Patents and Trademarks
Patents and trademarks in Turkey – an overview. Prepared in association with Moroğlu Arseven, a leading Turkish law firm, this is an extract from The Pharma Legal Handbook: Turkey, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
Both patents and trademarks are regulated under the Industrial Property Rights Law numbered 6769 entered into force on 10 January 2017 (“IP Law”).
Any sign which meets the following can be registered as a trademark (Article 4, IP Law):
- Can be graphically represented,
- Is capable of distinguishing an entity’s goods or services from those belong- ing to others.
Protection can be granted to inventions which are (Article 81, IP Law):
- Involve an inventive step,
- Applicable to industry,
- Not within the scope of non-patentable inventions – as explained under Question 3.
2. What agencies or bodies regulate patents and trademarks?
The Turkish Patent and Trademark Office (“TPTO”) receives applications and registers both patents and trademarks.
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
There are absolute and relative grounds for the refusal of trademarks. Any signs can be registered if they are not refused on these grounds. The TPTO examines absolute grounds for refusal ex-officio, while relative grounds should be raised by third parties through an opposition. An opposition should be filed within two months of the subject trademark application being published in the Official Trademark Bulletin.
Absolute grounds for refusal include where a sign:
- Does not have distinctive character,
- Refers to type, characteristics, quality, intended purpose, value, production time/period or origin of the covered goods or services,
- Is identical (or almost identical) to earlier registered trademarks and covers the identical or same type of goods and services,
- Is used by everyone in trade or used to identify a certain occupational group,
- Is compulsory to use to define and identify the goods’ shape, other characteristics or to achieve a technical result,
- Is misleading as to the nature, quality and geographical origin of the goods and services,
- Concerns the public and possesses historical and cultural value due to their incorporation of coats of arms, emblems, or hallmarks, without the consent of the competent authorities (except for those within the scope of Article 6ter of the Paris Convention),
- Contains religious terms, symbols, names of religious officials, holy words and so on,
- Is contrary to public policy or accepted principles of morality,
- Is the same with a registered geographical indication.
Relative grounds for opposition are:
- The application is the same, similar, covers the same or similar goods and services, and creates the likelihood of confusion with:
- An earlier registered trademark,
- An earlier registered trademark application,
- An unregistered trademark which was in use in Turkey before the application date,
- A guarantee or collective marks (this argument can be claimed up to three years after the basis trademark’s expiry date),
- An expired trademark (this argument can be claimed within two years after the basis trademark’s expiry date),
- Unauthorized filings by an agent or commercial representative,
- Dilution of a well-known trademark (the opposition may target different goods and services),
- Infringement of the rights arising from a name, photograph, copyrighted work, or any other industrial property rights owned by a third party,
- Made in bad faith by the applicant.
All inventions regarding a product or process can be protected through patents, provided they meet the legislative criteria.
The following are accepted as being outside the scope of patentability:
- Discoveries, scientific theories, and mathematical methods,
- Plans, methods, schemes/rules for performing mental acts, for conducting business/trading activity, and for playing games,
- Literary and artistic works, scientific works, creations having an aesthetic characteristic, and computer programs,
The following are not granted patent registration:
- Inventions that are contrary to public order and morality,
- Plant and animal varieties/species, or processes for breeding/plant or animal varieties/species, which are based mainly on biological grounds, except products derived from microbiological processes,
- All methods of diagnosis, therapy, and surgery applying to humans or animals,
- The ‘simple discovery’ of any element of the human body at any stage of its formation and development (including full or partial gene sequencing),
- Processes for cloning human beings, modifying the germ-line genetic identity of human beings, use of human embryos for industrial or commercial purposes,
- Processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal (as well as animals resulting from such processes).
4. How can patents and trademarks be revoked?
Cancellation of a trademark can only occur in Turkey through a decision made by the authorized courts. Claimants can seek trademark cancellation in Turkey on the following grounds:
- Breach of absolute grounds for refusal,
- Breach of relative grounds for refusal.
Trademark cancellation actions must be filed within five years following the subject trademark’s registration date. The non-use grace period for a trademark in Turkey is five years, starting from the trademark’s registration date. Third parties can only initiate non-use actions after the fifth year of a trademark’s registration.
Whereas the effect of a cancellation decision is retrospective, the invalidation of a trademark is prospective. Invalidation grounds for trademarks are as follows:
- Non-use of the subject trademark,
- The trademark has become generic in respect of the goods or services resulting from trademark’s owner,
- As a result of the trademark owner’s use (or a person authorized by the owner), the trademark has become misleading for the public as to the nature, quality, place of production, or geographical origin of the goods or services which the subject trademark is registered for,
- Use of a guarantee mark which is contrary to the technical specification.
Invalidation actions are handled by the authorized first instance courts. However, by 2022, this authority will be transferred to the TPTO.
The IP Law introduced a post-grant opposition system, whereby third parties can now oppose a patent within six months of the TPTO publishing its decision to grant the patent.
The grounds for such a patent opposition are:
- The patent does not meet the patentability criteria,
- The invention is not disclosed in a sufficient manner,
- The patent exceeds the scope of the initial application.
The Re-examination and Evaluation Board (“Board”) will refuse the opposition if it examines the opposition and finds that the patent conforms with the IP Law. If the Board concludes that the patent partially conforms with the IP law, it will confirm partial validity. The Board will inform the patent owner accordingly, requesting the patent be amended in line with a partial approval. The patent will be invalidated if no amendments are filed (or the amendments are not approved).
Otherwise, patents can be revoked through legal actions before the first instance courts on the following grounds:
- The invention’s subject matter does not meet the patentability criteria,
- The invention’s subject matter has not been described in a sufficiently explicit and comprehensive manner so as to enable a person skilled in the technical field concerned to re-create the invention,
- The patent’s subject matter exceeds the scope of the application,
- The patent holder does not have the right to a patent.
5. Are foreign patents and trademarks recognized and under what circumstances?
Turkey is party to a range of international agreements related to patents and trademarks:
- The Paris Convention for the Protection of Industrial Property since 1925 when it became a signatory to the London text, and later the Stockholm Text (1995),
- The Patent Cooperation Treaty, since 1 January 1996,
- The European Patent Convention, since 29 January 2000,
- The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since 1 January 1999.
Therefore, all foreign patents and trademarks registered within the scope of any of these above-mentioned agreements are recognized in Turkey.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
Turkey introduced a legislative data exclusivity regime in January 2005 in the Regulation on Licensing of Human Medicinal Products. Under this regime, data exclusivity exists for six years after the first marketing authorization application date of a new pharmaceutical in a country which is a member of the European Union Customs Union.
A pharmaceutical product for human use cannot be marketed in Turkey unless it is authorized by the Ministry. In granting a marketing authorization, the Ministry requires drug producers to submit the results of their pharmaceutical products’ safety and efficacy tests, along with other documents regarding the product. Data exclusivity provides original drug producers with protection for the information gathered from their clinical trials and studies. During the data exclusivity period, no other firm can apply for marketing authorization from the Ministry by referring to the clinical data related to the new pharmaceutical, without specific permission.
Under Turkish law, the data exclusivity period is linked to the patent protection period (if the pharmaceutical is also subject to a patent). Original pharmaceutical products which have been licensed in a country which is a member of the European Union Customs Union are subject to a data exclusivity period of six years (Article 9, Regulation on Licensing of Human Medicinal Products). The six-year term starts from the first marketing authorization of the original product in any of the Customs Union Member States. If a Turkish patent exists, the data exclusivity will end when the Turkish patent expires, even if this is earlier than six years. Therefore, the period of data exclusivity depends on the term of any Turkish patent which covers the active substance of the biological reference product. To determine the data exclusivity period in Turkey, it is important to know whether patent protection exists or not.
The Regulation on Licensing of Human Medicinal Products applies to:
- Original pharmaceuticals which apply for marketing authorization after 1 January 2005 in countries which are members of the European Union Customs Union,
- Original medicinal products which apply for marketing authorization after 1 January 2001 in countries which are members of the European Union Customs Union, provided that no applications have been made for marketing authorization relating to generic pharmaceuticals before 1 January 2005.
Marketing exclusivity is not regulated in Turkey. Therefore, once the data exclusivity term expires, generic companies are entitled to apply for marketing authorization by referring to the clinical data which was previously protected by data exclusivity, as well as to launch their product on the market. In practice, the Ministry tends to accept marketing authorization applications during data exclusivity term and process them. However, such products cannot enter into the market while the data exclusivity period remains active.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
No, there are no restrictions to any type of medicines or devices that can be granted patent and trademark protection besides the restrictions set forth under Question 3.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
Registering a license is not compulsory. However, it is common and good practice for industrial rights licensees to register their licenses with the TPTO in order to claim their rights against bona fide third parties. For example, if the owner of intellectual property rights transfers its rights to a third party, the licensee cannot claim its right against the bona fide third party who acquired the intellectual property rights, if the license is not registered before the TPTO.