A Flashback to the IP News & Developments in 2019

HERE IS A FLASHBACK FOR SOME OF THE IP ISSUES & DEVELOPMENTS WITH RESPECT TO TURKEY AND THE IP WORLD IN 2019!

January –  International Search And Examination Requests For Patent Applications Can Be Made At The Same Time in Turkey

In order to accelerate the patent process and to provide better quality services to the applicants in Turkey, the option of making the search and examination report requests together has been made available to the applicants/representatives by the TPTO as of January 2019.

If this option is selected by the applicant/representative,

–           in case the search report is positive, the examination report will automatically be prepared by the TPTO and sent together with the search report.

–           in case the search report is negative, the search report will be sent and the process of preparing the examination report will be started at the end of the three-month period following the notification date of the relevant search report.

February –  In accordance with the amendments to the Common Regulations under the Madrid Agreement and Protocol, applicants are now able to apply to WIPO for the division of their international trademarks through the office of origin.

As from February 1, 2019, amended Rule 27bis provides holders of international registrations with the possibility to request the division of an international registration in respect of a designated Contracting Party.

While it had already been possible to partially transfer an International Registration to a new owner, it is now also possible to request the division of an International Registration for only some of the goods and services in respect of a designated Contracting Party.

Contracting parties such as Turkey, Australia, Madagascar, Colombia, Japan and Slovakia have notified the International Bureau that they will not present said requests for division and/or merger of international registrations as their national IP laws do not comply with divisional applications/registrations.

A request for the division of an international registration must be filed with the Office of the designated Contracting Party in respect of which the international registration is to be divided. The request cannot be filed directly with the International Bureau.

Division may be useful where, for example, the Office of a designated Contracting Party refuses an international registration for only some of the classes of goods or services (or refuses only some of the goods or services within one class) covered by the international registration. The new rule enables the holder to take advantage of division by opting to turn the accepted or refused classes (or goods or services) into a new international registration (the divisional registration) that will be given the same number as the original registration, together with a capital letter. As a result, the acceptable classes (or goods or services) may

proceed to protection without further delay, enabling the holder to deal with the

objectionable classes (or goods or services) at a later stage.

A divided International Registration may be merged back together (only) with the International Registration from which it was divided and the request must be presented by the holder through the Office that presented the request for division.

March – Managing IP released a special-feature for International Women’s Day on March 8.

The most-ready story of the month was rich-contented with the insights from several counsels at international brands and the assesments with respect to the progress of, and challenges for, women in senior IP roles.  https://www.managingip.com/Article/3863249/Managing-Patents-Archive/International-Womens-Day-IP-counsel-reflect-on-gender-challenges-and-progress.html?ArticleId=3863249

April – World Intellectual Property Day – This year’s theme of World Intellectual Property Day was set as intellectual property rights in the sports world by WIPO.

Every April 26, we celebrate World Intellectual Property Day to learn about the role that intellectual property (IP) rights play in encouraging innovation and creativity.

This year, the campaign “Reach for Gold” has raised the awareness with regard to the close relation between intellectual property and the sports world and how innovation, creativity and intellectual rights contributes to the sports and athletes in the World.

May –  Record of All Times – Record Crowd Gathered at 2019 INTA Annual Meeting in Boston, Massachusetts, USA

This year, INTA’s 141st Annual Meeting, which took place May 18–22 in Boston, Massachusetts, USA, drew a record crowd, increasing attendance 4.3 percent from the 2018 Annual Meeting. With more than 11,360 registrants (2,577 of whom were first-timers) hailing from 154 countries, it is the largest Annual Meeting in INTA history. Bringing together brand professionals, business leaders, government officials, and the media, it underscores the critical role of the Annual Meeting as the global trademark community’s premier event of the year.

June – Canada joined Madrid SystemCanadian applicants are now able to file applications in over 80 countries around the world through a single international application.

The international system for trademark registration (Madrid System) makes it possible to request trademark protection in one or more member states of the Madrid System via a single application to WIPO in Geneva, Switzerland.

The Madrid System dates back to the ‘Madrid Agreement’ of 1891 and was expanded by the ‘Madrid Protocol’ in 1996. Since the accession of Algeria to the Protocol in October 2015, all international trademark registrations are exclusively governed by the Madrid Protocol, making the Madrid Agreement essentially a non-operational treaty.

With the inclusion of Canada as the 105th member state, Canadian applicants are now able to file applications in over 80 countries around the world through a single international application. Similarly, applicants from Madrid Protocol countries are able to designate Canada in their international applications as of June 17th and will be able to subsequently designate Canada in existing Madrid registrations.

Other than Canada, two more new members joined the System in 2019: Brazil and Malaysia, making it a truly global solution for brand owners seeking trademark protection abroad.

July – Getting more harmonized with the European Implementations, the TPTO no longer require notarized signature declarations/notarized signature circulars for particular proceedings.

A new amendment with regard to the regulation on the Implementation of the Industrial Law No.6769 has been accepted in Turkey along with many other changes in legal proceedings. Main changes in the articles of the regulation are related with the official documents required by the Turkish Patent and Trademark Office.

With this amendment, the TPTO no longer require notarized signature declarations/notarized signature circulars for below;

• Partial renewal of trademarks and designs

• Partial withdrawal or withdrawal of pending trademarks, designs and patents

• Partial cancellation or cancellation of trademarks

• Withdrawal of oppositions and appeals of trademarks and designs

• Abandonment of rights and responsibilities provided by registration of geographical indications

Covering both legal and natural persons, with this latest amendment, the procedures to be performed at the TPTO is expected to be easier and more straightforward.

August –  The Supreme Court ended the speculation on the non-use revocation actions clearly stating that the relevant provisions of the IP law could be applied retroactively

Non-use revocation actions may be filed without having to wait for the expiry of the five-year period following the publication of the IP Code, namely 10 January 2022.

Turkish Constitutional Court annulled the Article 14 of Decree-Law No 556 regulating the use requirement on 6 January 2017 and after only 4 days, the New IP Code entered into force in Turkey.

The legislators governed the use requirement for trademarks with Article 9 of the IP Code, stating that a registered trademark will be vulnerable to cancellation if not used within five years from the date of its registration.

However, the 4-day legal gap between the annulment of the Article 14 of Decree-Law No 556 and the publication of the IP Code created a confusion on non-use revocation actions in Turkey.

The sparked debate on whether pending revocation actions filed under Article 14 should be dismissed due to a lack of legal basis or whether this four-day legal gap should be interpreted as meaning that the use requirement did not exist before 10 January 2017 and, therefore, non-use revocation actions can be filed only after five years from the publication date of the IP Code could not be solved for some time.

Finally, the Supreme Court ended the speculation with a logical conclusion and recently rendered its first decision on the matter clearly stating that the relevant provisions of the IP law could be applied retroactively and non-use revocation actions may be filed without having to wait for the expiry of the five-year period following the publication of the IP Code, namely 10 January 2022.

September –  The TPTO published the Updated Guideline presenting the criterias for reviewing trademark applications

One of the main objectives of the guideline is to clarify the principles of examination of the clauses mentioned in Article 5 of the IP Code – absolute grounds of refusals of trademark applications.  The guideline also aims to maximize compliance with the decisions made regarding trademark applications.

In the updated guideline, the subjects were examined under more headings, attention was paid to presenting more examples, court and institution decisions and court and office decisions made by the European Union authorities were utilized as much as possible.

Differentiating from the one published in 2011, hot topics are discussed in the new Guideline in view of examples, such as “the distinctiveness of color trademarks”, “the examination of movement trademarks or sound trademarks on absolute grounds”, the registration of hashtags as a trademark” and the registration of “scent trademarks” (whether the scent / the sign is capable of being represented in the Registry).

October – In accordance with the recent publication of WIPO, Turkey has withdrawn the declaration made by Turkey under Article 14(5) of Madrid Protocol.

As from October 18, 2019, Turkey can be the subject of a subsequent designation in respect of any international registration, including those are filed before 01.01.1999, the date on which the Madrid Protocol entered into force with respect to Turkey.

It is obvious that this development is in benefit of trademark owners who have been managing their trademark portfolio dating before 1999 and it may result in a slight increase in the number of designations under the Madrid Protocol.

November – Madrid System has recorded its 1.5 millionth international registration, marking an important milestone for the International Trademark System that provides a convenient and cost-effective solution for registering and managing trademarks in up to 122 countries.

“The Madrid System helps enterprises establish a market presence in a cost-effective manner – this is of critical importance in an increasingly global marketplace,” said WIPO Director General Francis Gurry. “This important milestone is a testament to the growing importance of the Madrid System and brands in international commerce.”

December – The TPTO announced that as of 1 January 2020, all industrial property application and post-application process requests will be made via the new electronic application system (EPATS).

Therefore, applications and post-application process requests can not be made by physical documents any longer as of the mentioned date, within the scope of the 8th paragraph of article 160 of Industrial Property Law no 6769, stating that “The Authority is authorized to establish all kinds of technical infrastructure related to the application and notification made in electronic environment or to use the established ones, to impose the obligation to make the applications, requests and notifications in electronic environment, to determine the procedures and principles related to electronic notification and application in electronic environment.”



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