Intellectual property

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Background

One of the issues most commonly raised by foreign Clients and colleagues abroad is the question of whether unregistered trademark rights can be protected in Turkey. While there are numerous ways to obtain similar results through efficient strategizing, asset management, and litigation; the suggested and most cost-effective method of doing so is through effective use of the rights mentioned in the Industrial Property Code (“IPC”). As is often the case, direct use of established legislation and case law is crucial to achieve optimal results through minimal cost and delay in such cases.

The legal framework for industrial property rights concerning trademarks -along with those associated with patents, utility models, industrial designs, integrated circuit topographies, and geographical indications- is set forth and detailed in the IPC and associated secondary legislation. While the IPC covers the general outlines of most trademark-related issues, extensive knowledge of related legislation, case law, and recent applications is essential when attempting to protect or enforce rights related to unregistered trademarks in Turkey.

The primary legal bases for protection of unregistered trademarks are established in Article 6 of the IPC which determines the scope of relative grounds of refusal for trademark applications. The same legal grounds are then referenced in subsequent articles of the IPC to serve as the legal basis for claims of trademark invalidation and/or infringement. Only a few of these legal grounds may be used by unregistered trademark owners in Turkey and the use thereof requires a precise legal understanding because the implementation of the related legislation is more irregular than the ones based on registered trademarks.

Legal Grounds for Protection of Unregistered Trademarks

Article 6 of the IPC establishes the relative grounds for refusal of a trademark application and the provisions that are more useful for unregistered trademarks owners are as follows:

  • Prior right ownership through genuine use as established in Article 6/3 of the IPC,
  • Protection of a well-known trademark registered abroad as per Article 6/4 of the IPC and the Paris Convention for the Protection of Industrial Property (“Paris Convention”),
  • Protection of name, trade name, copyright or other intellectual property rights as per Article 6/6 of the IPC,
  • Refusal of a trademark application filed in bad faith as per Article 6/9 of the IPC,
  • Unfair competition claims as per the provisions of the Turkish Commercial Code (“TCC”)
  1. Prior right ownership (Article 6/3 of the IPC)

Article 6/3 of the IPC states that:

“If a right to a non-registered trademark or to another sign used in the course of trade was acquired prior to the date of application or the date of the priority claimed for the application for registration of a trademark, the trademark application shall be refused upon opposition of the proprietor of that prior sign.”

Use of this legal ground is suggested for Clients who have been fairly commercially active in Turkey since the standard of proof of use of the trademark is high in such cases. Trademarks may be subject to protection under this provision in the event that;

  • There is serious and genuine use of the mark in Turkey which predates the application/priority date of the opposed trademark application,
  • The use is commercially significant and is sufficient to make the trademark known to relevant consumers, if not to the degree sought in well-known trademark protection,
  • The use and the effects thereof are focused on Turkey to avoid potential issues based on the principle of territoriality.

In short, this provision serves to prioritize the rights of the party that created, made the trademark distinctive and known in Turkey through genuine use over the rights of the party that has only acted first in filing an application. It is worth noting that the clarity and uniqueness of a trademark in the registry are still a matter of consideration for Turkish courts and the Turkish Patent and Trademark Office (“TPTO”), therefore Clients are not advised to file for a trademark application based on genuine right ownership claims to defend themselves while the same mark is already registered on behalf of another party. Instead, they should consult a legal expert on their options surrounding invalidation or revocation of the prior registered mark first.

While the burden of proof can differ from case to case, as a matter of general principle it is expected that the genuine right owner makes use of the trademark in a commercially significant manner. These standards are flexible depending on the conditions of each case but it is important to note that a degree of consistency in sales, high volume/value of sales, and use of the trademark directly by the party making the claim or through a license are often sought, even if it is not required for the prior right owner to be located in Turkey.

For example, Turkish Courts and the TPTO are unlikely to accept genuine right ownership claims of Clients who can only prove that their website has had hits from Turkey with no other commercial activity within the country, that can provide proof of a very low volume and value of sales or sales that have happened once in the distant past without any recurrence or consistency, and that have had activities in Turkey but without using the disputed trademark itself as per Article 6/3.

  1. Protection of a well-known trademark registered abroad (Article 6/4 of the IPC)

Article 6/4 of the IPC states that:

“Trademark applications which are identical or similar to well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of identical and similar goods or services.”

Article 6 bis of the Paris Convention in turn refers to the responsibility of Member States to cancel and prohibit trademarks that constitute “a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods” and clarifies that the same provision also applies if the essential part of the mark constitutes a reproduction or imitation of the same.

The scope of protection for this provision must be considered separately from Article 6/5 of the IPC which provides well-known trademark protection regardless of the registered classes if the risk of damage to the distinctiveness or reputation of the prior mark or risk of unfair benefit thereof is present. In contrast, Article 6/4 provides protection only within the scope of the goods and services covered by the trademark while not requiring the above-mentioned conditions to be proven.

When the relevant provision of the Paris Convention, the relevant provisions of the WTO agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) along with the text of Article 6/4 of the IPC are interpreted together, it is seen that the requirements for well-known protection in terms of Article 6/4 of the IPC are as follows:

  • The prior trademark be registered before one of the Member States of the Paris Convention,
  • The party making the claim is authorized to do so as per the Paris Convention,
  • The prior mark is well-known in terms of the relevant industry in Turkey and abroad,
  • The trademarks as well as the goods and services covered by the marks are the same or similar.

Being “known by all” is not sought and the term “relevant industry” refers to the industry where well-known status is claimed and where the trademark in question is registered in one of the Member States. Proof of well-known status can be evidence showing promotional activities, advertising spending, distinctiveness of the mark, local and international awards, etc. and the evidence must be prior to the application date of the disputed trademark.

  1. Protection of intellectual property rights (Article 6/6)

Article 6/6 of the IPC states that:

“An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright or any other intellectual property right of another.”

While the text of the provision leaves little to interpretation, potential Clients and colleagues should note that the name mentioned herein does not refer to any ordinary first name that can be freely used by anybody, instead, it is expected that the name be distinctive and known to those in the industry. Indeed, in the event that a name known to be widely used in Turkey is copied fully (first and last name), an evaluation of intent is likely to occur even though it is not explicitly mentioned in the provision. The name mentioned herein need not be interpreted to mean only legal and real names, those used for distinction by artists and celebrities can also be protected under this provision.

Similarly, trade names may also be protected as per this provision, however, it should be noted that in practice, a near-exact copying of a distinctive trade name is sought by authorities in such cases.

Lastly, consisting of a person’s “copyright” can be understood to mean including the copyright either entirely or partially. Indeed, it is seen in practice that the copyright must be highly distinctive and recognizable to consumers as belonging to the prior owner. The entirety of the copyrighted work does not need to be included and secondary elements of a copyrighted work may also be protected assuming that they are, on their own, highly distinctive and identified with the copyright owner while being used as a distinctive primary element of the disputed trademark.

  1. Refusal of applications filed in bad faith (Article 6/9)

Article 6/9 of the IPC states that:

“Trademark applications filed in bad faith shall be refused upon opposition.”

While the provision itself is quite short, the interpretation of what constitutes bad faith is highly dependent on both local and international case law. The burden of proof is often very high in terms of bad faith claims and potential Clients and colleagues should make sure that they consult a local expert with practiced knowledge before IP courts and the TPTO to obtain an overview before making bad faith the main claims of any dispute.

Considering the standards for bad faith can be changing with each subsequent Supreme Court ruling, it is important to follow recent developments. It should also be noted that bad faith must be present at the time of filing the application. The applicant acting in bad faith after registration or unrelated to the initial filing is not likely to constitute grounds for refusal unless it can be proven the applicant has had the intention while filing the application.

Some exemplary factors that have been taken into account in the past for finding “bad faith” are:

  • A prior commercial relationship between the parties, such as a prior licensee or trademark attorney noting the lack of registration in Turkey and filing in their own name,
  • Explicit proof of the intent of the applicant to prevent fair trade, prevent access of the trademark owner to the Turkish market, extort or otherwise manipulate the actions of the prior right owner,
  • Copying a trademark that the applicant knew or should have known belonged to another,
  • Filing an application for the exact copy of a well-known trademark that has not been registered in Turkey for the same goods and services,

It must be noted that among the examples listed above, bad faith is interpreted by the IP Courts and the TPTO considering the specifics of each case. Colleagues and Clients making bad faith a main claim in their actions should make sure that the conditions accepted in the recent rulings of both the Supreme Court and the TPTO are taken into consideration.

Another point of note is that as per Article 25 of the IPC, a party requesting invalidation of a trademark over five years after they first knew or should have known of the use of said later-dated mark cannot request invalidation of the mark unless said trademark registration was in bad faith. Therefore, loss of rights through remaining silent (acquiescence) has the notable exception that bad faith registrations can be invalidated regardless of timing.

  1. Unfair competition (as per the TCC and Paris Convention)

Unfair competition occupies an unclear place in Turkish IP Law where the provisions and case law around unfair competition are largely outside the scope of IP Law. There are many ways in which acts that are considered unfair competition can also constitute grounds for trademark refusal, invalidation or determination of infringement. The outlines for what will constitute unfair competition are regulated in the Turkish Commercial Code (“TCC”) as well as Article 10 bis of the Paris Convention.

Article 55 of the TCC mentions numerous acts which constitute unfair competition and states that unfair competition includes but is not limited to acts outside good faith, unfairly denigrating, enabling confusion with, making use of the well-known status of, inviting undue comparison with, performing misleading actions regarding the works, goods, activities or commercial workings of another.

This regulation of TCC is in line with the acts mentioned in Article 10 bis of the Paris Convention which include but are not limited to:

  • all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
  • false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
  • indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.

Unfair competition is dependent on a case-by-case examination, however, as a general rule it can be said that commercial practices copying the trademark of another leading to likelihood of confusion are more likely to be considered unfair competition.

While many conditions that constitute unfair competition can also fall within the scope of IPC provisions (such as “unfair benefit” as mentioned in Article 6/5 regarding well-known trademark protection and “bad faith” as mentioned in Article 6/9), unfair competition claims most frequently arise in cases where the circumstances of the dispute fall outside the protection scope of IP Law and must therefore be subject to the more generalized provisions of the TCC. Unfair competition arguments have previously been recognized within the parameters of bad faith as per Article 6/9 in terms of oppositions or invalidation actions.

Indeed, despite numerous past Supreme Court rulings that had accepted claims of unfair competition and trademark infringement simultaneously; the Supreme Court has stated in a recent ruling that in cases where it is appropriate, the IPC (as lex specialis) should serve as the source of protection and that it is not necessary to provide additional protection based on the TCC (as part of the so-called legi generali) on top of the more specialized IPC protection. To avoid a partial rejection decision as a result of this recent development, it is advisable to confirm with a local counsel which cases should include unfair competition claims.

Potential Actions Against Third Parties for Unregistered Trademarks Owners in Turkey

Opposition and Appeal Before the TPTO

The legal grounds mentioned above, except unfair competition, are explicitly stated as being grounds for the refusal of a trademark application upon the opposition. For potential Clients or colleagues who may not have prior experience in Turkish jurisdiction, it should be noted that all trademark applications in Turkey are filed before the TPTO. The TPTO then evaluates the application in terms of the filing requirements and, assuming said requirements are present, conducts an assessment of absolute refusal grounds, which includes being the same or indistinguishably similar to a prior registered trademark in terms of the same or similar goods and services.

Assuming there is no such issue found, the application is then published in the next Official Trademark Bulletin for the possible oppositions of third parties. Third parties then have a period of two months, starting from the publication date of the Bulletin, to file an opposition against trademark applications they believe infringes their rights. While a majority portion of the oppositions filed before the TPTO relates to claims of likelihood of confusion with a prior registered mark as per Article 6/1 of the IPC, Clients and colleagues who wish to take action based on unregistered trademarks should follow the same deadline and base their oppositions in line with our explanations above.

It should be noted that an opposition can be filed by a Turkish trademark attorney registered before the TPTO or by the right holder themselves if they are Turkish. Hence, it is important for foreign right holders to take action ahead of the deadline to ensure proper representation can be found and the attorney has enough time to draft and file the opposition.

Filing of an opposition is done online and is subject to an official fee. The Trademark Department of the TPTO will then evaluate the opposition and notify the attorney of the outcome of the opposition. Whether the opposition is accepted (and the application is refused wholly or partially) or not; the party that is unsatisfied with the decision has the right to file an appeal before the Re-examination and Evaluation Board of the TPTO (“Board”) within two months after the notification of the TPTO’s decision. The subsequent decision of the Board regarding the appeal is final and will be reflected immediately in the online records of the TPTO.

If one of the parties remains unsatisfied with the decision of the Board, they can file a cancellation action of the Board decision before the IP courts in Ankara. The courts will then examine the same grounds, often more detailed, and obtain one or multiple expert reports to decide on the matter.

Invalidation Action Before Turkish IP Courts

Article 25 of the IPC states that “If one of the conditions mentioned under Articles 5 or 6 exist, invalidation of a trademark shall be decided by the court.” Keeping in mind the fact that the above-mentioned grounds relate to Article 6 of the IPC, this can be understood to mean that essentially all grounds for opposition can also be used as grounds for invalidation before IP courts.

Invalidation actions can be filed by those with a vested interest and solely to the registered trademark before the TPTO. That being the case, the lawsuit must be filed against the owner of the trademark as seen in the registry and the content of the lawsuit must be focused on the registered right rather than the usage thereof. Usage of the trademark can often be relevant in invalidation actions in terms of bad faith claims.

As mentioned above, potential Clients and colleagues must take caution to abide by the 5-year period to avoid claims and defenses relating to acquiescence. As per Article 25/6 of the IPC;

“Where a trademark proprietor has acquiesced in the use of a later trademark for a period of five successive years while being aware or should have been aware of this situation, trademark proprietor may not allege his trademark as an invalidation ground unless the registration of the later trademark is in bad faith.”

With the assumptions in IP Law that all trademark right owners are traders and all traders must be sufficiently prudent and diligent in their trade; unregistered trademark owners are likely to face the claim that they should have known about the commercial activities of competitors and this situation makes invalidation claims time sensitive if bad faith is not involved. Therefore, bad faith claims and examinations become doubly important since most parties acting in bad faith take some measures to avoid being discovered by the Clients and colleagues.

Since the claims are based on the IPC, the dispute will be seen before the specialized IP courts if one is present at the jurisdiction of filing. As the specialized knowledge of IP courts is highly relevant in cases with considerable complexity, such as those involving unregistered trademark protection, specialized IP courts will be a beneficial factor for the claimant if one is available in the jurisdiction.

If invalidation claims are accepted by the Court and the decision is finalized, the trademark in question will be considered to have no legal bearing starting from the date of filing in terms of the invalidated goods and services. The change will also be reflected in the TPTO records upon finalization.

Unfair Competition Action Before Turkish Commercial Courts

In terms of trademark infringing acts, registered trademarks were traditionally considered to benefit from the protection of both the IPC and the TCC while unregistered trademarks can only be protected under the broader and more general scope of unfair competition as per the TCC. This view has recently been partially reversed by the Supreme Court, in contradiction with past case law and the Court has stated that the specialized legislation (namely the IPC) should be solely applied if the IPC is applicable without including unfair competition claims. Although the stance of the Supreme Court on this matter appears clear that the same acts should not be protected both by the relevant provisions of the IPC and unfair competition provisions of the TCC, this issue should be treated with caution until more Supreme Court decisions provide clarity on the Court's current position.

Unregistered trademark owners cannot benefit from the protection provided by Article 29 of the IPC which defines what constitutes trademark infringement since the same refers to Article 7 of the IPC (requiring registration to benefit from the protection of the provision). That being the case, colleagues and potential Clients who wish to take legal actions against commercial activities of another that infringe on their unregistered trademarks are advised to receive consultancy regarding unfair competition protection.

The grounds and interpretation of unfair competition will have the general basis mentioned above and must be construed in light of the TCC and Article 10bis of the Paris Convention as well as relevant case law. The scope of the lawsuit itself can differ from case to case, however, the most common claims are for determination, prevention, and revocation of unfair competition along with material and immaterial damages associated with it.

Since these claims are based on the TCC, the lawsuit will be seen before Turkish Commercial Courts which are often responsible for a very wide range of disputes. That being the case, especially in small jurisdictions that have fewer cases, there is a chance that the court will be less familiar with the relevant case law and legislation than a specialized IP court. Colleagues and potential Clients should therefore take care to be detailed and well-supported in their claims and defenses in a potential action.

ATG LAW FIRM

Authors:

Gizem AKGULOGLU

Ahmet AKGULOGLU

News & Developments
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Intellectual Property

Understanding the Registration Obligation under Turkish Data Protection Law

I. Scope of the registration obligation under Turkish legislation Data controllers processing personal data in the Turkish jurisdiction (including processing activities that are conducted abroad, but have an effect in Turkey) are required to enroll to the Data Controllers' Registry ("Registry"). This requirement is regulated under Article 16/2 of the Data Protection Law ("DP Law"), which expressly states that "real persons or legal entities processing personal data are obliged to enroll to the Data Controllers' Registry." Although the letter of the law seems applicable to all data controllers, the Data Protection Board ("Board") has introduced certain exemptions to this obligation, which will be explained in detail below. According to the DP Law, a data controller will need to register prior to commencing its data processing activities. However, the Board has provided certain grace periods for the registration requirement in a recent decision (No. 2018/88), and it has established the applicable deadlines for the registration of data controllers who are already in possession of and processing personal data. Data controllers are obliged to provide certain information, such as (i) identity, (ii) address, and (iii) purpose of the data processing activity, during the registration process. Once a data controller is enrolled to the Registry, any changes to the registered information will need to be notified to the Registry as well. Data controllers will register to the Registry through an online information system known as "VERBIS." The information requested from the data controllers will vary depending on which of the following three categories a data controller belongs to: (i) real person or legal entity resident in Turkey, (ii) real person or legal entity resident abroad, and (iii) public institutions. If data controllers fail to comply with the registration obligation, the Board may impose an administrative fine. II. Turkey's registration obligation compared to EU Directive 95/46/EC and the GDPR The DP Law is mainly based on the EU Directive 95/46/EC ("Directive"), with certain relatively minor differences. Thus, the registration obligation is quite similar to the requirements of the Directive. Similar to the DP Law, the Directive stipulates that the data controller (or a representative) must notify the supervisory authority before commencing or carrying out a data processing activity. The Directive further indicates that the notification must specify certain information, such as the name and address of the data controller and of its representative, if any; the purpose or purposes of the processing; and a description of the category or categories of the data subject, as well as a description of the data or categories of data relating to them, among others. The Directive requires the EU member states to take the necessary measures to ensure that data processing activities are publicized. On the other hand, the EU General Data Protection Regulation ("GDPR") differs significantly from the European Council's approach in the Directive. When the GDPR came into force on May 25, 2018, the regulation regarding the requirement to provide notification to the supervisory authority has changed. Data controllers are no longer obliged to register their personal data processing activities to a registry system. Rather, the GDPR adopts a self-regulating approach, and depends on the accountability of the data controllers. Accordingly, the GDPR requires that data controllers shall maintain the relevant records internally under their own care and responsibility, and make them available to the supervisory authorities upon request. III. Exemptions Pursuant to Article 16/2 of the DP Law, the Board is entitled to provide and specify certain exemptions to the registration obligation. According to the Board's decision No. 2018/32, the following data controllers are exempt from the obligation to register: (i) real persons and legal entities that process personal data by non-automatic means, on the condition that such data are part of a data-filing system, (ii) notaries operating under the Notary Law No. 1512, (iii) associations founded under the Law No. 5253 on Associations, foundations established per the Law No. 5737 on Foundations, and trade unions established under the Law No. 6356 on Trade Unions and Collective Bargaining Agreements, who only process the personal data of their own employees, enrollees, members and donors, in accordance with the applicable legislation and its purposes and within the scope of their field of activity, (iv) political parties founded in accordance with the Law No. 2820 on Political Parties, (v) attorneys who are working under the Attorneyship Law No. 1136, and (vi) certified public accountants and sworn-in public accountants operating under the Law No. 3568 on Public Accountancy and Auditing. The Board published another noteworthy decision recently (No. 2018/87), which is applicable to all data controllers, wherein it announced that data controllers who have fewer than fifty (50) yearly employees and whose annual financial balance sum does not exceed the amount of twenty-five million Turkish Liras (TL 25,000,000) will be exempt from the registration obligation, as long as their main business activity does not concern processing special categories of personal data (such as personal data relating to race, ethnic origin, political opinion, philosophical belief, religion, sect or other belief, clothing, membership in associations, foundations or trade-unions, health, sexual life, convictions and security measures, as well as biometric and genetic data). IV. Registration procedure The procedures and principles with regards to the registration obligation have been regulated and stipulated under the Regulation on the Data Controllers' Registry ("Regulation"). According to the Regulation, all transactions regarding the registry should be conducted by the data controllers through an information system called "VERBIS." VERBIS went live and became operational on October 1, 2018. The Personal Data Protection Authority ("DPA") published a privacy information notice, and according to this notice, the information provided by data controllers during their registration to VERBIS (e.g., names, tax numbers, representative's personal data, etc.) will only be used by the DPA in relation to the registration obligation. Furthermore, data subjects may apply to the DPA, which will be acting as the data controller in terms of such information, regarding the use of their data. In order to access VERBIS, data controllers will be required to first sign up to the system by filling out a form. The information that will be requested from the data controllers during the registration process are as follows: 1. For data controllers residing in Turkey: (i) Identity number (for real persons) or tax identity number and registered tax office information (for real person or legal entity data controllers), (ii) Corporate electronic mail addresses, as the Regulation states that that all notifications and communications regarding VERBIS will be conducted by using this e-mail address, (iii) Landline phone numbers or mobile phone numbers, (iv) Address number of the data controller (the 10-digit address number may be obtained through the online system at https://adres.nvi.gov.tr/VatandasIslemleri/AdresSorgu), and (v) "Registered electronic mail (KEP) address" for data controllers who have a registered electronic mail address (however, this is not mandatory for data controllers who do not possess a registered electronic mail address). 2. For data controllers residing outside of Turkey: (i) Title, electronic mail address, telephone number, address information, country of residence, date of the decision appointing the data controller's representative ("Representative") and, if available, the number of this decision. If the appointed Representative is a Turkish citizen, his/her identity number ("TCKN"); if the Representative is a legal entity established in Turkey, its tax identity number along with its registered tax office, (ii) Corporate electronic mail address, (iii) Representative's address, and (iv) Representative's registered electronic mail (KEP) address for data controllers who have a registered mail address (however, this is not obligatory if the Representative does not have a registered electronic mail address). Data controllers may access the VERBIS system and assign a Representative for themselves once the sign-up process is completed. Thus, the Representative may also access VERBIS by using Turkey's digital platform for its citizens (known as "e-devlet" and available at https://www.turkiye.gov.tr/), and the Representative will be asked to provide information regarding the data controller's personal data processing activities and may hereafter complete the data controller's registration process. V. Registration Timetable The Board has recently issued a decision (No. 2018/88), which sets forth certain grace periods for data controllers to enroll to the Registry. Data controllers are required to comply with their registration obligations according to the following schedule, depending on their categorization: (i) Between October 1, 2018, and September 30, 2019, for data controllers whose number of yearly employees exceeds fifty (50) or whose annual financial balance sum exceeds twenty-five million Turkish Liras (TL 25,000,000), (ii) Between October 1, 2018, and September 30, 2019, for data controllers who are resident or established abroad, (iii) Between January 1, 2019, and March 31, 2020, for data controllers whose number of yearly employees is less than fifty (50) and whose annual financial balance sum does not exceed twenty-five million Turkish Liras (TL 25,000,000), but whose main business activity concerns the processing of special categories of personal data (as listed above), (iv) Between April 1, 2019, and June 30, 2020, for data controllers who are public entities or public institutions. Since the Registry has only recently become operational, and since we are still within the grace period(s) as of the date of this article, we may expect certain practical issues and problems to arise during the registration process that might require addressing. At this stage, data controllers should make use of the aforementioned grace periods to finalize their internal preparations (such as the identification and classification of their data processing activities) before enrolling to the Registry, in order to ensure compliance with the registration obligation in due time. Authors: Gönenç Gürkaynak, Esq., İlay Yılmaz and Burak Yeşilaltay of ELIG Gürkaynak Attorneys-at-Law (First published by Mondaq on November 7, 2018)
ELIG Gürkaynak Attorneys-at-Law - October 28 2019
Intellectual Property

Evaluation of the European Commission’s Conclusions in the 2018 Report on IP Law in Turkey

I. Introduction The European Commission ("Commission") has released a report on April 17, 2018, which contained important findings of fact and assessments regarding Turkey's political situation, economic development, regional issues and international obligations. This document summarizes and evaluates the conclusions put forth by the Commission in its report ("Report") with respect to intellectual property law in Turkey and its suggestions for the coming years.  II. Current Status of Intellectual Property Law in Turkey Chapter 7 of the Report examines the state of intellectual property law in Turkey and declares that "Turkey has a good level of preparation in the area."[1] The Commission has chosen to use the word "good" in order to emphasize that while the current level of preparation is adequate, there is still room for improvement. The Report also underlines the fact that good progress has been made on legal alignment with the European Union acquis. In order to evaluate the progress that has been made by Turkey in this particular area, it would be useful to compare this Report with the previous report of the Commission. The previous report, which was released in 2016, stated that "there was some progress in improving administrative capacity and coordination but enforcement remained problematic."[2] The previous report also proposed that Turkey should adopt pending industrial property and copyright legislation in line with the EU acquis. On the other hand, the Report of 2018 states that the adoption and entry into force of the new Industrial Property Law is a significant part of the "good progress" that the Report has identified. This is one of the most valuable and noteworthy developments regarding intellectual property law in Turkey, as the Commission has also underlined in its Report. The Report offers further details on this issue and indicates that this new law enables and provides enhanced legal alignment between Turkish IP law and the EU intellectual property rights acquis in relation to trademarks and designs. Furthermore, it updates the Turkish intellectual property rights system in line with international agreements and practices. Unlike the previous report, the Report of 2018 also notes that simplified registration procedures have been introduced by the new law. However, the Report also highlights the (disappointing) fact that the new law lacks specific provisions for biotechnological inventions. The Report also mentions that an Intellectual Property Rights Academy was set up in July 2017, which will be responsible for all intellectual property rights training for civil servants in Turkey. Thus, the Regulation on the Code of Conduct and Disciplinary Measures for Trademark and Patent Agents, which entered into force in May 2017, addresses a legal gap with regard to the liability of trademark and patent agents registered with the Turkish Patent and Trademark Office. Finally, the Report observes that the Turkish Patent and Trademark Office has strengthened its consultation on trademark registration services with owners of intellectual property rights and their representatives. III. Recommended Steps to Be Taken The Report suggests that three (3) steps should be taken by Turkish lawmakers and public authorities in the upcoming years with respect to the protection of intellectual property rights. The Commission recommends that Turkey should take the following concrete steps: (i) Adopt pending copyright legislation in line with the acquis: The previous report of 2016 also recommended that Turkey should take three (3) steps in the coming years for the legal protection of intellectual property rights. The first one was the adoption of the pending industrial property and copyright legislations in line with the European Union acquis. The first half of this step was fulfilled with the passage of the new Industrial Property Law. However, the Report of 2018 now states that Turkey should adopt, in particular, pending copyright legislation in line with the acquis, which is the Draft Law Amending the Law No. 5846 on Intellectual and Artistic Works ("Draft Law"). The Draft Law proposes numerous amendments to the current text of the Law No. 5846 on Intellectual and Artistic Works, which include revisions to the provisions concerning online piracy, collecting societies, databases and exceptional uses, such as temporary reproductions, reproduction through photocopying and other similar means, freedoms for purposes of use by disabled persons, and temporary reproductions by radio or television enterprises. The Report specifically highlights this issue by stating that, "Collective rights management remains an outstanding issue that the new copyright law should address, particularly in relation to foreign producers, public performance rights and reproduction rights." The Draft Law actually focuses on the issue of reproduction rights; however, it does not specifically address treatment of foreign producers and public performance rights. For this reason, in order to be brought in line with the recommendations of the Commission, the Draft Law (or other regulations) should include and incorporate these rights as well. Another recommended step in the previous (2016) report was to improve enforcement measures in fighting against piracy and counterfeiting. When the Draft Law enters into legal force, the Intellectual Property laws in Turkey will finally address the issue of piracy. (ii) Improve enforcement measures to combat infringements of industrial and intellectual property rights: While the new Industrial Property Law aims to deliver a higher level of legal alignment with the EU Enforcement Directive, that is still not deemed adequate by the Report. Since the number of intellectual property right infringements and the level of counterfeiting and piracy activities are still quite high in Turkey, the Report suggests that the implementation of the accelerated destruction procedure and the efficient functioning of the criminal justice system in dealing with intellectual property rights need to be improved. (iii) Sustain a constructive dialogue with intellectual property right (IPR) owners, increase awareness regarding counterfeiting and piracy and focus on the benefits of a strong IPR protection system for economic growth: The Report explicitly states that, "Turkey should in particular, sustain a constructive dialogue with intellectual property right (IPR) owners, increase awareness regarding counterfeiting and piracy and focus on the benefits of a strong IPR protection system for economic growth." This suggestion, once again, highlights the need for specific legal provisions regarding IPRowners, as well as addressing issues of counterfeiting and piracy, and it also raises an important point regarding the application of the laws. In fact, this is the reason why Turkey may not be able to follow and abide by this recommendation in the coming years, since both the application and the enforcement of the relevant laws might take some time and are likely to happen only gradually. IV. Conclusion The Report clearly indicates that the state of Intellectual Property Law in Turkey has been improved since the release of the previous report, which was accomplished primarily through the adoption of the new Industrial Property Law. However, there are still a number of issues and challenges that need to be addressed with respect to IP law in Turkey, which are highlighted in the Report, especially in practice. In other words, while significant positive steps have been taken with respect to IP legislation in Turkey, the application and enforcement of the IP rights enshrined in such legislation still leaves much room for improvement. [1] /developments/wp-content/uploads/sites/19/2018/08/20180417-turkey-report.pdf [2] /developments/wp-content/uploads/sites/19/2018/08/20161109_report_turkey.pdf Authors: Gönenç Gürkaynak, Esq., İlay Yılmaz and Burak Yeşilaltay of ELIG Gürkaynak Attorneys-at-Law First published by Mondaq on August 8, 2018
ELIG Gürkaynak Attorneys-at-Law - December 16 2019
Intellectual Property

Significance of Proof of Use in Trademark Oppositions under Turkish Law

I. Legal Framework and the Purpose of the Proof of Trademark Use The Industrial Property Law with Number 6769 ("IP Law") has been published in the Official Gazette of January 10, 2017, introducing several changes to the Turkish trademarks law. Proof of use of a trademark is one of these changes brought by the IP Law. According to Article 19/2, the applicant is entitled to request opposing party to submit evidence proving that he/she had genuinely used his/her trademark on the goods and services relating to the opposition during the five-years period before the date of application or the date of priority of the latter application or he has a proper reason for not using his trademark during that period. This provision is only valid for the oppositions based on likelihood of confusion which is set forth under Article 6 of the same law. Besides, Article 19/2 will be valid on the condition that the trademark, which is the ground for opposition, has been registered for at least five years at the date of application or date of priority of the application for which the opposition is filed. If the opposing party fails to prove the aforesaid, opposition shall be refused. If it is proven that the trademark, which is the ground for opposition, has been used only for some of the goods or services which are covered by registration, then the opposition shall be examined by taking into account the goods or services whose use is proven. As stated above, proof of use is only valid for the oppositions set forth under the first paragraph of Article 6 of the IP Law which reads as follows: "If the applied mark is identical or similar with a registered or previously applied mark and if it covers the same or similar goods and services with the registered or the applied mark, if the registered or the applied mark has the possibility of being confused by the public and if this possibility for confusion also involves a possibility that it is associated with a registered or applied mark, then the trademark application should be rejected upon opposition". In other words, proof of use will not be valid for the well-known trademarks which are set out under Paris Convention, for the trademark which consists of a person's name, trade name, photography, copyright or any other intellectual property right of another and for the trademark which can be harmed due to its reputation in Turkey. The provision regarding proof of use aims to prevent new entrepreneurs come across with an unreal entry barrier to the market and the registered trademarks to be used effectively in the market. Besides, the European Union Trademark Directive and European Union Trademark Code include similar provisions as "Non-use as defense in opposition proceedings". Therefore, one could say that this provision is brought for aligning with the European Union Regulations.   II. Turkish Patent and Trademark Office's Guideline on Proof of Use The Turkish Patent and Trademark Office has published a Guideline for Proof of Use ("Guideline") which consists of clarifications for the purpose of guiding both the applicants who can claim proof of use and the opposing parties who can present evidence of use. The Guideline evaluates potential documents and information to be submitted as evidence and categorizes them. It also provides details on the necessary content and form of the documents. The Guideline explains the conditions for the proof of trademark use. These conditions are as follows: - This provision under the IP Law is effective for the applications made after January 10, 2017. On the other hand, for the applications made before January 10, 2017, Decree Law on Trademark Protection with number 556 will be valid. - As stated above, proof of use is valid only for the oppositions set forth under the first paragraph of Article 6 and a trademark should be registered at least for five years as of the date of application or priority in order to be subject to proof of use claim. - The applicant can use the proof of use argument during the opposition period. If the applicant did not request for a proof of trademark use during the opposition period, this request cannot be made during the opposition which will be reviewed by Reexamination and Evaluation Board. - The opposing party should submit evidences which demonstrate that he/she has been using the trademark seriously in Turkey, 5 years prior to the date of application or priority upon the request of applicant. If the opposing party does not submit evidences upon request of the applicant, his/her opposition will be rejected, unless there are other reasons for opposition. - Except for the ones requested by Turkish Patent and Trademark Office, evidences cannot be submitted after the periods regulated under the Regulation on the Implementation of IP Law, and if the applicant submits the evidences after these periods, Turkish Patent and Trademark Office should not accept it. - If it is proved that the trademark subject to the opposition has been used only for some of the goods or services, the opposition will be reviewed only for the goods and services which are proved to be used.   III. Evidences that Demonstrate Trademark Use in Turkey The applicant shall request proof of use within one month as of being notified of the opposition by specifying the goods or services that the use is requested to be proved. The Guideline also includes the form (M116 Counter View Form) which the applicant should be fill for requesting proof of trademark use. If this form cannot be used, the applicant should request proof of use in a clear way, and in accordance with the conditions set forth under the Guideline. According to the Guideline, the evidences should be clear, comprehensible and reliable enough. The evidences submitted by the opposing party should indicate enough information regarding the quality, place, time and scope of trademark use. The opposing party should submit the evidences by enumerating and listing them, and he/she should write the registration number of the relevant trademark on every document, which preferably does not exceed one hundred pages. The opposing party should also indicate the total number of pages and submit the evidences which cannot be submitted in a written format via magnetic or optic transporters. The information and documents should not be stapled. The evidences can include every kind of supportive documents (e.g. package, label, price list, catalog, invoice, photograph, etc.). If such documents exist, the opposing party should highlight the parts where demonstrate the use of the trademark subject to the opposition in order to show the use clearly. According to the Guideline, invoice is a very strong evidence for proving the use of trademark, as it directly refers the commercial activity and as it includes date, the goods and services and the prices of such goods and services. The Guideline also states that catalogs, price lists and product codes are supportive documents for the invoices even though they do not prove exactly that the trademark is subject to commercial activities. The images of products and packages and the signboards which demonstrate where the goods and services are sold are also some of the significant evidences. Advertisements, promotions, marketing researches are also considered as important evidences according to the Guideline. Authors: Gönenç Gürkaynak, Esq., İlay Yılmaz and Noyan Utkan, ELIG Attorneys-at-Law (First published by Mondaq on February 6, 2018)
ELIG Gürkaynak Attorneys-at-Law - October 28 2019
Intellectual Property

A Holistic Approach to the Proposed Changes to the IP Law

I. Introduction The Law No. 5846 on Intellectual and Artistic Works ("IP Law") is the main legislation in Turkey that is applicable to copyright related matters. In early May, Ministry of Culture and Tourism's General Directorate of Copyrights shared on their website a Draft Law Amending the Law No. 5846 on Intellectual and Artistic Works ("Draft Law") and announced that the proposed amendments are open for public opinion. The Draft Law proposes many amendments to the current text of IP Law which include revisions to certain articles, re-definition of terms and concepts along with fundamental changes to injunctive reliefs, prevention of online infringements and functions of collecting societies. As of June 2, 2017, deadline for submission of opinions has passed and the opinions are currently under the Ministry's evaluation which will review and revise the Draft Law accordingly, if needed. IP Law was enacted in 1951 and since then amended for thirteen times[1]. Ten of these amendments were made in the last sixteen years, as of 2001 and five were in the last five years, as of 2012. The increased frequency of the amendments alone proves that IP Law started to regularly fail certain demands of contemporary issues caused by ever changing and developing information technologies and technical means such as ease of digital reproduction and transmission, expanding scope of products that are de facto considered and treated as works though they do not always fall within the scope of IP Law's definitions and problems encountered during prevention of infringements including allocation of liability and effectiveness of prevention measures. In general, these amendments aimed to provide necessary revisions and, where these revisions failed, additional measures to protect copyrighted materials against illegal use. For example, collecting societies have been included in the law as institutional bodies with the hope that they can enable collective and thus more effective fight against illegal use of works. Another example is the Additional Article 4 which authorized public prosecutors to access ban pirated contents that are broadcasted on the Internet medium. However, eventually these amendments might be deemed to have failed to reach their intended purposes and to provide the required protection. IP Law regulates establishment of collecting societies. That said, Turkey has lacked collection societies that are comprehensive with respect to its area of interest and thereby able to act on behalf of and effectively protect the works of the copyright holders in that sector. According to General Directorate of Copyright's statistics, Turkey has ten (10) collecting societies related to movie sector, six (6) in the music sector, eight (8) in science and literature sector[2]. Despite the high number of collecting societies in these fields, copyright holders tend to enforce their copyrights on their own rather than enforcing them through collecting societies, which might be due to lack of authority and powers that collecting societies have in terms of acting on behalf and for the benefit of their members. The other example, Additional Article 4 of IP Law, allows rendering access ban decisions upon a right holder's request on contents illegally broadcasted on the Internet medium. However, the article fails to clearly define and specify responsibilities of Internet actors. Although the article seems to provide certain protection based on an interpretation of its wording at first glance, in practice the application of the article becomes problematic, as there is already a specific law regulating the broadcasts in the Internet medium which has no correlation with the relevant provisions of the IP Law. For instance, the IP Law requires "service" providers to provide a list of "information content providers" to the Ministry. The Law No. 5651 on Regulation of Broadcasts via Internet and Prevention of Crimes Committed Through Such Broadcasts ("Law No. 5651"), on the other hand, defines Internet actors as "access providers", "hosting providers" and "content providers". In light of that, if "service providers" are interpreted as "access providers" and "information content providers" are interpreted as "content providers", then the access providers are required to provide a list of all content providers on the Internet, which might be billions of people, to the Ministry. Clearly, the access providers cannot be expected to comply with such a request as it is nearly impossible to maintain a list as such. In addition to the foregoing, the IP Law fails to provide adequate protection with respect to audiovisual contents. Article 5 of the current IP Law defines cinematographic works and does not include any reference to audiovisual contents, and remains as it was drafted back in 1951. In order to protect audiovisual contents other than cinematographic works such as television programs which may qualify as a work, the Draft Law could have defined audiovisual works in a way that is parallel to the European Union Directive 2010/13/EU which specifically regulates audiovisual media services to encompass present and future format of audiovisual contents in addition to films. The use of the term audiovisual content would also help create harmony with global developments on the issue since regulations in U.S.A. and European Union along with other countries around the world adopt or are in the process of adopting use of the term audiovisual. In light of the foregoing, the Draft Law is expected to provide clearer regulations and more effective measures on these issues along with other amendments that might update the current scope of the IP Law which either excludes from its scope certain contents that are considered works throughout the world in other countries or allows their inclusion only through wide interpretations of its provisions.   Based on the foregoing remarks, the following discusses the most significant issues that the Draft Law offers to the copyright realm. II. Online Piracy Draft Law regulates prevention of infringements through the Internet medium with an independent article and proposed addition of Article 77/B to the IP Law. First paragraph of the relevant article states that those, whose rights, which are protected within the scope of IP Law, are violated, may apply to the "content provider or hosting provider" by way of communication means provided on their "Internet pages" and request removal of relevant contents. Although this provision apparently aims to provide a regulation compatible with the Law No. 5651 by referring the terms defined therein, the provision does not take into account differences as to liabilities of Internet actors. The article does not make any distinctions between the content providers and hosting providers whose responsibilities, as determined in the Law No. 5651, are fundamentally different. According to the Law No. 5651, hosting providers are not required check whether the hosted content is lawful or not, whereas content providers are responsible for any kind of content they present to the Internet medium. Current wording of the proposed provision might result in a situation where right holders prefer to address hosting providers, who are more likely to be reached easily, without even trying to reach content providers, who are in fact the party responsible for the relevant infringement. This might not be an effective measure to fight against piracy as the pirating parties in question, the content providers would not come into equation during the process and thus might not face the consequences of their actions. Furthermore, Article 77/B proposed by the Draft Law requires the relevant content provider or the hosting provider to comply with the removal request within "twenty four hours". This period is quite short to take action particularly for hosting providers who engage in huge amounts of content available on their websites. Additionally, determination of a certain time period, especially a short one, regarding these obligations within in the law might create practical difficulties and unintended consequences for the involved parties. For example, hosting providers that host large amounts of contents and that try to comply with these requests taking into consideration fundamental rights and freedoms of Internet users might be forced to take action on certain contents without conducting a proper analysis of the contents subject to the relevant requests. As a result of this practice, contents that are lawfully broadcasted by Internet users could also be subject to removal by the hosting providers in an attempt to avoid potential criminal and monetary sanctions. Indeed, in the United States of America and European Union, the legislation on the issue does not determine a fixed time period for hosting providers to comply with their obligations. Yet, they are obliged to take the required actions "promptly"[3]. This approach might be more in line with the reality of the large amounts of contents that certain hosting providers are required to handle on a daily basis. Accordingly, they are required to take action promptly without a predetermined time limitation as the necessary time can significantly change based on the scope of the relevant request. According to eight paragraph of the proposed Article 77/B, if someone continues a violation after two warnings sent by the Ministry or an institution authorized by the Ministry informing him/her that his/her dissemination constitutes a violation and the consequences of such actions; then public prosecutor shall decide to decelerate the connection speed of the Internet service provided to that person. This provision brings a legitimacy, a legal ground for "throttling" which has been discussed in the recent years as a method of restriction of illegal contents in Turkey. The number of warnings to be sent to user before the user's connection speed is decelerated is proposed as two (2). However, taking into account the digital literacy and experience of an average user, it is easy and probable for users to accidentally view, stream and/or download illegal content on the Internet and thereby unintentionally take part in an infringement. Moreover, users with malicious intentions might employ many tools, technics and other means and use copyrighted materials unlawfully in order to direct such inexperienced users to contents on their websites for purposes of gaining illegitimate benefits. Therefore, two warnings that will be given to the user before decelerating their connection speed might not be enough to protect the users against accidental and unwanted use. The application of the provision as is might lead to restrictions on citizen's freedom of communication where their actions may, in fact, be due to uninformed and/or bad judgment on their side regarding a content and/or hosting provider. In that line of thought, countries around the world adopt at least a three strike system in general and there are countries that prefer a warning count even higher than that. For instance, the U.S.A. adopted a six warning requirement before implementing measures against a user. Tenth paragraph of the proposed Article 77/B regulates establishment of centers to prevent violations of rights within the scope of the article. We understand that the purpose of these centers is to enable implementation of swift action on infringing contents where irreparable damages may be incurred by the right holder, if such action is not taken. That said, granting the authority to implement the sanctions determined in this article to an administrative authority might lead to disproportionate interference with fundamental rights and freedoms, unless there is an effective supervision of the courts as to activities of these centers. Additionally, wide interpretation of the provision might lead to instances in its application where an administrative agent is granted through administrative and/or technical structures or systems the authority to decide and act as if she/he is a judge. The article does not precisely define the authority of these centers to prevent applications. In line with that, there might have been an explicit reference to fundamental rights and freedoms of Internet users to emphasize the necessity of establishing a balance between these rights and freedoms; and the rights of the copyright holders and to prevent administrative agents from intervening with the foregoing rights and freedoms. On a separate note, these centers may also not be as effective as it is contemplated. Considering the amount of content currently available on the Internet and the geometric increase thereof, it would require a great amount of resources to establish new centers from ground and to maintain these centers for the purposes of handling copyright infringements on the Internet medium. Moreover, administrative actions of these centers are highly likely to be disputed before courts which might lead to ineffectiveness of these centers. In light of the foregoing, these "centers" may not yield the results expected from them. III. Collecting Societies IP Law currently includes provisions pertaining to collecting societies. However, the amendments proposed in the Draft Law include many revisions and additions to the current legal framework of these societies. Some of these changes that might be of importance to and have an impact on the current practice have been mentioned below briefly. According to proposed version of Article 42 of the IP Law, collective management of rights, which include determination of tariffs, preparation of agreements, collection and distribution of revenues, supervision of uses and application to administrative, judicial and criminal procedures shall be conducted by collecting societies. The wording of the article as proposed in the Draft Law is significantly different than the wording of the current IP Law as it clearly states that these activities may only be conducted by collecting societies. In addition, the article also determines that two or more collecting societies may establish a collective licensing association together in order to manage their members' rights more effectively (Proposed Article 42-3). This approach attests the law makers' will to involve collecting societies more in the management and protection of copyrights in the Turkish jurisdiction. Moreover, the Draft Law also increases the number of members that is required to establish a new collecting society in a sector where there is already an existing collecting society from one third to half of the member count of the existing collecting society (Proposed Article 42/A-2). This increase in the necessary member count might also prove useful in preventing establishment of several collecting societies in the same sector which inevitably decreases their effectiveness and promote copyright holders to work together within the roof of existing collecting societies. In addition to the foregoing and more importantly, the proposed Article 42/E states that right to demand a proper price and right to demand a cut from resale cannot be pursued individually. According to the provision, these rights may be pursued by the collecting society, if there is only one in the relevant sector; or by a collective licensing association that shall be authorized by the Ministry if there is more than one collecting society in that sector. Furthermore, certain rights of related right holders may be managed by the collective licensing association even if these related right holders did not provide an authorization to a collecting society. This provision requires copyright holders to become members of collecting societies if they wish to benefit from the foregoing rights provided by the IP Law. This requirement, along with other authorizations provided to collecting societies would inevitably increase the involvement of copyright holders in collecting societies and thus create more active and involved collecting societies that are more effective in their functions. Active, involved and effective collecting societies in specific sectors would ultimately result in better protection of existing copyrighted works and a better environment for creation of more works, since parties involved in copyrighted materials would be more open to invest in new productions, ventures and co-operations without any fear but with trust knowing that there are adequate measures in place protecting their commercial and individual investments. IV. Databases Current version of Additional Article 8 of the IP Law already protects databases. The amendments proposed in the Draft Law provide a more detailed protection for right holders of databases along with certain exceptions to that protection. In the reasoning of this article in the Draft Law, it is indicated that it is proposed based on the EU Directive 96/9/EC on the legal protection of databases. However, this directive has been harshly criticized by the EU Commission in their DG Internal Market and Services Working Paper[4]. The EU Commission indicated that the economic impact of the "sui generis" right on database production was unproven and that the empirical evidence was not enough to suggest that such protection is necessary for a thriving industry (Section 1.4). Furthermore, the European Parliament also stated that the commission's evaluation of the directive on databases considers the directive as an impediment to the development of a European data-driven economy and called on the commission to abolish the directive (Section 4.1)[5]. More recently, EU Commission launched a public consultation on May 24, 2017 to assess the legislation on databases by evaluating its impact on users and identifying possible needs of adjustment, which attested that its existing legislation, which the proposed article is based on, is insufficient to ensure full legal certainty and is not useful[6]. In light of the foregoing, it might be suggested that the protection provided by the article to databases may have negative effects on the growth of national digital economy instead of helping it develop based on the EU experience on the matter. V. Exceptional Uses Current text of the IP Law provides an exception for private use of copyrighted material subject to the conditions set forth in Article 38. The Draft Law proposes four other exceptions in addition to private use which are namely (i) temporary reproduction, (ii) reproduction through photocopy and other similar means, (iii) freedoms for purposes of use by the disabled and (iv) temporary reproductions of radio-television institutions. Furthermore, in addition to uses for education and teaching purposes, the Draft Law proposes (a) lending to public, (b) reproductions and distributions for archiving purposes and (c) incidental reproductions and uses for parody purposes. Although determination of exceptional circumstances and uses might prove useful in clarifying legally allowed uses of copyrighted materials, it might also cause the legislation to become out-of-date more easily due to rapid technological and economic developments and changes that might render the scope of these exceptions too wide or too narrow depending on the relevant case. For instance, the current wording of Article 38/A allows temporary or incidental reproductions that are essential and inseparable part of a technological transaction process aiming rightful use or transfer of works to third parties within a network; and that do not have an independent financial value. The article provides an exception for certain temporary reproductions of no financial value in order to enable use of various technological means that are employed for lawful use of works and contents but which require these temporary reproductions for their functions. That said, considering the recent technological developments in today's world and taking into account future applications that might be applied to works and contents that are protected under IP Law, such temporary reproductions might also be required for purposes other than transfers in network. For example, the scope of the article might be extended to include and provide exception to allow similar temporary reproductions for scientific purposes and researches as well. Moreover, most of these exceptional uses and/or reproductions are allowed on condition that there is no financial value, purpose or benefit attached to such activities. Adopting such a condition might be considered in violation of Turkey's obligations under the Berne Convention for the Protection of Literary and Artistic Works. Article 9/2 of the Berne Convention requires signatory parties to permit reproductions of works in certain special cases, provided that such reproductions do not conflict with normal exploitations of the works and do not unreasonably prejudice the legitimate interests of the authors[7]. Furthermore, this requirement might also affect innovative initiatives from benefitting from the exceptions provided in the article and restrict artistic freedoms and legitimate financial benefits that might be acquired by non-governmental organizations through fair use of copyrighted materials otherwise. The conditions determined in the Berne Convention might alone be sufficient for acceptable uses regarding works. VI. Conclusion The Draft Law provides hope for better collective management of copyrights through collecting societies that might be of help with respect to licensing of works in great quantities which is needed in today's digital word where almost infinite reproductions are possible. That said, considering the lack of reference and thus protection to "audiovisual contents", the article regarding databases, and the lack of an exception for scientific studies and researches within the scope of lawful uses along with the requirement as to not having a financial purpose; one might argue that the Draft Law still fails to take into account recent developments in the world with respect copyright issues. Moreover, the provisions set forth to fight against online piracy seem to disregard the specific law regarding unlawful contents broadcasted on the Internet medium and existing practice thereof as the article does not even differentiate between the responsibilities of Internet actors. Despite the foregoing concerns, the provisions proposed by the Draft Law will still bring a fresh breath to the copyright realm. Authors: Gönenç Gürkaynak LLM. Esq., Burak Yeşilaltay and Türker Doygun, ELIG, Attorneys-at-Law. First published in Mondaq on June 22, 2017. [1] http://www.mevzuat.gov.tr/MevzuatMetin/1.3.5846.pdf [2] http://www.telifhaklari.gov.tr/Turkiye-de-Meslek-Birlikleri [3]Legislations in the USA and EU respectively at https://www.gpo.gov/fdsys/pkg/USCODE-2010-title17/pdf/USCODE-2010-title17-chap5-sec512.pdf and http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32000L0031&from=EN [4] First evaluation of Directive 96/9/EC on the legal protection of databases; available in English at http://ec.europa.eu/internal_market/copyright/docs/databases/evaluation_report_en.pdf [5] European Parliament resolution of 19 January 2016 on Towards a Digital Single Market Act (2015/2147(INI)), available in English at http://www.europarl.europa.eu/sides/getDoc.do?pubRef=-//EP//NONSGML+TA+P8-TA-2016-0009+0+DOC+PDF+V0//EN [6] https://ec.europa.eu/digital-single-market/en/news/commission-launches-public-consultation-database-directive [7] Available in Turkish at http://www.telifhaklari.gov.tr/resources/uploads/2012/03/18/2012_03_18_349175.pdf and in English at http://www.wipo.int/edocs/lexdocs/treaties/en/berne/trt_berne_001en.pdf
ELIG Gürkaynak Attorneys-at-Law - October 28 2019