a civil or a criminal court action as of the publication of the application. On the other hand, in the case of the infringer is informed from the scope of the application and the application itself, these actions could be filed prior to the publication of the patent application as well. However the court cannot conclude the court action, before the publication of the notice regarding the issuance of letter's patent in the bulletin.

IV. DESIGN LAW

1. IN GENERAL

One of the most fundamental agreements on IPRs is Paris Convention of 1883. The convention introduced the liability of protecting the industrial designs to the member states; however left the matters of scope of the protection and in what way the protection will be provided to member states out. Turkey became a member of the mentioned Convention in 1925. Thus, the protection of industrial designs in Turkey was acknowledged for the first time through this Convention. Nevertheless, instead of enforcing special regulations in relation to the subject, Turkey preferred to protect the industrial designs by unfair competition law within the frame of general provisions for a long time.

According to the art.56 of the Commercial Code, any deceptive actions abusing commercial competition is deemed as unfair competition. These actions are considered to be the examples of unfair competition according to the art.57 of the Code: To try to create confusion with someone else's enterprise, product or service; especially to use someone else's name, title, trademark or sign in a way that it might create confusion.

The Supreme Court accepted the use of someone else's design as an unfair competition by relying on this provision. It is not easy to determine the protection criteria from the Supreme Court's decision with respect to this matter. Furthermore the decisions are inconsistent within themselves. In some decisions it is required for a design to be novel, in others it is mentioned individuality or originality. In some decisions, the Supreme Court did not mention any of these at all. In the decisions, in which these terms were emphasized, the terms were not described, for instance, it was not explained what should be understood from the notions of individuality, novelty or originality. On the other hand art.57 of the Commercial Code requires the presence of the confusion in order to speak of unfair competition. Nevertheless, the Supreme Court sought for the presence of the confusion in some decisions in relation to the protection of the industrial designs by the unfair competition provisions and did not seek it in some others. The Supreme Court ruled in favor of the presence of the unfair competition against uses, where it is not possible to create confusion.

Within this frame the industrial designs were protected only by unfair competition provisions in Turkey until 1995. On this date depending on both agreeing on customs union with EU and acceptance of TRIPs agreement, Turkey has begun reforming activities regarding IP related issues. Within this context for the first time the industrial designs are subjected to a special regulation. The Design Decree Law of 1995 was adapted from the EU Design Draft Directive and Regulation of 1993. Today the Design Decree Law is mostly in harmony with the EU Design legislations. Turkey has become a member of Locarno Agreement in 1997 and Hague Agreement in 2005.

Briefly, Turkey has acknowledged a totally new system regarding design protection after 1995. This system is substantially adapted from EU legislations. According to the acknowledged system, the designs that are new and individual character are protected.

In the mentioned regulation mainly the system of registration without examination is accepted. According to this, TPI registers officially the designs and then publishes them. Within the period of 6 months pendency time the third parties may object to the registration. Upon objection, TPI examines the subject limited to the information and the documents submitted and decides either for the rejection of the application or for the registration. For the cancellation of this decision, an action can be filed within a period of 60 days before the IP courts in Ankara.

In case of no objections, TPI predicate the statement of the owner of the application on and register the application. In practice it is objected only to 10% of the applications and the rest is registered without any examination.

Through the design registration, firstly it is provided five years of protection to a registered design and this period can be prolonged at most for twenty-five years under the condition of making renewals in every five years.

Lastly it should be mentioned that the unregistered designs are not regulated within the Design Decree Law, it is accepted that they will be protected under the general provisions (art.1). The information in detail is mentioned in the other articles regarding both unregistered and registered designs.

2. SPARE PART DESIGNS

In order to conceive the term "spare part", the complex product must be known. A complex product is a product, which is composed of more than one component that have physical bound among each other enabling the product to be demounted. For example, an automobile, a refrigerator or a washing machine is a complex product. A spare part is the demountable compounds in the case of the need of a compound replacement of the original compound in a complex product because of the reasons, such as attrition, abrasion or impact.

The spare parts have physical bound to the complex product. Therefore complex product differs from sets and wares. The wheel, the seat, the doors, the body shell and the brake pedals of an automobile can be the examples of a spare part. On the contrary, as a rule the components belong to a set of furniture or a coffee or a sleeping set will not be accepted as a spare part in the meaning of design law. Because there is no physical bound among the components that belongs to a set or a ware. When there is a physical bound then they will be accepted as spare parts for sure.

It should also be mentioned that a "part of a product" that is mentioned in the description of design should not be confused with the "component part of a complex product" regarding a spare part. This differentiation has crucial results in the point of design law. The term of "part of product" is related neither to the term of visibility, which is an exception for the design protection, nor the usage of the spare parts for repair, which is the subject of this article. It is related with the appearance of the product and the description of the design.

The spare part designs can be classified as such in the point of design law:

i) The Spare Part Designs, which are not bounded to the appearance of the complex product and are independent from it functionally; this type of spare part designs do not bounded to the appearance of the complex product and also it does not have to be designed in a particular way in order to function. The design of this type of components is not any different from the design of any other product. They show the characteristics of neither must match nor must fit designs. For instance, the design of the seat and the designs of the inner side and the inner mirror of an automobile are such designs. According to the EU and Turkish law, as long as they meet the criteria of novelty and individuality when they are dealt individually, independent from the general appearance (design) of the complex product, they will enjoy 25 years of design protection without any subjected to limitation.

ii) The Must Match Designs; this type of spare part designs are bounded to the general appearance (design) of the complex product. It is required for this type of spare part designs to be designed in a particular shape in order to be suitable with the appearance of the complex product. This requirement is derived from the aesthetic/ visual concerns. The components such as bonnets, bumpers, doors, lamps, rear protection panels, windscreens and wings are in this group. For example, it is not possible to insert the door of the BMW to a Mercedes even it is technically possible and vice-versa.

iii) Must Fit Designs; it is required for this types of components to be designed in just a specific way to function. This requirement is based on technical reasons. For example, the designs of exhaust pipe or the connection parts of the break pedals are such designs. Precisely the Supreme Court is in the opinion both before and after the regulations in 1995, in which the Design Decree law promulgated that the designs, which dictated by their technical function including must fit parts, will not be protected.

iv) Invisible Designs; it is regulated clearly that this kind of component designs are not protected in EU law, where as there is no applicable regulation in Turkish law in regards. However it is acknowledged in the recent case law that these designs are not protected. The Supreme Court decisions in 2008 and 2009 are in this direction as well.

By design law, the design of a product or the design of a component of the product is protected, not the product itself. In some situations when the design of a product is protected the right owner owns the monopoly on that product de facto, even if not de jure. Therefore the legislator, who takes the cognizance of this situation, imposed some restrictions in design law along with the product designs, in order to avoid the de facto protection on the product. Some certain law systems left the must fit designs, which the technical function renders them requisite, out of the scope of protection considering this thought. However, in the case of must match designs, which have to be designed in a certain way because of the aesthetic concerns, there is no such regulation. The regulations in this subject vary.

The disputes regarding in general spare part designs, especially automobile spare part designs materialize in the subject of must match designs. On one side of this dispute, there are the automobile manufacturers, defending that the must match designs should attract protection just like any other product design. The independent spare part manufacturers, insurance sector and consumer institutions, which constitutes the other side, defends the enforcement of protection limitations to these kinds of component (must match) designs, such as must fit designs.

In EU design law the problem is delayed by the stand still clause. In 1998 when the Directive was implemented the members can keep their existing regulations. The further adaptations can only be in the way of liberalization of the spare part market. In other words, the adaptations that will leave the must match designs out of the scope of protection or adaptations that will reduce the existing scope of protection may be made. Nevertheless the members that these kinds of designs are not protected cannot provide new protection methods to these component designs. A report drafted by EU Commission regarding to this delay reach to the conclusion that these component designs should not be protected, in other words the spare part market should be liberalized. According to the report, the design right should not create a monopoly in the spare part market, in other words in the secondary market. A Draft Directive dated to 2004 that requires adaptation in the Directive 98/71/EC has been prepared in accordance with this report, however it has not been enacted yet.

The source of the existing Design Decree Law in Turkey is the Draft Directive and Draft Regulation of EU dated to 1993. According to the Decree Law, which is nearly the exact interpretation, the must match designs are protected, in accordance with the EU texts of 1993, 3 years starting from the registration. After the expiration of this term, these kinds of component designs can be used by the third parties under the condition of not causing confusion for consumers on the source of the component. (Art. 22).

On the contrary, the Supreme Court preferred to solve the disputes regarding must match designs not according to art. 22 of the Design Decree Law but by the unfair competition provisions of Turkish Commercial Code. In a case subjected to a Supreme Court decision in 1997, a firm called Boztekin manufactures parts like bonnet, bumper and doors (must match parts) to 1970 Renault automobiles. Although the dispute should be solved according to the art. 22 of the Design Decree Law, the Supreme Court held the decision according to the unfair competition provisions grounded by the labor principle. According to the Supreme Court the act of Boztekin, which manufactures spare parts (must match design components) to old models of Renault constitutes unfair competition. The Supreme Court reached to the same decision in its Ford decision dated to 1994, before the Design Decree Law promulgated.

In the draft of Turkish Design Code waiting to become law in the medium or long term, the must match component designs are completely out of the scope of protection. The reason for this is to liberalize the spare part market. This regulation is in harmony with the Draft Directive that has been drafted in accordance with the EU Commission report.

Consequently it has to be mentioned that as long as the Supreme Court does not make any change in the case law on unfair competition, which is derived from the labor principle, then it is impossible for these regulations to achieve the intended goal. Because according to the Supreme Court, the rules of IP and the provisions of unfair competition applied cumulatively. The Supreme Court applies the cumulative protection principle widely and commonly by ignoring the special-general provision principle. Therefore the protection of must match designs is going on incorrectly under the protection of unfair competition provisions.

3. INVISIBLE DESIGNS

Design is appearance of the whole or a part of a product. However this concept is misleading in defining design. Yet the sense of touch can function along with the visual sense in perceiving a design. It is possible that there could be designs that people are not able to see, but able to perceive. For instance if a fabric creates new thoughts about its texture in someone's mind by its posture and makes somebody feel different emotions when that person touches it even if he/she can not see, the design of this fabric can attract protection according to the circumstances of the present case.

Inspite of these general explanations, in EU design law the designs that the users are not interested in are left out of the scope of protection. According to the EU Law, a design that belongs to the component of a complex product must be visible by the end users during the normal utilization of the complex product (Directive art. 3; Regulation art. 4). The problem rather relates to the components of a complex product. A complex product is a product, which is composed of more than one component enables the product to be demounted. There is a physical bound with the complex product and its components.

According to the EU design law, normal utilization means the utilization of the end user; the utilization for maintenance, servicing or repair work is not in the ambit of normal utilization. In other words, the designs of the components that intervening users such as maintenance or repairman can see but the end user cannot see during the normal utilization are not protectable. When the term normal utilization was being explained in the Explanatory Memorandum of art.3 of the Directive, the automobile example was used. According to this, the term of normal utilization should be interpreted widely; for instance it was mentioned that not only the components that can be seen while driving the car, but also the components that can be seen while sitting at the back or while walking around the car should be protected. During the normal utilization of a car the mirror, wheel and the seats can be seen. Again as the normal user would use the trunk of the car, the design of the trunk is protected as well. Nevertheless the components that are under the bonnet, such as engine and accumulator of the car are not visible.

This regulation leaves lots of spare part design out of the scope of protection. However the spare parts that provide the requirements determined in the legislations will benefit from 25 years of protection at most. In order to clarify the subject the automobile example, which is directly related to the subject should be mentioned in detail again. If the designs of the mirrors, the wheel and the seats of an automobile are new and have individual character by their own, apart from the automobile, then they will benefit from the 25 years of protection, since they are the visible parts of the automobile during the normal utilization. However the designs that are not visible during the normal utilization of an automobile such as thermostat, engine, spark plug, klaxon and fuel tank are not protected under design law. Because these parts are only visible during the moment of maintenance, servicing or repair work and are not visible during the normal utilization of an end user. The other IP legislations such as patent law are reserved. On the other hand if the suitcase example is taken into account, which is not qualified for being a complex product, the designs of the inner sides and sections will benefit from the 25 years of protection under the condition that they are new and have individual character.

As mentioned above, the source of the existing Design Decree Law in Turkey is the Draft Directive and Regulation of EU dated to 1993. In the Decree Law, which is nearly the exact interpretation, in accordance with the EU texts of 1993, there is no provision, stating that the invisible designs will not attract protection. On the contrary to this regulation in the Turkish applicable law, recently it is seen in the case law expressing that the invisible design cannot benefit from the design protection.

In 2006 an IP court held the decision that the invisible designs were not able to enjoy protection. After that other IP courts have started to held similar decisions and the Supreme Court approved the mentioned decisions. In 2008 Supreme Court reached to a decision regarding the subject matter as such; "... although the profiler at first provides the requirement of being visible, when they become a component of the complex product they lose the ability of being visible, therefore it is not possible for the form of the products, which are the subject of the proceeding, that are willing to be registered in a way that the protection of inner section is provided, to be registered..." the Supreme Court has also reached to similar decisions in 2009.

The opinions defended in the decisions are compatible with the model law. It can also be defended for the sake of the ideal law (De Lege Ferenda). Nevertheless it cannot be said that these decisions are compliant with the legislation in force.

Lastly it should be mentioned that, if the provisions of unfair competition are used as a ground for the protection of invisible designs, then they would enjoy protection depending on the labor principle. This deviating protection model, which is originated by case law, cannot be deemed as up to the mark.

4. THE PARTIAL INVALIDATION OF DESIGNS

In IP law the question of whether the integrity of the registration sample should be intervened or not, should be answered according to the each and every category of IP right. In trademarks, the sample of a registered trademark cannot be divided into parts; the trademark applied for registry either has to be registered as a whole or the application is denied completely. On the contrary, in the patent (and utility models) applications, where there is more than one claim, there is a possibility for some of the claims to be registered and some of them to be denied. Nevertheless none of the claims can be divided into parts. The same rule is applicable to the invalidity cases concerning trademarks and patents.

When the EU design law, which is the model law for Turkish design law, was formed, the partial invalidity institution was specifically regulated (EU Regulation, art. 25/6, art. 51/3). In the articles it is expressed that in order for a registered design to be declared invalid, two criteria shall be present at the same time: i) the maintained part that is not invalidated should comply with the requirements for protection by itself. ii) the design of the part that is subjected to the registration should be able to retain the identity of the design.

The second condition decreases the functionality of the partial invalidity institution largely. Yet it is usually not possible for the maintained part to retain its identity in the registration phase when a part of the registered design is declared invalid. For example, in the cases where the original part is a pattern design in the front part of a table but the general appearance of the table is common, then the part, which will be declared partially invalid, is the design of the table itself. Again in an original pattern design made on to a part of a cupboard door, the common part would be the design of the cupboard itself. In both situations it will be demanded to continue the protection on the pattern designs. Nevertheless when the designs of the table and the cupboard is declared invalid, then only the pattern designs would be maintained and thus the designs subjected to registrations will retreat from their identities. In EU law the designs are declared not partially but totally invalid in such cases. Although at first this situation seems appropriate to the approach that suggests only the new parts of a design should enjoy protection after all, as a result of this approach the parts that are actually new left out of the scope of protection since their identities are effected. On the other hand, if the not original part of a table is the design of the legs, then the design of the legs will be declared invalid and the protection of the design of the other parts of the table will continue. In this last possibility, the institution of partial invalidity of EU law will function. Nevertheless in the practice the registrations are made usually by the application of the designs such as bezel, pattern, handle, leg and etc., which in deed pertain to common products. Therefore the regulation of EU will not necessarily satisfy the needs of practice.

It was desired to insert this regulation in the model law into Turkish law; however because of the false interpretation it was not succeeded. Thus the courts depending on the above mentioned interpretation mistake do not apply the provision regarding partial invalidity in the last paragraph of the art. 44 of the Design Decree Law.

The TPI preferred to adjust the subject matter through the regulation by making amendments on the art. 19 of the Implementing Regulation of Design Decree Law in 2006 (hereinafter "Implementing Regulation") in order to satisfy the needs of practice. Differentiating from the model law, according to the amendments in the Implementing Regulation; the registration of the new and individual parts/portion will continue regardless of whether the design retains its initial identity or not and the parts that do not provide the protection requirements will be excluded from the design and will be declared invalid by TPI. This provision in the Implementing Regulation has been transferred exactly to the Draft Design Code.

In accordance with the provisions in Implementing Regulation and the Draft Law, TPI in 2007 decided in a case that the 3 dimensional designs of shoes subjected to opposition are not new, however depending on the reason that the patterns used on the shoes are different compared with the other designs, the registration shall continue by comprising only the pattern and also come to the decision that the name of the design shall be converted into Shoe Pattern Design instead of Shoe Design. TPI has reached to similar decisions before the amendment on Implementing Regulation in 2006. For instance, even when the design of a patterned lighter is common, as the pattern applied to the lighter is new and has individual character, TPI changed the name of the design from Patterned Lighter into Pattern and go for the partial cancellation. In the cancellation action filed against the decision of TPI, the Supreme Court in 2006 cancelled the decision of TPI on the grounds of partial cancellation is not possible.

After the amendment on the Implementing Regulation, the courts cancel the TPI decisions since this amendment is against the Design Decree Law. Thus the institution of partial invalidity does not applied by the courts currently. Recently TPI has also changed its execution by considering the case law.

V. COPYRIGHT LAW

1. IN GENERAL

The first regulation on copyrights in Turkey was made with the "Statute" in 1850 during the Ottomans. Afterwards the Copyright Code, dated to 1910 was promulgated, which was drafted as an adaptation of the German Copyright Code of 1901. Although this Code remained in force for 41 years, there was not too much of execution of it.

In 1951 the Copyright Code, which is still in force was enacted. The Code in force was amended in total six times, one time in 1983 and five times in 1995 and the following years. Currently there have been studies going on for the seventh amendment. The Copyright Code has turned into a ragbag, as one third of the code has being amended in every single amendment. Because of these interruptions, the harmony among the provisions is corrupted.

Turkey became a party to Bern Convention in 1952 and after 1995 became a party to TRIPs, Rome, WCT and WPPT. However Turkey is not a party to UCC.

Varying from the industrial rights, there has not been any modernization whatsoever in the administrative body of copyrights. The Turkish Copyrights and Cinema Administration, which is under the auspices' of Ministry of Culture is still carrying out its activities in the character of a classic governmental body.

On the other hand, until 1995 the right owners remained exceedingly regardless to their rights. For instance, according to the Code, dated to 1951, it was envisaged that four separate collecting societies must be founded in the related fields within at most six months after the Code put into force. The first collecting society was finally founded in 1986, with 34 years of delay. In this study the issue of collecting societies is being handled under a separate title.

Depending on the gaps in the legal and administrative substructure, Turkey was being mentioned among countries such as Chine or Taiwan with respect to piracy market. The reluctance of the government to struggle against the piracy had a crucial role in the issue of piracy being so widespread. In the recent years it is moved forward in the fight against piracy as the right owners have started to manage their rights seriously and the related units of the state have started to act more responsive. For instance, in an operation executed in May 2009, pirate books, in the value of more than 10 million Euros, were seized. Again in the end of six months of study in March 2010, two million pirate books were caught when the Istanbul Security Directorate took an action ex officio. In this operation 50 people were taken under custody.

It cannot be said that all these endeavors were enough to solve the problem. Thus Turkey seems almost never capture the Special 301 List of US. Turkey, which used to be in the Priority Watch List in the earlier years, progressed to Watch List in the recent years. Along with the issues such as data protection in pharmaceuticals, criminal sanctions in trademark law, it was mentioned in Special 301 Report of 2009 that a crucial amount of pirate products, which were seized in the neighbor countries, come from Turkey. Despite all these determinations, it is a fact that there is important advancement in the fight against piracy in Turkey. However it should be mentioned that there is still a long way that has to be taken.

2. COLLECTING SOCIETIES

a) In General

The foundation of collecting societies in Turkey was acknowledged by the Copyright Code of 1951, which is still in force along with the several amendments. Nevertheless, the first collecting society MESAM (Musical Work Owners' Society of Turkey) was finally founded in 1986. The first version of the Code was aiming the protection of the economical and the moral interests of the work owners by the collecting societies. However by the amendments made afterwards, the scope of collecting societies incisively restricted with the protection of economical rights.

According to the Code, collecting societies may be founded by the authorization of the Ministry of Culture and Tourism. However this authorization of the Ministry is not discretional. The Ministry is obliged to accept and approve the applications of the organizations that provide the objective conditions acknowledged in the Code.

With the amendment made in the Copyright Code in 1995, it has been made possible to establish more than one collecting society in one field. In the forthcoming years, the fields that collecting societies may be founded have been enlarged and it has been granted authorization to the economical right owners, such as publishers to establish a collecting society. Currently there are more than twenty collecting societies founded in Turkey and the music collecting societies are the most active ones.

The collecting societies are given extensive authority in order to perform their functions more efficiently. The collecting societies have a crucial role in the fight against piracy along with the collective rights management. Within this context, they possess the rights and the authorities such as; to manage the rights of their members to collect the royalties derived from these rights and when required, to file a case and/or a complaint for a criminal prosecution.

The collecting societies in the field of music are vested with the authority of managing the rights of reproduction, presentation, broadcasting, public transmission and making available to the public via digital medium. The author collecting societies manage the distribution right under the name of mechanical rights. The collecting societies also manage the right of presentation of musical works in the size of concerts, also known as the minor rights. On the other hand the rights on the works of stage art, such as opera, operetta, theatrical musical works, also known as the major rights, are managed directly by the right owners or the edition firms that the right owners have authorized.

On the contrary to the collecting societies of musical works, the collecting societies in the field of science and literature, fine arts and even cinema sectors are operate like an association. Although the collecting societies in the movie sector have recently started managing the rights, there is a long way to go for them.

According to the Copyright Code, the collecting societies determine the tariffs for the royalties one-sidedly, by taking the principles mentioned in the code into consideration. In practice the users have no authorization or contribution in the determination of the tariffs. The conciliation committee, acknowledged in the code, is in a dysfunctional character, since its decisions are not binding. The four collecting societies in the music sector come together and fix the tariffs. Every single year there is a minor amendment in this tariff. The mentioned tariff offers to the users a lump sum procedure licensing. Nevertheless the users demand for the actualization of the model of pay as much as you play.

On the other hand, the fundamental criteria about the distribution of the royalties collected by the collecting societies to the right owners are not regulated in the code. Every single collecting society determines these criteria on its own. This situation prevents the fair distribution of the royalties to the real right owners.

The burden of proof, which is on the plaintiff as a rule, has reversed in favor of the right owners (thus collecting societies) with the art.76 of the Code. That is to say, if it is confirmed that some of the musical works, which are in the repertory of the collecting society, are used without any permission, the legal consequences arise just like the whole repertory was used. Within the context of this regulation, the collecting societies confirm that some of the works are being used without any permission in a public place or by a radio-TV broadcasting firms and by submitting this confirmation as evidence they claim their requests as if the whole repertory was used. In the cases filed in the event, where the users do not pay according to the tariff, it is requested the third fold of the yearly tariff cost. By the virtue of the legislation, the courts accept these requests exactly and decide without differentiating the ones, who use one or two works and the ones, who use the whole repertory.

Although it is acknowledged in the Code, the project of collection of the works on a digital database by the constitution of Ministry of Culture and Tourism has not been actualized yet. Therefore it has not been prevented the confusions that occurs frequently in practice with respect to the issues such as, which work belongs to which author; which collecting society is authorized to manage which works and which works are anonymous or in public domain.

b) Authorization Certificates

The collecting societies collect the royalties on behalf of the right owners by the authorization certificates that they receive from them. The author leaves the below-mentioned rights exclusively to the collecting societies. These rights are; i) the right to assign or license the economical rights on behalf of the right owners, ii) the right to collect royalties, iii) the right to file a case and prosecute in case of the non-payment of the royalties, iv) the right to manage the rights. The right owner can not exercise the rights that he/she left to a collecting society without a permission from the collecting society in principle and can not let third parties to use these rights.

The importance of the issued authorization certificates is great from the point of view of law. The Code states that these certificates are given to the collecting societies for the purpose of rights management. It is claimed by means of interpretation that this statement also includes the authorizations such as the right of filing a case or starting executive proceeding. Another issue that is disputable is whether the certificates that will be granted would comprise the current rights or would be issued in a way, which will encompass the future works, in other words the works that has not been created yet. According to the prevailing opinion in the doctrine, the certificates should include the future works under the condition of the presence of the clauses that protects the right owner as well.

Regarding the foreign works, the regulation of the Code is not clear. However the same principle should be recognized with respect to these works as well. In practice, it is accepted that via reciprocity agreements between Turkish and the foreign collecting societies, the Turkish collecting societies are authorized to administer the foreign works as well. It should be noted here that currently the collecting societies are avoiding from documenting their authorization while claiming their requests with respect to foreign works.

c) Cancellation Decision of the Constitutional Court and Individual Rights Management

According to the Code, the management of the rights can only be executed by the collecting societies founded in Turkey, other than the right owners. The organizations like companies, associations or endowments are not entitled to manage these rights (art.42/5). In fact until the cancellation decision of the Constitutional Court, the right owners were not able to administer the royalties regarding the utilization of the works in a public place. In other words, there used to be an obligation that these rights had to be administered by a collecting society founded in the related field.

However with the decision of the Constitutional Court on March 2010 the related article of the Code was cancelled. As a consequence of this cancellation decision, the royalties that can be requested from the utilization of the works in the public places may not only be administered by the collecting societies, but also by the local and foreign right owners personally.

On the other hand, despite the cancellation decision of the Constitutional Court, it is not possible for a local or a foreign organization, such as associations, endowments, companies or foreign collecting societies to administer the copyrights in Turkey along with the right owners.

Briefly, the cancellation decision of the Constitutional Court granted the right to legal remedies to the right owners along with the collecting societies. But there is not such kind of right vested to the organizations other than the right owners. Therefore, as a result of this cancellation decision of the Constitutional Court; it is not possible for a foreign collecting society or an association as such to claim rights in Turkey, whereas a foreign right owner gains the authorization to legal remedies. The foreign collecting societies may only manage the rights depending on the authorization certificates taken from the right owners upon the reciprocity agreements signed with the collecting societies founded in Turkey.

Although this decision of the Constitutional Court is theoretically defendable, the incidence of it is open to argument with respect to the practical needs of the collective management of the copyrights.

3. COPYRIGHT CONTRACTS

In Turkish law of obligations the principle of freedom of contract is valid. Again unless it is mentioned otherwise in the code, the contracts are not subjected to a particular form. Nevertheless in the contracts over a certain amount, the proof shall be made by a written document.

Different from a classical law of obligations contract, the copyright contracts show some specific characteristics. Within this context, the principles acknowledged for the contracts in copyright law can be enumerated as such:

i) In Turkish law, which belongs to the Continental Law family, the author obtains the authorship status as soon as the work is created. The authorship status can neither be subjected to the legal transactions nor can be inherited. The moral rights also can neither be subjected to legal transactions not can be inherited as well. Yet these rights are attached strictly to the personality of its owner. However the authority of utilization of the moral rights can be granted to the third parties. On the contrary, the economical rights can be subjected to legal transactions and be inherited.

ii) The contracts and possessions related to the economical rights shall be written and the rights constituting the subject shall be shown one by one (art. 52 of the Copyright Code). According to the principle, which is known as the collateral condition in the doctrine, the rights assigned or licensed shall be mentioned one by one in the contract. Otherwise the contract is invalid. For instance, it is not adequate to write down a clause on a copyright contract such as, "all the rights are taken over with respect to book X". The rights transferred in the scope of copyright shall be shown clearly one by one.

The Supreme Court applies the form requirement expressed in the art. 52 very strictly. For instance in a decision dated to 2009, the Fiat/Tofaş firm has carried out a photo shoot to use the photos in a publicity campaign for a new automobile model. On the contract made with the photographer, it was written that the photos would be used in the publicity campaign and all the copyrights belong to the firm. The necessary royalty was paid to the photographer as well. However the photographer filed a case on the grounds that the photos were used in different fields, which were not mentioned on the contract, but the IP court denied the case. Nevertheless the Supreme Court reversed the judgment of the IP court on the grounds that the undefined statements used on the contract had the meaning that the copyright granted to the firm was restricted to the utilization of the photos only in the publicity campaign; it did not include the use on the fields such as; posters or the Internet. This example shows that the rights and fields covered have to be shown one by one on the copyright contract.

In a case, which was subjected to a decision of Supreme Court in 2010, some undefined statements such as; "all kinds of publishing rights", "all printing rights" were used on the contract. On the receipts regarding the royalty payment it says "for all the prints". The publisher published the 50 books, subjected to the contract for 25 years without any interruption many times and did not come across with any interference. After 25 years in the case filed by the inheritors on the grounds that the contract was against art. 52, the IP court held that the case was substantially right; however it was not possible to base on the breach of the form requirement after remaining silent for 25 years and denied the case. On the contrary the Supreme Court held that the contract was actually appropriate to the form requirement, however the clauses were not definite, therefore the term of "all printing rights" should be interpreted as "only one print". According to the mentioned decision, the plaintiff does not have the right to request retroactive royalties from the publisher for the books that the publisher has been publishing for the past 25 years (since the plaintiff remained silent). On the other hand, the publisher cannot print new editions after the date of the written warning, since the copyright is actually on the plaintiff.

iii) The economical rights possess a separable character. Therefore, the author for instance can assign the reproduction and distribution right to X, the adaptation right to Y and keep the making available to the public right on himself.

iv) The owners of the work and the inheritors can assign the economical rights to third parties restricted or unrestricted in respect of duration, location, number and the content; reciprocally or gratuitously. Nevertheless as mentioned above, it should be pointed out what the contract cover one by one, rather than using a general terminology.

v) It can be made both promissory and dispositive transactions with respect to the economical rights arisen from "existing works". However regarding the economical rights arisen from future works, only promissory transactions can be made, not the dispositive transactions. In other words, for these kinds of works, firstly promissory transactions should be contracted; after the work is created, the dispositive transaction should be performed. In other words the dispositive transactions performed before the work is created are invalid.

vi) In order for the persons, who took over or obtained a license on the economical rights from the right owner or the inheritors, to give these authorizations to third parties, they have to acquire a written permission from the right owner or the inheritors. Here the practical method is to include a clause to the contracts signed with the right owners or with the inheritors; stating that the authority to assign or license the rights is also transferred to the assignee. In other words, this right can be granted at the very beginning. The assignations and the licenses of a person, who does not possess the authority as such, are invalid.

vii) It is invalid to subject an economical right to an assignment or to a license, which would be introduced in favor of the right owner by the forthcoming legislations. Accordingly, it is not possible to waive the legal rights that will enlarge the scope of the economical right or prolong the duration, which would be introduced by the forthcoming legislations.

viii) Unless it is agreed otherwise on the contract, the assignment or the licensing of an economical right does not comprise the translations or the other derivative works. If the assignment of these rights is desired, then these rights have to be mentioned one by one on the contract.

ix) The good faith of a third party who acquired an economical right from an unauthorized person is not protected. Thus the rightful owner can allege his/her right against the third party in good faith as well. The right of recourse of the third party in good faith to the unauthorized person is reserved.

x) The assignment of the ownership of the copies of the copyrighted work does not mean that the copyright is assigned as well. For instance, a bank, which purchased a painting, is not entitled to use the painting on a calendar that will be delivered as promotion.

xi) If the economical right is assigned for a particular purpose or period of time, the right will turn back to its owner when the purpose is disappeared or the time is expired.

As is can be apprehended by the explanations above, during the preparation of a copyright contract, that will be enforced in Turkey, the compulsory and substitute rules of law mentioned in the legislation should be taken into account. Especially because of these strict applications of the courts, the ones, who carry on the trade of copyright goods, should be more careful. Otherwise the business of a person, who is acting, as he/she possesses a right based on a contract, can become illegal all of a sudden. Especially the copyright contracts that have been prepared by the Anglo Saxon point of view may be deemed invalid in Turkey. Because the general articles in the contracts, such as all the rights regarding copyright are assigned, do not have any effectiveness.

4. COPYRIGHT COMPENSATION

All the IP infringements are actually a tort. In order to claim compensation for damages on grounds of tort four conditions are sought together: i) An illicit act, ii) Damage, iii) An appropriate casual connection between the act and the damage, iv) Negligence. In the presence of these mentioned conditions, the right owner may claim for pecuniary and non-pecuniary damages according to the art. 70 of the Copyright Code. The mentioned article is the general regulation that will be applied in terms of compensation claims in case of a copyright infringement. Along with this regulation, in the art.68 of the Copyright Code, it is acknowledged another special compensation. By the regulation in the art. 70, it is aimed the compensation for the damages of the right owner, whereas by art. 68 it is aimed to provide a hindrance of infringement. As will be mentioned below, it is acknowledged different conditions for each of the requests.

According to the Turkish law, which is a member of the Continental Law system, compensation shall not be deemed as a means for enrichment. In other words, the compensation may not exceed the amount of the damage. Thus the art. 70 was written down from the point of view of this principle. However Turkish Copyright law acknowledged some clauses in favor of the author. The regulation regarding copyright compensation in the art. 68 of the Code should be approached within this sense. It shall be requested from the persons, who adopt, reproduce, distribute, perform or make available to the public the work, the performance, the phonogram or the production without any permission from the right owner, at most three folds of right owner's loss with regards to the value that would be demanded if there would be a contract or the current value. According to the decision of Assembly of Civil Chambers of Supreme Court in 2002, the aim of the clause is to release the right owner from the burden of proof by making the infringer to pay the three folds of the copyright royalty, which will be determined according to the current value. Thus the possibility of right owner carrying the damage that cannot be proven is prevented.

According to the art. 68 of the Code, the right owner can prefer one of these three choices in case of an infringement:

i) The extermination of the copies, equipment used for copying such as films, moulds and etc.

ii) The selling of the copies and equipment used for copying such as films, moulds and etc to him with a proper price not exceeding the cost price.

iii) Three folds of the quantity that shall be demanded in case of a consensual contract or three folds of the current value.

To demand the above-mentioned alternatives of (i) or (ii) does not abolish the legal liability. In the case of the third alternative (iii), legal consequences would arise just like there is a contract relationship between the parties.

It should be mentioned that in the practice usually the third choice is preferred. In case of the demand the three folds of the current value is accepted by the court, it is acknowledged that there is a hypothetical contract relationship between the parties. The Supreme Court has expressed this point of view in so many precedents since 1958.

There are crucial legal consequences of the opinion of hypothetical contract relationship:

i) Since a copyright infringement is essentially a tort, with respect to the period of prescription for copyright infringements, the period of prescription in relation to torts is applied. According to this, against a copyright infringement the case has to be filed within one year starting from the date of learning, by all manners of means within 10 years after the action was substantiated. The Supreme Court is applying the 10 years of period of prescription with respect to these cases, depending on the opinion that it is established a hypothetical contract relationship when it is ruled in favor of copyright compensation. Therefore, the period of prescription of 1 year after the date of learning loses the meaning.

ii) The three folds copyright compensation is regulated under the title of prevention of infringement. Depending on the fact that actually the three folds of the value mentioned in the art. 68 is not compensation but a regulation aiming the prevention of infringement; the Supreme Court does not seek for the presence of negligence. Therefore in lots of the decisions of Supreme Court, it is expressed that negligence is sought for the compensation according to the art. 70, but it is not sought for the three folds of the value mentioned in the art. 68.

iii) If the right owner demanded pecuniary and non-pecuniary damages mentioned in the art. 70 along with the three folds compensation, then it cannot be ruled both in favor of three folds value and the compensation according to art. 70. In this situation the three folds value would be set-off according to art.68.

iv) When it is ruled in favor of three folds value, the products and the equipments cannot be seized anymore as the use of the infringer has become legal after all.

When there is a demand, both IP courts and the Supreme Court always rule for three folds. In a decision of Assembly of Civil Chambers of Supreme Court in 2003, it was emphasized, by pointing out that the right holder is entitled to demand the three folds of the value that he/she can request in case of a contract, that the reimbursement of the damages shall be calculated according to this possibility.

It should be specifically mentioned that the three folds compensation is also valid for the related rights. On the contrary, in the art.83 and 84 of the Copyright Code, it is mentioned unfair competition provisions with respect to names and marks and sign, image and sounds. It cannot be ruled to three folds compensation regarding these provisions. This was emphasized in a Supreme Court decision, dated to 1996.

Except from the regulation in the Competition Code, the authorization of demanding three folds compensation is not included in any legislation in Turkish law. Therefore the copyright owners can allege their rights in a more effective way compared to the industrial right owners. Thus, it is very crucial to base on copyright legislation according to the cumulative protection principle, if the creation subjected to an industrial right, such as design or trademark law, carry the requirements of a work, in the meaning of copyrights.

5. WORKS OF ARCHITECTURE

In Turkish copyright law, the works of architecture are regulated in two separate provisions. According to the art. 2 of the Copyright Code, the architectural designs, models, plans and projects are protected as a work. In the art. 4 of the mentioned code, it is stated that the works of architecture that possess an aesthetic value (the actual structure) is protected as a work of fine art.

As will be explained below, there are crucial legal consequences of the fact that the theme is subjected to different conditions since they are regulated in two separate provisions.

a) Plans and Projects

The architectural designs, models, plans and projects will benefit from copyright protection according to the art. 2nd para. 3 of Copyright Code if they do not possess an aesthetic value. Besides the general requirements, here it is sought for scientific and technical character. In practice since the threshold of this criteria is not high, every study that has a scientific character is accepted within this context. On the contrary, if these kinds of works have an aesthetic value, then they will be protected both within the context of art. 2 and 4.

b) Architectural Buildings

The works of architecture, which possess an aesthetic value, benefit from the protection (art. 4 Copyright Code). Here the work of architecture means the work, which becomes concrete in the actual building itself. However in the plans and projects that are regulated in the art. 2 the plans and projects themselves are actually protected, the protection does not comprise the structure that these plans and projects are applied.

It is very important whether there is an aesthetic value on a work of architecture or not. In case of a suit regarding the subject, an authority (architect) on the related field, which is authorized by the court as an expert, will decide whether there is an aesthetic value or not.

It should also be mentioned that the concept of historical building is different. In order for a work of architecture to be considered as a work in the meaning of copyrights, a historical value is not required.

The term aesthetic value does not only mean good, nice, pretty and as such, it refers also to all kinds of works that excite an aesthetic emotion. For instance, an ugly, frightening or even a disgusting picture can also excite an aesthetic emotion in somebody within this sense.

c) The Difference between Protection of Methods Regarding Plans and Projects and Architectural Buildings

In the works that possess scientific and technical character, the element that will be protected is the form. The consequences of this are important from the point of law. Art. 2 of the Copyright Code does not provide a protection for the building that is constructed by the application of scientific plan, projects and models. This kind of protection is only available in case of a predominance of the artistic character of plans, projects and models and thus these works fall into the group of fine arts rather than scientific and technical works.

It should be emphasized that, the main difference between the protection of works that own scientific and technical character (art. 2) and the protection of works of architecture or architectural designs that have the character of fine arts (art. 4) is the object itself, which will be protected. In the plans or designs that own scientific and technical character only the drawings are protected; whereas in the designs that qualify as fine arts, the delineated, in other words the work, which becomes concrete in the building, is protected.

The plans and projects that possess individuality will be protected as drawings, in other words as plan and project. If a person raised a building by applying an architectural project without any permission from the project designer, he/she would face with two possibilities. In the first possibility, the aesthetic character of the building dominates its functional character. In the second possibility, either the building does not own any aesthetic character or the functional character dominates. There is a copyright infringement in the first possibility; nevertheless there is no copyright infringement in the latter. According to the art. 22 of the Copyright Code, the application of plans and projects that belong to works of architecture that possesses aesthetic character is a reproduction.

In 2005 the Supreme Court has approved an IP court decision that states a project belongs to a building, which has no aesthetic character, shall be protected as a project.

In practice usually the problem occurs when an alteration is done afterwards in a building. For instance, it may be granted a reconstruction permit for 4 floors to a building afterwards, which used to be permitted only for the construction of 2 floors. In this case the owner of the building would like to add 2 more floors to the building, which already has 2 floors. However in this case, the designer of the project can claim that the alteration in the project means an alteration in his work, his copyright is infringed, the modification in the project can only be made by him and in order to this there has to be a permission obtained from him. These kinds of demands occur frequently in practice. However it is not possible to accept these demands. Thus, according to the Supreme Court the alterations that tarnish the honor and the reputation of the owner cannot be done. In other words, without permission from the project designer the owner can make the necessary and technical alterations. Although some case law of Supreme Court is in the opposite direction, the case law in the recent years is in this direction.

6. PROTECTION OF TV FORMATS

The issue of whether a TV program format can attract copyright protection has been a dubious field in the area of IP law. There are different solutions to the problem in different legislations and various points of views. In most of the countries TV formats are considered to be an intellectual creation, however the issue of being counted as a work in the meaning of copyright law, thus accepting and proving that a program format in particular meets with all the conditions that the national legislations propound to be deemed as a copyright protected work is unsolved yet. The recent situation seems to be that this problem can not be solved by regular and stable rules, but shall be discussed case by case.

According to the last reports, the number of traded formats has substantially increased in the past 6 years. The FRAPA study shows that from 2004 to 2009 a total of 445 original formats found their way to foreign screens. Turkey is in a double sided position in this matter, since the amount of imported TV formats is considerable, but on the other hand the export ratios are significant as well. Especially Arabic countries show great interest to Turkish TV formats in the recent years. This cause an increase in the infringement claims as well from both sides which bring us to the main question of; how can TV formats be protected within Turkish legislations. When such big numbers are in consideration, it is very essential to determine the legal status of the formats.

Starting from the very beginning, it is important to comprehend what a television program is. Although the Turkish Supreme Court recognizes in some cases that the TV formats shall enjoy from the copyright protection if the criteria has met, it is hard to find any kind of definition of a TV format or any settled execution on the criteria of protection.

As mostly accepted by the doctrine; a TV format can be defined as all the characteristics of a television show that can be easily recognized by the audiences, depending on the static main structure, the style and the broadcast stream, although the contents may vary at every turn. When these descriptions are adapted to IP law, it occurs that main point that has to be discussed in the scope of copyrights is the individuality of the elements that are fixed and stable.

According to the art.1/b of the Turkish Copyright Code a product of intellectual creation that has the individuality of its creator and fall in the scope of either a work of literature and science, music, fine arts or cinema shall be considered as "work" in the meaning of copyright law. Therefore to be able to consider a creation as a work, it must reflect the individuality of its creator, be in the scope of one of the referred type of works and be a creation of an artistic and intellectual endeavor. Therefore the matter that has to be discussed is not whether a format constitutes an intellectual creation; it is whether the format shows the individuality of its creator, falls within one category referred in Copyright Code and it is fixed perceptibly. Since the expression of an idea is protected by copyright rather than the idea itself, it is hard to ensure this criterion in relation to formats. Formats are mostly very abstract and in the texts of a format there is only an explanation regarding to the general stream of the program. Actually this is accepted very normal for a format, since the detail explanation of the elements generally turns into a script, which is already protected as literary work. Therefore to draw the line in this sense becomes generally impossible according to the Turkish copyright law. The formats stay superficial and thus abstract compared with the level of fixation. On the other hand the condition of being in the scope of one category of the works creates another problem, since the categories in Copyright Code are regulated according to numerous clauses principal that restricts a new addition to the categories.

As to formats it has to be examined if they can be qualified as literary works. According to the Turkish doctrine this question is also has a negative answer. It is mostly stated that the intension of the artistic and intellectual endeavor does not retrieve the formats from being abstract. To be fixed like a literary work does not mean that it has become perceptible. The content of a format is still undefined and thus abstract. Every single producer or even a contestant can provide different content. Thus still for every single case the individuality has to be examined, which the degree is quite high since the Copyright Code has mainly adopted from former German Copyright Code dated 1901.

The issue came to the attraction of the Turkish IP community by some cases from the beginning of 2000. In 2000, where a famous TV program Televole was subjected to an infringement case, the Supreme Court directly expressed that this TV program shall be protected by copyright law according to the art.5 of the Copyright Code, which regulates the protection of cinematographic works. However there was no particular concentration to the description of formats or any other detailed explanation concerning TV formats and its protection issues.

In another case, the copyright character of a quiz show, namely 2008 SMS was in question in 2004; where the plaintiff was the licensee of the original program format and the defendants who were claiming that formats cannot enjoy copyright protection were the producer and the broadcaster of the Turkish version. In this format case the first instance court ruled that the program formats can be qualified as a work in the meaning of copyright law and thus there is a copyright infringement to the plaintiff's rights since his format was copied by the defendant. When the file was heard before the Supreme Court, the Supreme Court stated that the issue whether the formats shall enjoy copyright protection or not must be examined by an expert and since there were no consensus in the numerous expert reports in the case file, the Supreme Court decided in favor of the necessity of another expert report. In this particular case the Supreme Court explicitly crack the door open for the formats to be examined in the sense of attraction copyright protection. However the Supreme Court did not stated exactly that the formats should enjoy copyright protection like the previous decision dated to 2000. Briefly, the final expert report, prepared in a very detailed way according to Supreme Court's decision revealed that the TV formats are not qualified to attract copyright protection, since they are not perceptible enough and they do not fit into one of the restrictively enumerated work types mentioned in the Copyright Code.

However in the past years the issue has become more important since the format licensing in Turkey began to posses a great value in the market and the volume and the speed of format exchange gets higher. In a recent case in 2007 the IP Court expressed "that if a format is original in a sense that it is more than barely an idea, if it includes original details, possess an individuality and have a certain philosophy and an atmosphere then it will protected as a copyrighted work; if it is not original, in the presence of the conditions rules of unfair competition might be applied". It is obvious that these facts have an effect on the change of mind of the IP Courts, nevertheless as explained below the decisions have serious variations from each other. At the time of writing this article the Supreme Court has not finalized the case yet. However we are hoping that Supreme Court will reach an explicit decision on the issue, since this time the first instance court reached a verdict by examining whether the TV program in dispute can enjoy copyright protection or not. Therefore the rejection grounds of the Supreme Court in the previous decisions are not present in this case. After all it will be possible to learn the point of view of Supreme Court concerning format protection.

Although the copyright side of the issue is very arguable and hard to prove that there is enough artistic and intellectual creation that reflects the individuality of the creator in TV formats, there are still other forms of protection that a format might benefit. According to the cumulative protection principal both the courts and the doctrine are willing to protect the TV formats by either contract law or trademark law. However even then the protection level would be too low; thus these solutions does not counted as applicable. Nevertheless the rules of law of unfair competition seem to be the strongest and most appropriate protection for the cases of TV formats that are not able to attract copyright protection, if the conditions are met. The recent decision of IP Courts cited above clarifies this issue as well by declaring that the protection emerging from the unfair competition law may be applicable to the TV formats.

Consequently, similar to the rest of the world the execution of the laws in Turkey differs according to the context of the situation; in some cases the formats are deemed simply as an idea that can not be qualified as a copyright protected work. On the other hand theoretically it is accepted by the lawyers and the experts that formats can attract copyright protection. This clearly shows that the confusion on the subject matter is still present. But it can be absolutely stated that the judicial opinion of the Turkish Supreme Court is in the direction that leans towards to the protection of TV formats by copyright law as long as they comply with the requirements of Turkish Copyright Code.

7. NOTICE AND TAKE DOWN PROCEDURE IN TURKISH COPYRIGHT LAW

The notice and take down procedure was firstly introduced to Turkish law system with the art. Annex 4 of the Turkish Copyright Code in 2004. Another clause that embodies the "notice and take down" procedure is the Code dated 2007 and nr.5651 on The Regulation of the Transmissions on the Internet and Fight against the Crimes Committed through These Transmission (hereinafter Internet Code). Art. 9 of the Internet Code embrace a similar procedure to Copyright Code art. Annex 4. It is very clear that notice and take down procedures are the most appropriate institutions to fight against the infringements and crimes committed via Internet.

However, there are several problems regarding the notice and take down clauses in the system. Except from the terminology problems, which will be mentioned further, the crucial problem is in the execution of the procedure. To understand the Turkish system of notice and take down, it is essential to evaluate the two codes together; as they are filling the gaps of each other but it should be kept in mind that the main problems are caused by the art. Annex 4 of Copyright Code.

The procedure is theoretically quite harmonized with its similar regulations around the world. According to the amended para.3 of the art. Annex 4 of Copyright Code; in the circumstances that there is an infringement of the rights of the copyright owners and/or the owners of the related rights by service provider and content provider via Internet, the contents that cause the infringement will be removed pursuant to a notification. Here the legislator tries to provide a double staged protection for the owners whose rights are infringed:

To initiate the process, the person whose right is infringed shall turn to the "information content provider" and will make a request to remove the infringing work from the website. If the infringement continues for 3 more days after the notification, the owner of the right can turn to the prosecution and through the Public Prosecutor, it is demanded from the internet service provider to stop the service that is provided to the infringer; which literally means to restrict the access to the website.

In the art. Annex 4 of Copyright Code the service providers deemed to be the institution that will stop the Internet service. However the Internet Code expresses that the institution which provides the internet service to the mass access provider and to the subscribers called access provider. As a result it is not for sure whether the service provider or the access provider is responsible to stop the service and take down the infringing material from the website. Although the terminology has not amended so far, it is accepted in the practice that the service provider in art. Annex 4 corresponds to the access provider in the Internet Code. It is accepted to be the right interpretation in the doctrine and by the jurisprudence as well. But it has to be stated that since there is no such description that corresponds the description of Web 2.0 applications, currently they are also counted as an access provider and undertake the same liabilities.

Apart from the terminological problems, it is clearly seen that the common three-strike rule is not applicable according to the current Turkish system. According to the art. Annex 4, one notification will be enough for the further actions unless the alleged infringer removes the content in question within 3 days. Nevertheless the real problem here lies in proving that the content provider has been notified. In order to notify the alleged infringer the presence of a notification address is the only option. But in the Copyright Code, there is no obligation for a content provider to keep its communication information on the website. Here the bylaws of the Internet Code will be applied, which obliges the content providers that run a commercial business on the internet to keep their information on the web site where it can easily be seen. Unfortunately this little gap leads the execution of the article from notice and take-down procedure towards the restriction of a website, which is accused of copyright infringement.

In practice; generally the complainant is not able to find the communication information of the alleged website and therefore can not notify the infringer or send the notification via e-mail however does not hold any kind of verification of safe receipt of the e-mail. Therefore the second phase of the protection immediately put into force and the prosecutor held for the restriction of the web site and so does the judge. The gap here is in the controlling process whether the contents of the website cause a copyright infringement, which does not operate appropriately. As a result there occurs a big possibility that a website can be restricted even without the knowledge of the owner of the website. Here the problem lies on the point that actually if the obligation of declaring the communication details on the web sites would be enforced totally then both the notifying phase and the controlling duties of the prosecution would work. Thus there would be no necessity to restrict a website.

This way of execution of the article creates another part of the problem chain, which derives from the art.8 of the Internet Code. According to the mentioned article there are only a definite number of catalogue crimes that allow the restriction of a website, such as terrorism and child pornography. Moreover copyright infringements do not counted as one of them. However as a result of the above mentioned application of art. Annex 4 of Copyright Code it happens to be another legal basis for the restriction of a website that is completely contradictory to the regulations in the Internet Code.

Furthermore it is also known that these kinds of restrictions do not reach to an effective solution since firstly these decisions are only valid within Turkey, thus not binding for the access providers settled in a foreign country and secondly they can be easily circumvented by online means and access to these websites can be easily provided.

It should be mentioned here that the restriction of the famous website You Tube has nothing to do with copyright infringement issues. However it initiated number of web site restrictions in Turkey. According to the statistics made by Sansuresansur.org, a group of activist that protest the restriction of the websites grounding that these activities against Internet is the biggest censorship of our age, there are more than 5.000 restricted websites depending on the violation of variety of rights. As to copyright infringements, the restriction of Myspace Turkey, Last.fm and Vimeo caused the loudest protest in the country. Not only the users but also the artists that provide their own creations on those websites were very unhappy, since because of the infringement of copyright of some right owners the whole website was restricted. The restriction requests mainly made by the most active collecting society, MUYAP, where there was a legitimate claim for their requests. However it is still unknown whether the notice and take down procedure was executed properly. It is also important to note that today Myspace Turkey is accessible, as the parties of the matter in dispute declared that they reached to a financial and ethical agreement on the issue of copyright infringement.

As a conclusion it should be stated that although the aim of notice and take down procedure is to fight against the infringement of copyrights and the catalogue crimes mentioned in Internet Code, the practice shows big obliqueness from this aim. The procedure moves towards to more restrictive point of view rather than reaching to a solution. Therefore the notice and take down system commonly thought as a tool to restrict the access to a website, which generally does not work at all. Nevertheless the actors of the IP and IT worlds do believe and insist that the notice and take down system can work effectively, when the actual process will be enforced properly and when it is diverted by the law enforcement bodies to be used by the right owners in stead of the process of restriction.

8. RIGHT OF RETRANSMISSION

The right of retransmitting is implemented to the Turkish Copyright Code in 2001, under the title of communication to the public via means that supplies the transmission of sign, sound and/or image. Art 25 of the Code states "the owner of the copyright has the exclusive right in the rebroadcasting of the work to the public, by different broadcasting organizations that has been obtained from the previous broadcasts". Art.80 of the Copyright Code grants a similar right to the owner of the related rights. Holders of the related rights have the exclusive right to grant authorization for the public transmission by means of instruments enabling transmission of signs, sounds and/or images and re-transmission of fixations.

Other than the Copyright Code, the Code on the Establishment of Radio and Television Enterprises and their Broadcasts, nr.3984 (hereinafter Radio and TV Code) includes articles regarding the retransmission of the broadcasts. In Radio and TV Code both broadcast via satellite and cable retransmission rights are regulated on the basis of same principles in art.25 of the Copyright Code. Right of retransmission is defined in the art.3 of Radio and TV Code as; receiving a complete or a part of a radio and television program services in an unchanged form and transmitting it simultaneously or with a delay due to the technical reasons for the reception by the general public.

Even from a quick glance, it is seen that there are some problems on the issue. The terminology problem attracts the attention on the first place, since different codes includes different terms for the action of retransmitting. In the art.25 of the Copyright Code, the exclusive right referred as "rebroadcasting right" for the copyright owners; however for the owners of the related rights the action is referred as the "right of retransmission". On contrast to this in the Bylaw for the Related Rights, the term "rebroadcasting" is used. On the other hand "right of retransmission" has preferred for the Radio and TV Code.

Although this terminology seems like a simple problem; when the institutions transmitting via cable or satellite are taken into consideration, it becomes very arguable to define the liabilities of such institutions in the course of unauthorized retransmitting. The Copyright Code art.25 seems to be directed towards the broadcasting organizations only by the letter of the law. This may create a gap for the cable and satellite platform operators, which nowadays not only provides solely a platform for satellite transmission but also own channels to broadcast.

Turkish doctrine, in general, accepts that broadcasting organizations are liable for the unauthorized communication to the public and the retransmitting of a work; nevertheless the situation of the cable and satellite platform operators is still in question in jurisprudence. Since the clauses in the Copyright Code directed to the broadcast organizations and held them liable for the unauthorized rebroadcasting of the copyright protected works; from the letter of law the cable and satellite platform operators automatically falls out of the scope of the clause. In 2002 the Supreme Court held that "since Turkish Telecom is not a broadcasting organization and does only provides a transmission platform for the broadcasting organizations in order to transmit via cable or satellite, Telecom is not responsible to take the consent of the right owners." The problem here derives originally from the different translation of the source article during the implementation of international agreements to Turkish legislation.

As to the right of retransmitting in the Copyright Code –as mentioned above- the term of "broadcasting organizations" and the act "broadcasting" is preferred. However when this article is compared with the referred clause from the Bern Convention it is seen in the art.11bis of the agreement that it refers to an "organization". This variation from the Berne Convention brings out the arguments such as the exclusion of the cable and satellite platform operators from the liability of unauthorized rebroadcasting of copyright protected works. The Telecom Case in 2002 partially relies on the same grounds and holds Telecom as a cable operator not liable for the unauthorized retransmitting. However in a more recent case in 2007, the first instance IP court has found Digiturk, a satellite platform operator liable for not paying the revenues to the collecting societies for the rebroadcasting of the copyright protected works and thus contributing the infringement of the copyright owners and owners of related rights.

Further more the issue of whether retransmitting right is perceived as a subcategory of communication to the public right or is it an independent category of an exclusive right causes another difficulty in the meaning of collecting the revenues. It is expressly stated in the art.43 of the Copyright Code that cable-broadcasting organizations that will broadcast or transmit programs must obtain prior authorization through the conclusion of an agreement with collecting societies operating in the relevant fields for works, performances, phonograms and productions other than staged works. It is acknowledged from here that the right of retransmitting shall be pursued by the collecting societies. However according to the art. 52 of the Copyright Code, in the acquisition of the rights, the rights that are assigned has to be mentioned one by one in the certificate of authorization of the collecting societies.

At this point, it is very crucial to decide whether it is adequate for collecting societies to only have the right to pursue the right of communication to the public to be able to collect revenues for the retransmitting of a work or the right of retransmitting must be mentioned in the certificate of authorization. This brings us to the aforementioned question. In a very recent decision that is held by the first instance IP court in 2010; it is found adequate for a collecting society to be assigned the right to perform and the right to communicate to the public to collect the revenues on behalf of its members from the utilization of the retransmitted works. However this case has not been discussed before the Supreme Court yet. If the Supreme Court approves the decision of the first instance, than the decision can be interpreted in a way that the right of retransmitting is a subcategory of the right of communication to the public; which will cause a crucial defection and a drift from the other jurisdictions.

As a result, it is a fact that the term of retransmitting has not been entirely absorbed in Turkish legislation yet. The differences in the law terminology and the gaps in the related articles make it even harder to reach to an effective application of the right. As to the liabilities of the organizations in regards; it is even more blur. Although the aim of all the implementations and adaptations were to be harmonized with the international application of the right; it is quite clear that further regulations and/or explanatory Supreme Court decisions are necessary to clarify the questions.

VI. UNFAIR COMPETITION LAW

1. IN GENERAL

In the art.56 of the Turkish Commercial Code, the unfair competition is described as the abuse of commercial competition by any kind of act that does not comply with good faith. This description is in accordance with description in the art.10bis of the Paris Convention in relation to industrial rights. In addition to this general description, in the art.57 it is determined as examples, which acts would be deemed as unfair competition. The examples expressed in the code will be examined in detail below.

a) The Unfair Competition Examples in the Code

1. To denigrate

To denigrate someone else, someone else's product, service or business by false, misleading or unnecessarily offensive statements is unfair competition. To denigrate is not necessarily constitutes an unfair competition always. To speak of an unfair competition, the information declared in the statements must be false or misleading, abusive or offensive more than necessary. In other words, it is not unfair competition when the statement is completely consists of true information or it is admonitory, even if the statement denigrates someone else.

In 2006 the Supreme Court has reached to a decision that, although the auto gas that both parties have been selling are smelly because of technical requirements and as required by law, it is unfair competition to announce on the advertisements that the defendant's auto gas is scentless and the smelly auto gas is of poor quality and damage the automobiles. As it is seen in this example since the statement was false and misleading it was held that it constitute unfair competition.

2. Misstatement on the ethic or the financial capacity of somebody else

The Supreme Court has accepted the below-mentioned statements of the defendant against the plaintiff, which represents the biggest companies of Turkey and which is financially in a very convenient status as unfair competition in the STAR decision dated to 2007: "...nobody recognized the advertisers that won the tender. There was no successful work. It was not certain, which big campaigns that they have executed until today. When dug deeper, the sensitive noses smell the scam in the Ministry of Tourism..."

3.To surpass him/herself or someone else against their competitors by giving false or misleading information on his/her or someone else's personal status, products, services or commercial activities

The Supreme Court held in ARAS KARGO decision that, to announce that the defendant firm has been active since 1979 on their advertisements, whereas actually it has been active since 1993 and although the firm has 11 years of experience in the sector, to declare that they are celebrating the 25th year constitutes unfair competition against their competitors.

4. To mislead persons by acting like he/she owns a permission, an authorization, a certificate, a document, an award or as such, which they do not possess or by acting in a way that causes such impression; by using false title and vocational names

In a Supreme Court decision of 2007 it was accepted as unfair competition to fill up and sell pirate kitchen cylinders without the necessary authorizations and to use the competitor's trademark without permission on the kitchen cylinders was acknowledged as trademark infringement.

5. To try to give rise to confusion with respect to someone else's enterprise, product or service or to act in a way that causes confusion; especially to use someone else's name, title, trademark, sign or to use the similar that can give rise to a confusion or to market the products or services, knowingly or not, which causes confusion and hold them except the reasons of personal needs.

In practice the acts of unfair competition regarding this example are generally constitute from the activities regarding trademark infringement. Again in the cases of product visuals, in other words in the counterfeit designs, this provision is frequently used. Similarly, the use of distinctive name and signs of third party, like trade names, constitutes unfair competition as well.

In a Supreme Court decision of 2005, it was acknowledged as unfair competition against the defendants, who created the impression of being the distributor of the plaintiff by placing the plaintiff's trade name and the logo of plaintiff's trademark and plus the address and the phone number of the main factory, trade registration and tax number on their invoices. The Supreme Court accepts that the counterfeit of an unregistered design, where there is no technical requirement, is unfair competition as well.

6. To impel someone else's employees, representatives or other assistants to violate their duties by inciting them.

7. To acquire or to declare production or business secrets of the employer's or client's by inciting their employees, representative or other assistants

8. To benefit from the production or business secrets, which are acquired against the rules of good faith or to declare them

It can also constitute unfair competition for somebody to declare the production or business secrets that he/she learned in good faith. For instance, to use, to let somebody use or to declare the business secrets, which were acquired lawfully in the line of duty in the old firm, with the intent to damage the firm is an unfair competition. However it is not an unfair competition for somebody to use the information and the experience, acquired in the old firm, after he/she is transferred to the competitor firm. The Supreme Court reached to a conclusion in a decision in 2007, that the use of knowledge in the new firm, which the defendant acquired in the old firm, did not constitute unfair competition.

9. To give false information or documents that can mislead the persons in good faith

10. Not to obey the legislations in effect with respect to competitors, contracts or the business rules that were determined by the local traditions

In a Supreme Court decision, dated to 2006, it was ruled as unfair competition against one of the two shops in the same bus terminal, which one of them has the authorization to sell food stuff and the other has the authorization to sell souvenirs only, since the one who has the permission to sell only souvenirs has begun to sell food stuff as well.

When the above-mentioned examples are examined, it is seen that this regulation comprises lots of different acts of unfair competition that are not stated explicitly in the Paris Convention. Of course these acts of unfair competition are not restrictive.

b) Unfair Competition Cases

Since the matter of unfair competition is regulated under the Commercial Code, the cases regarding unfair competition are heard before the Commercial Courts. In addition to this, some unfair competition acts also infringe IP rights (the Principle of Cumulative Protection). Thus, to create confusion by using a trademark that belongs to somebody else constitutes both an unfair competition and an infringement to the trademark right. The case is heard before the IP courts, in cases, where the act that constitute unfair competition is also against the special legislation, just like in the example above. It would be a crucial mistake to file such case before a commercial court. Then the commercial court would hold the decision of lack of jurisdiction ex officio or upon request and sent the file to the court having jurisdiction (IP court). This will cause the duration of the case to be prolonged.

The case can be filed in the domicile of the defendant and/or before the court or one of the courts, where the unfair competition was occurred or the consequences emerged. On the other hand, in the cases of IP infringements, besides these places the case can be filed before the courts of the domicile of the plaintiff.

The person, whose rights are infringed because of unfair competition or who is faced with the danger of infringement, can demand the decretive of whether the act constitutes an unfair competition or not; the suspension of the act; the abrogation of the wrongful consequences and the compensation of his/her damages.

Negligence is not required for an act to constitute an unfair competition. However negligence is required in recognition of compensation. On the other hand if the perpetrator has an intention, then the act constitutes a crime at the same time and the perpetrator faces with criminal sanctions. In some unfair competition cases the perpetrator is not intentional. He/she could act in unfair competition, where there is no intention. There could be negligence or omission. In such cases the perpetrator can only be held legally liable. In cases, where there is a criminal sanction, a criminal suit is filed against the perpetrator by the complaint of the person, who is aggrieved by unfair competition. It could be held either imprisonment from 1 month to 1 year and/or judicial fine.

The ones, who continue to the acts of unfair competition despite the ruling of the court that determines the presence of unfair competition, are subjected to criminal sanctions. Again the employers and the clients are subjected to criminal sanctions if they were informed but nevertheless did not prevent their employees, assistants or representatives from committing unfair competition.

The criminal sanctions shall be executed against the member or the partner of the body, which is acting on behalf of the legal entity when it is a legal entity that constitutes unfair competition. With respect to legal entities, it is held security measures, which are peculiar to them. In this context regarding fines, the legal entity and the people, who can be held responsible on behalf of the legal entity, are jointly and severally liable.

The unfair competition action can be filed directly by who aggrieved by unfair competition and also under certain circumstances the customers, chamber of commerce and industry, craftsman's association, stock market, collecting societies or trade associations, who suffered damages by unfair competition, can file the case.

The case must be filed either within 3 months after the date of the act causing unfair competition is committed or within 1 year after the act is learned by the person aggrieved from unfair competition. However if the act of unfair competition constitutes a crime at the same time, then the duration of filing is prolonged until the lapse of time for criminal proceedings.

In the practice in all the cases regarding infringement against an IP right, it is alleged unfair competition against the defendant. The courts accept the case both in favor of the presence of the infringement and the unfair competition without executing any further examination with respect to unfair competition in the case of determining an infringement against an IP right.

To file the case (in case of sole unfair competition case) either in commercial courts or in IP courts (with grounds of illegality, such as trademark infringement) does not constitute a crucial difference regarding the duration of the case. The proceedings in the first instance court takes 1 to 3 years and it takes approximately 2 years in the Supreme Court. In the cases, where the Supreme Court rejects the decision of first instance court and the file is sent back, the duration is prolonged even more.

2. UNREGISTERED INVENTIONS AND UNFAIR COMPETITION

By granting a patent to the owner of the invention, the law maker gives exclusive rights to the holder and the competition with respect to the production of invention is kept at bay for a while. The purpose of limiting competition by patent protection is to encourage innovation, promote technology development, to allow expansion of technical knowledge and thereby, in the long run, to enable competition with other countries on the world market. According to the literature, patent protection is based upon a hypothetical agreement between the holder and the government, by which the holder releases his invention to public use and the government, in return, gives monopoly rights (patent protection) to the holder on his/her invention for a period of time after which the invention becomes part of the public domain. The person cannot benefit from patent protection, unless he/she shares his/her invention with the public by registering it. As an alternative to patent protection, if technically possible, he/she may keep the invention as a secret and enjoy trade secret protection for an indefinite period of time.

Whether encouraging or promoting theory is predicated on, one of the most characteristic features of patent protection is that it has a limited duration. Therefore, after expiration of the patent, the invention will be no longer protected by unfair competition law. Yet by virtue of the fundamental tenet of patent protection, the protection has a limited duration; after the expiration of the patent, the public obtains the right to make free use of the invention. Thus, it is clearly against this tenet to apply rules of unfair competition after patent protection ends.

However, precedents of the Supreme Court are totally going in an opposite direction. As it ruled in 1995 that copying an unregistered product was unfair competition: "...Although the radian stoves are not identical as a whole, there is an obvious similarity between them in respect of fan and coil units. It is true that fan and coil units are located on the top because of technical requirements. However, the production of these units similarly in the level of identification by the defendant constitutes an unfair competition in the meaning of art.57/5 of Turkish Commercial Code. Since the similarity in the other units is because of the technical requirements and actually there is no system similarity between them, it should be accepted that there is no unfair competition for the units except fan and coil."

The Supreme Court accepted the copying of a product, which had neither design registration nor patent registration, as an act of unfair competition in a decision in 1996: "... As the 'Climaks' labeled stove manufactured by the defendant is similar in the degree of identification to the 'Delonghi' labeled stove manufactured by the plaintiff with respect to outlook, design and technical system, the act of the defendant shall be recognized as unfair competition..."

In another case the Supreme Court ruled in 1996 as so regarding a product, which has no registration at all in Turkey: "...the ovens produced by the plaintiff and by the defendant are similar in the degree of identification with respect to outlooks, units, technical and in principle and moreover these similarities are not because of technical requirement, the favored right is on the plaintiff, who started manufacturing priory and transfer the technology from abroad. Therefore the acts of the defendant constitute an unfair competition..."

As is known, patent protection is territorial, which means an invention is protected in the country/countries where it is registered. In other words, there is no patent protection in the countries that the invention has not been registered. The Supreme Court, on the contrary, decided in 1997 that an invention patented in US, but has no registration in Turkey shall be protected in Turkey according to the rules of unfair competition.

The Supreme Court maintains the wrongful applications in the recent years as well. For instance, in Supreme Court decision in 2007 regarding a case filed by Rolex against Arpaş, Rolex, the plaintiff, claims confusion. Defendant party, on the other hand, argues that the features in question are not new and lack individual character since most of the well known manufacturers use the same features in their watches and moreover, it is not likely to confuse the watches with different labels (Rolex and Arpaş) since it is 9 to 20 times more expensive to buy a Rolex. The first instance court has accepted the case and the claim for unfair competition on the ground that "...Wristlet parts of the watches in dispute are similar and the locking mechanisms of the metallic link has a similar mechanism, they are decorated with similar hooked knurled frames. Moreover, the two of the watches manufactured by the defendant are similar to that of the plaintiff as to their design, wristlet type, sections in the dial, and size and background frame of the dial glass...". The decision was approved by the Supreme Court.

Although in one of the disputes the IP court made incisive determinations, the Supreme Court reversed this judgment through a wrongful decision in 2008. The decision of the IP court states that: "...it is mentioned that the product of the plaintiff is subjected to five patents registered in US, the plaintiff has no design registration or a patent certificate by TPI for the labeling machines, thus it is not possible to mention the infringement of the rights in Turkey derived from the patent certificate valid only in US; furthermore it is not possible to demand the protection of this invention or the product in Turkey under unfair competition regulations, the opposite thinking would result in granting protection to an invention or a product, for which no cost has been paid in Turkey or has no validation as such; this issue would be against the purpose that restricts the duration of the patent certificate and offer the invention to the service of the public after the end of 20 years period of time and provide everybody to benefit from this invention and also it would be against the regulation codified in the art.133/2 of the Decree Law nr.551; besides it is also not possible to apply the general law clauses in the presence of special law regulations on the matter..." The referred art.133/2 by the IP court states that; "The subject matter of a patent right having terminated shall become public property as from the moment when the ground for termination materializes."

The Supreme Court reversed the judgment on these grounds: "... the purpose and the scope of the Decree Law nr.551 is to promote the inventive activity, to protect the inventions by issuing them patent or utility model certificates in order to provide the actualization of technical, economical and social development by implementing the inventions in industry; to encompass the fundamentals, rules and the conditions with respect to the protection of the inventions, which are appropriate for the establishment of an industrial right by issuing them patent or utility model certificate. However, there is no article in the Decree Law nr.551, which regulates patents and utility models, expressing that the inventions, which are not registered in Turkey would not be protected. In the presence of the art.56 and the next clauses of the Turkish Commercial Code, the first grounding of the court cannot be deemed as a justifiable ground."

This verdict of the Supreme Court is explicitly against the modern patent system. Supreme Court's approach to the unregistered designs is in the same direction as well. Unless the Supreme Court reverts from this case law, the IP system acknowledged by special legislations would be totally meaningless. Because of this, it would not be possible to establish a real IP protection system in Turkey. Nevertheless as to the current situation, it would be appropriate to say that the unregistered inventions are protected under unfair competition regulations in Turkey and with this discrete application; it is being drifted apart from the system being applied in all the developed countries.

3. UNREGISTERED DESIGNS AND UNFAIR COMPETITION

The first regulation on protection of industrial designs promulgated through Design Decree Law in Turkey in 1995. However, on the contrary to model EU Design Regulation, the unregistered designs have not been regulated in the mentioned legislation; instead the principle of protecting unregistered designs through general provisions has been acknowledged. The meaning of general provisions points out mainly the provisions on unfair competition mentioned in Turkish Commercial Code, other than the protection models of copyrights and trademarks. As there are no confines for the term of protection against unfair competition, in the event of meeting all the criteria, unregistered designs can be protected perpetually in this context.

Additionally, the principle of cumulative protection is expressively recognized in Turkish IP law and applied by the courts widely and commonly. Therefore in addition to unfair competition the unregistered designs can enjoy protection of special regulations such as trademark and copyright protection, providing that the requirements are present.

Prior to 1995, since there were no particular regulations regarding designs, in practice a wide unfair competition protection was provided to these kinds of intellectual creations by case law. The Supreme Court mainly grounds its case law to labor principle. For instance, the Supreme Court reached to such a decision dated to 1995, in which the action was occurred before 1995: "although there is no place to state that the radiant heaters are similar as a whole, it is apparent that the fan and resistance units are similar. The situation that the fan and the resistance units are located above can be accepted as a technical requirement. However, the fact that defendant produced these units identically similar, constitutes unfair competition according to art.57/5 of Turkish Commercial Code."

It was expected a change of opinion in Supreme Court's approach towards the labor principle after the implementation of regulations of 1995. As a matter of fact, the diligence of the people who put his/her effort to develop a design are under specified conditions already protected according to the time limits determined in the design law. In other words, prioritizing the special regulations according to the special-general provision relationship should have embodied the application. But Supreme Court did not make any changes in its old case law after the new regulations. Today the unregistered designs are still protected in the context of unfair competition regardless of term limit.

Actually in order to speak of unfair competition derived from the affinity of the product, the presence of confusion has to be looked for. Thus Supreme Court emphasized in a decision dated to 1989 that the permanent case law is in this direction. However the decisions regarding the subject matter are not consistent within themselves. Thus in most decisions regarding unfair competition the presence of confusion is not required. In these decisions, the Supreme Court acknowledges the presence of a similarity to somebody else's product without any technical requirement as an unfair competition. Therefore in the cases where somebody else's unregistered design is used similarly or identically, the presence of unfair competition is acknowledged even when there is no danger of confusion. This enlarges the scope of protection of the unregistered designs provided by unfair competition. For instance, in the above mentioned case; since the end user cannot see the resistance it is not possible to speak of a presence of confusion. Nevertheless the presence of unfair competition was acknowledged as the Supreme Court finds the presence of similarity adequate for the constitution of unfair competition.

In Turkish law, the criterion of absolute novelty (novelty all around the world) is embraced. According to the Supreme Court, the absence of novelty and individuality in a design material, in other words a design that does not comply with the protection requirements mentioned in the legislation, does not mean that the provisions of unfair competition will not protect it. The Supreme Court in one of its decisions dated to 1999 declared the registration of a design invalid, where the design not being novel constitutes the ground of the case. The plaintiff, whose design registration was declared invalid, claimed depending on the unfair competition provisions that his/her design was counterfeited and as a result the case was accepted.

In a decision of Supreme Court in 2002 a local firm put a product on the market for the first time in Turkey, which has already put on the market by a foreign firm in abroad. The local firm marketed the product by some great efforts and by spending big amount of money. Just to benefit from the well-known status of this product, another firm counterfeited this product. The firm that counterfeited the product claimed that the product in question is not actually new and has put in the market in abroad by other firms. The Supreme Court acknowledged this action of identical use of the product as unfair competition since the aim was to exploit from the well-known status. Nevertheless, in another decision in 2001 an absolute novelty was sought for the unregistered designs. The Supreme Court has used these statements when the decision of novelty in Turkey was reminded in a decision dated to 2008.

According to a decision of General Assembly of Civil Chambers of Supreme Court in 2005, it shall be examined whether the plaintiff develops the unregistered design firstly in Turkey and in the world or not and it shall be investigated whether these designs are counterfeited or not. According to the General Assembly the novelty of the designs in dispute shall not be examined since the ground of the case is not a registered design but provisions of unfair competition.

In a case that was submitted to Supreme Court in 2007, which Rolex filed against Arpas, the plaintiff claimed confusion. The defendant on the other hand claimed that; the features of the products of the plaintiffs' that are subjected to the alleged confusion are not actually new and original; that these features have been used identically by most of the famous watch producers for the watches that they produce and that since the cost of the plaintiffs' products are 9 to 20 times more expensive there is no possibility for the consumers to confuse the products to each other that carry different trademarks (Rolex and Arpas). The Court has accepted the unfair competition claim by stating; "... the strap of the watches in dispute are same type and the locking mechanisms of the metallic link possess a similar mechanism, they are decorated with similar hooked knurled frames, the two model of watches, belong to the defendant, are similar to the plaintiffs' products in the features of design, the type of watchstrap, the size and the background framework of the glass of face..." The Supreme Court approved the decision.

The Supreme Court preserved in its decisions in 2009 its approach recognizing that use of unregistered designs by third parties without any technical requirement must be considered as unfair competition. The Supreme Court overruled the decisions of the IP courts, where the IP courts grounded their decisions on the EU regulations stating that the protection of unregistered designs are limited to three years in the model law, therefore the protection in Turkey should also be at most three years. Additionally, Supreme Court stated in these decisions that the unregistered designs will be protected perpetually.

Consequently, it can be expressed that currently the unregistered designs attract a wider protection under the provisions of unfair competition compared to registered designs. Therefore probably it would be much more beneficial for the owners of the registered designs to base their demands upon the unfair competition provisions on the stage of a lawsuit.

ABOUT US

Suluk & Kenaroğlu is a boutique law office specialized in Intellectual Property Law and Unfair Competition. In addition to its main office in Istanbul, a liaison office is also operating in Ankara, where Turkish Patent Institute is located.

Our mission is to provide the highest quality level of services to our clients throughout the world in accordance with international standards, which aims to ensure that they receive trusted counseling and forward-thinking legal solutions. In this sense, our services are tailored to the needs of our clients and our team is committed to longstanding traditions of innovation, responsiveness and client dedication.

Academic studies and publications of our office are closely followed by professionals, academicians and judicial authorities in Turkey, thus we have the pleasure of presenting quite a number of books and publications to Turkish IP Law.

Since the very beginning of our firm in 2001, we are proud to have represented leading domestic and international companies and served their needs for intellectual property litigation and counseling. Our expertise extends to all areas of intellectual property with an extra concentration on media and entertainment law and information technologies.

In addition to our counseling and litigation practice, we represent our clients before Turkish Patent Institute in all aspects of IP Prosecution.

Our office currently represents international and domestic companies in varying fields of activities, such as food, media and entertainment and pharmaceutical industries; finance, textile; information technology services; energy and construction.

Suluk & Kenaroğlu Law Office

OUR WORKS

A. BOOKS

Adv. Dr. Cahit Suluk, PhD

Contracts in Copyright Law and Samples of Copyright Contracts, ITO, 2009 (Memiş/ Nal/ Suluk)

Principals of Intellectual Property Law, 2th Edition, Seçkin, 2009 (Karahan/ Suluk/ Saraç/ Nal)

Practical Intellectual Property Law, V.III: Designs, Seçkin, 2008

Publishers and Turkish Copyright Law, Problems and Solutions, İTO, 2006

Practical Intellectual Property Law, V.II: General And Copyright, Arikan, 2005 (Suluk/Orhan)

Practical Intellectual Property Law, V.I: The Laws and Regulations, Arıkan, 2005 (Suluk/Keşli/Orhan)

Copyright and Challenge Against Counterfeiting , Hayat, 2004

Industrial Designs Law, Seçkin, 2003

Protection of Industrial Designs in EU Law- Community Design-, Seçkin, 2002

Protection of Spare Part Designs, Yargı, 2001

Adv. Yasemin Kenaroğlu, LL.M

Compulsory Licensing in Patent Law, (Unpublished Master Thesis), 2007

B. ARTICLES (Selected)

Adv. Dr. Cahit Suluk, PhD

National Treatment and Obligation of Giving Guaranty for Foreigners in Intellectual Property Law, (Dedicated to Prof. Dr. Hüseyin Ülgen), Vedat, 2007

The Effect of Invalidation Decisions at IP Rights, IP Law Magazine (FMHD), 2006

Comments On the Decisions of Turkish Constitutional Court On The Utility Model and Trade Mark: Incompatibility with the Constitution, FMR, 2004

Informed User in Design Law and Some Problems in Practice, Law in the Informed Society (Dedicated to Prof. Dr. Ünal Tekinalp), Beta, 2003

Invisible Designs in EC and Turkish Law, Istanbul University Law Faculty Journal, (IUHFM), 2002

Non-Alternative Designs, (Dedicated to Prof. Dr. Omer Teoman), Beta, 2002

Community Designs, Istanbul Chamber of Industry Journal (İSOD), 2002

Utility Model Protection in EU and Turkish Law (I) and (II), Ankara Bar Association Intellectual Property and Competition Law Journal (FMR), 2002

Design Concept and Protection, Economic Development Foundation Journal, (IKV), 2001

The Importance of Design Registration and Critical Points, İSOD, 2001

Use of Designs at Repair Purpose, BATIDER, 2001

Cumulative Protection of Designs in EU and Turkish Law, FMR, 2001

Conditions of Protection of Registered Designs in EU and Turkish Law, FMR, 2001

Adv. Yasemin Kenaroğlu, LL.M

Compulsory Licensing in Patent Law, (Unpublished Master Thesis), 2007

Adv. Bahattin Çarkacı, MBA

Turkey's Integration Into EU: Challenges and Opportunities (Unpublished Master Thesis), 2005, Ontario, Canada

C. PRESENTATIONS & PAPERS (Selected)

Adv. Dr. Cahit Suluk, PhD

Protection of Designs at International Level III. International Designs Congress: Discussing Designs in Turkey, Istanbul Technical University Publishing, 2006, Istanbul

Practical Problems on Design and Utility Model Protection, Symposium of Intellectual Property Law Commission of Istanbul Commerce University Publishing, 2005, Istanbul

Striving Against Piracy and Printing Sector, Turkish Chamber of Chemical Engineers 2nd Paper-Cardboard, Ink, Printing Symposium and Exhibition with International Participants, 2004, Izmir

Legal Protection of Packaging and Graphic Designs, Turkish Chamber of Chemical Engineers III. International Packaging Congress & Exhibition, Presentations, 2003, Izmir

Protection of Spare Part Designs or Straggle of Keeping the Independent Automotive Industry Alive – Ankara Bar Association International Law Congress - Intellectual Property and Competition Law, 2002, Ankara

Adv. Yasemin Kenaroğlu, LL.M

Middle East – Emerging Trademark Issues, Presentation, 129th Annual Meeting of International Trademark Association, 29 April - 02 May 2007, Chicago, ABD

