Spring Conference - emerging markets26 March 2018
Turkey, Russia and Brazil are increasingly important markets, we enlisted the help of three experts to provide us with the latest updates to law and practice in their regions at our Spring Conference.
Turkey - Selma Ünlü, NSN Law Firm
The Industrial Property Law had been pending in Turkey for many years, and when it was finally enacted in January 2017 it brought Turkish trade mark law more in-line with EU practice.
As part of the change, the Turkish Patent Institute became the Turkish Patent and Trademark Office (TPTO). There are a number of further changes that have had a positive impact on practice, as Selma explained.
Co-existence of trade marks was introduced for the first time, as was defence of non-use. However until January 2024, only the IP courts can cancel registered trade marks due to non-use. From 2024 onwards the TPTO will also be able to do so.
Famous trade marks not registered in Turkey have more protection under the new law. Selma said: “Trade marks which are well-known in their sector can be a ground for refusal of a trade mark application or invalidity with respect to the identical or similar goods or services although they are not registered in Turkey.”
On the new provision for raising an infringement claim against the use of a registered trade mark, Selma said: “Trade mark owners cannot present their industrial property right as a ground of defence in an infringement action filed by the right owners holding an earlier date of the application or priority.”
The opposition period following the publication of a trade mark in the Official Trademark Bulletin has decreased from three months to two months. Turkey has also introduced an international exhaustion regime.
Russia - Yana Tsygankova, Rouse
Yana opened by discussing how Russia cannot be considered a standalone country, with several unified systems in Eurasia coming in. The new Eurasian system for trade marks, similar to the EU trade mark, will be coming to the area. It will include: Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia, while Tajikistan is currently considering joining along with others in the region.
‘Rospatent’ is the “super” authority for IP rights and will include copyright in the future. The organisation has introduced a 30% discount for e-filing, which will be welcomed by rights holders, because Rospatent has recently put its fees up.
New changes in the law are giving better protection for designs. The protection is based on confusing similarity and overall impression for consumers. However, Yana pointed out that protection period is still limited to 25 years.
Yana expressed the difficulties in actually receiving damages awarded by a court as IP crime is not considered to be a severe enough offence to receive significant attention from the relevant enforcement authorities.
Brazil - Andrew Bellingall, ABO IP
Brazil is larger than the rest of South America put together. It is the ninth biggest economy in the world and the eighth biggest consumer market.
Although Brazil is not currently part of the Madrid System – it could be ratified “at any moment,” although it has been pending for several years.
Counterfeiting and piracy is prominent in Brazil. But there is some better news that the average pendency for trade marks is down to 2.5 years for.
There are 16 million companies in Brazil, most of which are in the ‘grey market’ – which means that IP infringement is commonplace.
To claim prior rights, a trade mark must be famous in Brazil. Further to this, Andrew said: “If you file a trade mark which includes the same distinctive element as a company they can block you with their company name.”
Brazil is a first to file country, with the exception of if you have six months’ prior use in Brazil. So, “unless you file your trademark in Brazil when your product is first launched, third parties in Brazil may do so before you.”
Andrew’s tips for overcoming the IP challenges of Brazil, is before launch to search the trade mark registry for prior trade marks and the company registry for prior trade names. Then to file the trade mark in Brazil in at least one class, as Brazil is a first to file country. This will mean you will not leave yourself vulnerable to registrations of your mark by someone else after six months.