New approaches to protection of designs in Turkish law

In Turkish Law, designs have been protected under the Industrial Property Code no. 6769 (hereinafter “IPC”) since 10 January 2017. The IPC is similar to the former legislation but implements a few important novelties with the IPC, including the protection of unregistered designs.  Unregistered designs are protected under IPC with the condition that they are presented to the public for the first time in Turkey. According to article 69 of the IPC, the protection period for unregistered designs is three years as from the first presentation date.

In other words, in Turkish Law the principle of territoriality applies to unregistered designs. Any person who wishes to benefit from the IPC protection for designs presented to the public for the first time in a country other than Turkey, should obtain registration for their design before the Turkish Patent and Trademark Office (hereinafter “TPTO”) to enjoy protection in Turkey.

Additionally, it was previously possible to protect designs under the unfair competition law. The cumulative protection for designs was generally accepted by doctrine and jurisprudence.

According to some scholars, since there was no regulation on the protection of unregistered designs in the former legislation under Decree Law no. 554 and such former legislation made reference to general provisions in article 1/2^[1], unregistered designs could be protected under unfair competition^[2].

However, the approach for protecting designs under the unfair competition law has changed since the IPC entered into force. Since the protection of unregistered designs is regulated under IPC rather than Decree Law no. 554, the lawmaker has now disclaimed the cumulative protection. Some scholars and the Supreme Court are therefore in favour of not accepting the protection of unregistered designs under unfair competition^[3].

Indeed, in a recent decision rendered on a case when the Decree Law was still in force, the Supreme Court stated that even if the disputed design and the unregistered design were similar, unfair competition does not exist since the trademark used on the disputed design/product was different. The Supreme Court supported its decision using the new approach of the lawmaker, even if the case in question took place when the Decree Law was still in force.

Other scholars state however that the protection of unregistered designs under unfair competition is still possible after the IPC came into force, since the conditions of these two protection types are different^[4].

Besides, it should be stated that the protection of designs under the Intellectual and Artistic Works Act no. 5846 is possible if the designs can be deemed artistic works^[5]. However, proving the artistic quality of any such design would be a challenge for Turkish IP Courts.

Considering the above, it is recommended that design applications be filed with the TPTO in order to protect designs effectively and decrease the risk of new approaches under Turkish Law.