Summary: Since design registration provides a competitive advantage, it requires companies to attach importance to R&D. The authorized government agencies also support innovative activities and efforts in order to increase the quality of life and contribute to the economic growth of production and supply. The Turkish Patent and Trademark Office, which manages the registration processes, publishes patent, design, and trademark application statistics at the end of each year and announces the parameters of the development. On the other hand, in the presentation of industrial production, it is difficult to protect the products with added value, which are produced by the application of the design or utility model, against imitation and approach. These are partly judicial and largely administrative problems.
The Industrial Property Law No. 6769 (hereinafter referred to as IPL) protects the appearance of products/objects, which we are not aware of when using products in daily life, and provides a monopoly right under certain conditions. The design occurs as the expression of the designer’s intellectual world and is perceived by the users in a sensorial way on the product it embodies. This industrial right is compared partly with patent and partly with copyright; in fact, it falls somewhere between the two types of rights. It is an indisputable fact that designed products make our lives easier, create a buying attraction when displayed on the shelf, and offer a competitive advantage for manufacturers and sellers. As a matter of fact, authorized state bodies encourage and financially support sector members in expanding their R&D activities, employing designers, performing innovative production, and producing niche products.
In Turkish, we use both the Turkish correspondence for the word “design” and the word itself as it is pronounced in English. The word design comes from the Latin word ‘designare’, which means to form, to represent. However, when it comes to the protection of the new and distinctive designs, whether manufactured through industrial production or handicraft production, through registration or without registration, it is appropriate to use the term absolute ‘design right’ pursuant to the law.
The design is a concrete reflection from the inner world of the creator to the outer world. According to this, it is a conception that first exists as an idea; but this idea, this conception includes the dynamic of forming, and it is externalized and embodied as an idea that has taken shape in this formation process.
So, every ‘design,’ every design phenomenon has an ‘idea’ and a designed ‘object.’
New and distinctive product designs, whether registered or unregistered, are protected within the scope of unfair competition principles. Design protection, which is another area of industrial property protection, is regulated in detail in terms of the registration process and right establishment. Again, another important novelty of IPL, responding to a frequently felt need in the field of fashion, incorporates unregistered design protection in the same framework.
Today, the right to design is one of the industrial rights that is used to create a difference between products, as in every field, accepted by manufacturers and users and is becoming widespread day by day. It is an important intellectual and industrial property right value as innovative designs ensure initiative success and competitive advantage in the market. The fact that companies create new and distinctive designs, especially in durable consumer goods, thus stimulating the consumer’s curiosity and purchasing appetite, also brings competitive success. Actions to block competitors with counterfeiting or unfair design registrations lead to lawsuits.
B. DEFINITION AND MEANING OF REGISTRATION
Design literally means “designing or the designed form; imagination.” In another definition, it refers to “all products such as projects, drawings, models, etc., which occur as a result of an act of design and which is controlling in the realization of the original work.” Design law, on the other hand, mainly focuses on appearance. As a matter of fact, it is understood from the provisions determining the procedure to be followed during the application that the design concerns the appearance. Pursuant to the relevant provision, the visual representation of the design must be specified when applying for registration for the design. Indeed, it is necessary to perceive and compare the designs with the eye while the evaluation is made by the informed user during the determination of the distinctiveness condition of the designs. In Article 55 of the IPL, “Design is the appearance of all or a part of the product or the ornament on it resulting from features such as line, shape, form, color, material or surface texture.” The appearance is emphasized in the definition of design. The concept of ‘product’ in the definition is also defined in the next paragraph. According to this, “Product refers to any object produced industrially or manually, excluding computer programs, as well as a combined product or its parts, objects such as packaging, presentations of multiple objects perceived together, graphic symbols, and typographic characters.” The practical importance of these design and product definitions is evident in the rejection of applications that do not comply with the definitions by the Turkish Patent and Trademark Office.
Registered and unregistered designs are the industrial property rights that have the most enforcements in the field of IPL after brands. The provisions of IPL regarding design registration are included in Articles 55 to 81. The registered design is renewed 5 times and provides protection for up to 25 years, and the unregistered ones are protected for 3 years from their first presentation to the public, provided that they meet the same criteria.
The product of the company that develops the design has advantages over the previous rival products in the market due to its design, so to speak, it is noticed and stands out. Undoubtedly, design registration can be achieved with long intellectual efforts, research, and investments. The added value created is total quality improvement and correct quality management; this provides a social benefit beyond giving a competitive advantage to the design owner. Developing technology serves to increase and diversify human needs despite some negative side effects. The innovative designs both accelerate and benefit from this inevitable development.
C. IMPLEMENTATION ISSUES
1. Challenges in Protecting Design Right Against Unfair Competition
Although important progress is made with the registration of the design or its development and presentation to the public for the first time, the real struggle actually begins after that. As a rule, clear protective provisions of IPL operate against imitation and similarity violations. However, the resolution of violations in this area is difficult in a slowed-down judicial system, and the efforts of those who invest in innovation are often unreturned. In this sense, the fact that the right arising from the design registration is an intangible ‘property’ right escapes notice. These problems point to a weak perception regarding the design right. Both competitors and decision-makers, consumers, and users do not sufficiently respect the right arising from design registration or unregistered designs.
The design right is unhesitatingly protected, thanks to the registration. In the event of a counterfeit or intervention in the protection area, the counterfeit product can be removed and withdrawn from the market and also compensation provisions are enforced. Again, such acts of unfair competition are penalized under the TCC. If such unfair competition actions are met with the right legal intervention, they give results in a reasonable time according to the conditions of our country.
2. Problems in Procurements of Public Institutions
The first striking contradiction in this area is the inconsistency of the laws in the relevant common points, although the principle of equality in competition is dominant. As a matter of fact, although the IPL and the Decree Law No. 554 on the Protection of Industrial Designs, which was in force before 10.01.2017, defined, regulated, and protected the design registration, it is stated in article 12/3 of the Public Procurement Law No. 4734 dated 4.1.2002 (hereinafter referred as PPL) that ‘no certain brand, model, patent, origin, source or product can be specified in the specifications; features and descriptions for a particular brand or model are not included.’ It is understood that these statements were not chosen with due care in legal language. Moreover, these terms are not differentiated with respect to content and function.
Accordingly, on the one hand, the law and the authorities support competition, encourage companies to innovate, and on the other hand, they use statements in laws that lead to the interpretation that the industrial property right will not be used to ensure equality and transparency in public procurement. However, within the framework of the “Communiqué on Design Support” numbered 2008/2 in order for creating and disseminating the design culture in Turkey, the expenditures related to the promotion, advertising, marketing, employment, patent, utility model, and industrial design registration, consultancy expenses and expenses related to the entities to be started abroad which are incurred by the designer companies, design office, and cooperation organizations are supported.
Although the “new and distinctive” product design, which is presented through effort and investments in a known technical field, gives a permanent monopoly in principle, products produced by emulating companies that do not show the same investment and effort may be preferred depending on some special market conditions. A typical example of this is seen in public procurement. Sometimes the determinant of the quality sought in public procurement may be the industrial property right in the product and this feature is announced as an annex to the specification. If there is no objection to this qualified tender announcement within the legal period, the specification becomes final and binds the bidders. Even the public institution becomes bound by the finalized tender specifications. As a matter of fact, pursuant to Article 29 of the PPL No. 4734, “It is essential not to make any amendments in the tender document after the announcement. If it is necessary to make an amendment, the reasons and requirements are determined in a minute and the previous announcements are deemed invalid and the job is announced in the same way. Accordingly, unless there is an important technical error or justification, the declared specification is binding for everyone. Therefore, when a finalized specification is based on a product or production with a certain quality and contemporary standards, provisional and final acceptance procedures will have to follow these principles. This will be the result of both the Administration’s remaining true to its word and respecting intellectual property rights.
In practice, it is often seen that the images and technical information pictures mentioned the technical specifications are defined by the administration, and during the tender preparation, a project in accordance with the intended features is stipulated. In the face of human-environment relations and the need for new openings to the changing lifestyle, it is inevitable that a certain theme should form a whole with the technical specifications. Defining this visual, technical and thematic product information and the relationship that the design will establish with people by giving brief information will be correct governance and tender acceptance style. In such tender files, writing the theme definition separately, defining it with a ‘brief’ (short description), and keeping the authenticity and writing down the main theme within the framework of defining the human-design relationship that is the subject of the content with design principles, not the related technical drawings, will prevent erroneous and arbitrary acceptance preferences. In other words, including the function, theme, and technical elements ordered by the administration in the tender file as a whole, both visually and with a short description, and complying with this form, which is finalized with the announcement, will serve the purposes of adhering to the law, improving the quality of public service, as well as protecting the industrial right.
Despite the regulation of Article 12/3 of the PPL No. 4734, no distinction is made between the companies before the Turkish Patent Institute in terms of obtaining industrial rights, and all companies, large and small, can register the ‘new’ and ‘distinctive’ designs they develop. In tenders, on the other hand, it is essential to ensure that the product required by the Authority is presented to the public, which is the consumer or user, properly. The Authority is free with regard to the technical criteria or features of the job or product subject to the tender. In the law, it is accepted that it is possible to specify the brand and model, provided that the expression “or equivalent” is included. We should immediately point out that, although it is clear that the two laws do not use the same language with regards to the terminology, the term “model” in the provision of Article 12/3 of the PPL No. 4734 refers to products with design, patent or utility model rights. However, this negligent use of terms leads to interpretations against industrial right holders and unfair practices area against the logic of design protection and the understanding of protection of competition. Evaluation of the design, which is the product of an investment and intellectual effort in accordance with the labor principle, and the ordinary product that has not received any registration, together with the expression “or its equivalent” is against the system, and it is also contradictory to the aim pursued the 1st article of the IPL, “to protect the rights regarding the traditional product names through brand, geographical indication, patent, utility model, and thus, to ensure technological, economic, and social progress.”
However, the purpose of the law numbered 4734 is to prevent favoritism in tenders, to ensure equality, and to ensure efficiency by making the right choices for the public; there is no negative connection between these purposes and industrial rights. On the contrary, patents, utility models, and designs, which we call production-related industrial rights, do not serve to distinguish merchants. Only trade names and brands serve to distinguish businesses (companies) with goods and services. Therefore, when we approach the subject in terms of total quality management, when products or methods on which intellectual property rights are established are made subject to procurement by public institutions, the results will be qualified and efficient and the administration will serve to the happiness and welfare of people. As a matter of fact, although the availability of a utility model or design for a product is a quality indicator, it is possible that the design belongs to different companies to which the tender is addressed, and it will not be understood who the design belongs to at the beginning. Because, as we have stated, these rights documents do not point to their owners unless they are specifically investigated. These documents do not have a distinctive function; they refer to the innovative feature, appearance or information and technique in their contents. In this sense, it should be possible to include “innovation” and “distinctiveness” features in the technical conditions sought by the Institution. In other words, it is possible for the technical conditions drawn or defined by the tender specifications to coincide with a proprietary design. Criticism of “favoritism” will remain unfounded as the institution’s respect for a proprietary design will constitute a behavior in line with the pursuit of efficiency and quality. As it is known, the preference of the most economical bidder in tenders is not an absolute rule, and the preference of the most efficient bid may be the right decision despite the price difference.
Therefore, the prohibition of including elements such as “brand, company name” in a technical specification is understandable in terms of the principle of equality, but the same evaluation cannot be made on industrial rights (patent, design, utility model) which are quality indicators for that product. Just like any consumer, it would be an understandable commercial behavior for the contracting institution to seek ergonomics, durability, thematic aesthetic features, service and assembly advantages, environmental compatibility and quality within the framework of the needs of the society it serves. This will be possible with the preference of products developed for quality, healthy and careful presentation of public service or qualified products protected by an industrial property right.
Unless there is a decree of invalidity throughout the protection period of temporary monopoly rights granted through design and patent, it is indisputable that these will serve in a sense similar to a title deed of an immovable. In this respect, it is important that the proceedings regarding industrial rights are handled by specialized judges, lawyers and technical experts. On the other hand, those who claim that a design or patent has been registered unjustly have the right to file a lawsuit for invalidity, and there is an assurance mechanism regarding the possible rights of third parties. This lawsuit can be brought during the validity period of the design and within 5 years after its invalidation (IPL, art. 78). The lawsuit for invalidity based on real right ownership can be filed by the person who has the real right, and other invalidity suits may be filed by anyone who has a legal interest. The filing of the lawsuit is not subject to any preconditions, formalities such as issuing a warning or objecting to the publication.
Design and patents play a key role in technological development. As a matter of fact, intangible rights are also accepted among the basic human rights, and protective mechanisms are envisaged by international conventions. The Turkish Patent Institute, which is under the mandate of the Ministry of Industry and Technology, keeps records by registering patents, brands and designs, and receives registration and renewal fees due to protection expenses. According to the Law No. 4734, the Public Procurement Authority is charged with preparing, developing and directing the implementation of all tender legislation, examining and finalizing the complaints regarding the violation of the legislation in the transactions made by the administrations during the period from the beginning of the tender to the signing of the contract, providing training to the public and private sectors, generating and publishing statistics on tenders, keeping the records of those against whom a ban decision has been made, and carrying out research and development activities. With a simple interpretation within these main lines, another issue to be considered during the execution of the task is to take public interest as basis, to provide compliance with the conditions sought by the institution in tenders, and to ensure efficiency.
The restrictive expression of article 12/3 of the PPL, which contradicts the existence of such a legal right and truth, may lead to erroneous interpretations, and thus, to results such as violation of rights in official acceptances (post-tender). These approaches also cause the efforts to develop industrial rights and innovations to be meaningless. It is a fact that products equipped with designs or patents have added value compared to other analogies that do not have industrial property rights, yet, the fact that the application does not work on the same basis also hinders social welfare and development as a result. For this reason, removing article 12/3 of the PPL No. 4734 completely or removing the parts expressing the design and patent from the text, changing it, and even if it is not, interpreting the law in accordance with its purpose will serve the recognition and promotion of industrial property rights and the expectations of socio-economic progress. . It will also be an important step in terms of ensuring compliance with the legislation and establishing a fairly functioning competition order, which should be in a state of law. İlhami GÜNEŞ / Judge of the Civil Court of Intellectual and Industrial Property Rights