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Legal Protection of Registered and Unregistered Designs

INTRODUCTION

The Industrial Property Law No. 6769 (SMK) created a detailed legal system for designs in Articles 55 to 81. It brought the former rules under Decree-Law No. 554 on the Protection of Industrial Designs into line with EU Council Regulation No. 6/2002 on Community Designs. One of the most important changes was the introduction of “unregistered design protection” into Turkish industrial property law. This system allows businesses in sectors with short product life cycles, such as fashion, textiles and seasonal products, to protect original designs placed on the market without waiting for registration.

Turkish design law therefore has a two-level protection system: registered protection for up to 25 years for long-term commercial investments, and three-year unregistered protection against direct copying of short-life designs.

This study examines the legal definition of a design, the requirements of novelty and individual character, the tests of the “informed user” and the “designer’s degree of freedom”, the differences between registered and unregistered protection, acts that constitute design infringement, the methods for calculating loss of profit under SMK Article 151, compensation for damage to reputation, and actions for invalidity of a design. These issues are examined in light of the settled case law of the 11th Civil Chamber of the Court of Cassation.

I. THE CONCEPT OF DESIGN AND CONDITIONS FOR PROTECTION (SMK Articles 55 & 56)

For a design to receive legal protection under the SMK, it must meet the legal definition of a design and must satisfy two main conditions: novelty and individual character.

1. Legal Definition of a Design (SMK Article 55/1)

The law defines a design by looking at the visual features of a product:

“Design means the appearance of the whole or a part of a product, or its ornamentation, resulting from features such as lines, shape, form, colour, material or surface texture.”

This means that design protection does not protect the abstract idea or technical function of a product. It protects only the external appearance that can be seen or perceived by human senses. Shapes that are required only by a technical function, for example the thread of a screw that allows it to fit into a socket, cannot receive design protection (SMK Article 58/1).

2. Novelty Requirement (SMK Article 56/1, 2) and Grace Period (SMK Article 57)

• Absolute (Worldwide) Novelty: Before the application date of a registered design, or before the first public disclosure of an unregistered design, the design must not have been made available to the public anywhere in the world. A difference only in small details is not enough to make a design new (SMK Article 56/2).
• Grace Period (SMK Article 57/2): If the designer or successor makes the design public and files an application in Türkiye within 12 months from that disclosure, the designer’s own disclosure does not affect novelty or individual character.

3. Individual Character, the Informed User and Designer’s Degree of Freedom (SMK Article 56/3, 4)

• Informed User Test: The “informed user” in design law is different from the “average consumer” in trademark law. This is a hypothetical person who knows the relevant product group and similar products in the market. This person is more careful than an average consumer but is not as expert as a technical expert.^[1]
• Overall Impression Rule (SMK Article 56/4-b): When individual character is assessed, small similarities or differences between the designs are not decisive. The main point is the “overall appearance and overall impression” that the design creates on the informed user.^[2]
• Designer’s Degree of Freedom (SMK Article 56/4-a): This means the freedom available to the designer when developing the product. If design choices are very limited because of the technical structure, material or purpose of the product, for example door handles or rubber seals, even small visual differences may be enough for individual character. If the designer has wide freedom, for example in evening dresses or furniture, similarity in the general form and composition may directly lead to infringement.^[3]

II. COMPARISON OF REGISTERED AND UNREGISTERED DESIGN PROTECTION

Under the SMK, registered and unregistered designs differ in the scope of the exclusive right, the term of protection, and the level of protection that can be claimed against third parties:

1. Registered Design Protection (SMK Articles 59/1 & 69/1)

• Term of Protection: Protection starts from the application date and lasts for 5 years. It may be renewed for five-year periods up to a total of 25 years (SMK Article 69/1).
• Scope of Protection: The registered design owner has an exclusive right to prevent unauthorized production, offering, sale, import or commercial possession of the same design or a design that does not create a different overall impression on the informed user. Independent development by a third party is not a defence against a registered design right.

2. Unregistered Design Protection (SMK Articles 59/2 & 69/2)

• Term of Protection: Protection lasts for 3 years from the date when the design is first made available to the public in Türkiye (SMK Article 69/2). This period cannot be extended or renewed.
• Scope of Protection (Protection Only Against Copying): Unregistered design protection does not give an absolute exclusive right. Under SMK Article 59/2, an unregistered design is protected only when the protected design is directly copied or when a design that is indistinguishably similar is copied.
• Independent Development Exception: If a third party did not know about the unregistered design and created the same or a similar design independently, the owner of the unregistered design cannot enforce the design right against that person (SMK Article 59/2).

3. Legal Position Between the Registration Application and Bulletin Publication

A common dispute in practice concerns infringement of a design after a registration application has been filed but before the design has been published in the Official Designs Bulletin.

According to the settled decisions of the 11th Civil Chamber of the Court of Cassation, registered design protection normally becomes effective against third parties from the date of publication in the Bulletin. Acts before publication cannot directly be treated as “infringement of a registered design”, even if the defendant admits the act. Use during this period may only be examined under the conditions for unregistered design protection in SMK Article 59/2.^[4]

III. DESIGN INFRINGEMENT AND AVAILABLE ACTIONS (SMK Articles 81 & 149)

The legal actions that may be taken when a design is used or copied without the owner’s permission are regulated in SMK Articles 81 and 149.

1. Acts Constituting Infringement (SMK Article 81/1)

• Producing, offering, selling, making contracts for, importing for commercial purposes, or commercially possessing the same registered design or a design that is indistinguishably similar for the informed user,
• extending or transferring rights granted by the design owner under a licence without permission,
• usurping the design right.

2. Actions and Claims (SMK Article 149)

The right holder may bring the following claims before the Civil Court for Intellectual and Industrial Property Rights:

1. Determination, Prevention and Removal of Infringement (SMK Article 149/1-a, b, c): Determination of the infringement, stopping ongoing infringement, and removing its effects.
2. Seizure / Destruction of Products and Production Tools (SMK Article 149/1-ç, d): Counterfeit products may be recalled from the market and destroyed. Moulds, machines and technical equipment used only for counterfeit production may also be seized, as long as this does not prevent other lawful production.
3. Removal of Promotional Materials and Publication of the Judgment (SMK Article 149/1-g): Images on websites, catalogues and brochures may be removed, and the final judgment may be published in national newspapers at the defendant’s expense.

3. Rule Against Cumulative Protection for Registered Designs

According to the settled case law of the 11th Civil Chamber of the Court of Cassation, the SMK gives registered industrial property rights a more specific and stronger protection system than the unfair competition rules of the TTK. Therefore, in an infringement action concerning a registered design, only the infringement rules of the SMK apply. A separate ruling on determination or attorney’s fees cannot also be based on the TTK unfair competition rules for the same act.^[5]

IV. PECUNIARY, NON-PECUNIARY AND REPUTATION DAMAGES AND CALCULATION METHODS (SMK Articles 150 & 151)

A person who infringes a design right with fault must compensate the right holder for pecuniary and non-pecuniary loss (SMK Article 150/1).

1. Three Alternative Methods for Calculating Loss of Profit (SMK Article 151/2)

For pecuniary damages, the claimant must choose one of the following three methods to calculate loss of profit:

• a) Probable Profit of the Right Holder (SMK Article 151/2-a): The amount is calculated according to the probable income that the design owner could have earned by using the design if the infringement had not occurred.
• b) Net Profit of the Infringer (SMK Article 151/2-b): The amount is calculated according to the net commercial profit earned by the infringer from the sale of counterfeit products. The defendant’s commercial books are examined, and necessary production costs and taxes are deducted from total revenue.
• c) Hypothetical Licence Fee (SMK Article 151/2-c): The amount is based on the licence fee that the infringer would have paid if the design had been used lawfully under a licence agreement.

2. Compensation for Damage to Reputation (SMK Article 150/2)

If the commercial reputation of the design is harmed because unlicensed or counterfeit products are made with poor materials or poor workmanship and placed on the market, the right holder may also request compensation for this loss of reputation. However, the poor quality of the product and the damage to reputation must be proved with concrete evidence.

3. Non-Pecuniary Damages

Infringement of a design right may directly harm the designer’s intellectual creation and the commercial reputation of the business. Under Article 58 of the Turkish Code of Obligations (TBK), the court may award fair non-pecuniary damages by considering the seriousness and duration of the infringement and the economic situation of the parties.

V. ACTION FOR INVALIDITY OF A DESIGN AND ITS RETROACTIVE EFFECT (SMK Articles 77 & 79)

A registration that does not meet the legal conditions for validity may be removed from the register through an action for invalidity of the design before the Civil Court for Intellectual and Industrial Property Rights.

1. Grounds for Invalidity (SMK Article 77/1)

• The design does not meet the definition of a design under SMK Articles 55 and 56, or it is not new or does not have individual character,
• the design is contrary to public order or public morality,
• the design consists of features required by a technical function (SMK Article 58/1),
• the design right actually belongs to another person (SMK Article 77/1-b),
• the applicant acted in bad faith.

2. Retroactive Effect of Invalidity (Ex Tunc - SMK Article 79/1) and Preliminary Issue

Under SMK Article 79/1, when a decision declaring the design invalid becomes final, it has retroactive effect (ex tunc). The design protection is treated as if it had never existed from the application date.

This rule is very important in infringement actions. If a defendant in a design infringement action claims that the claimant’s design is not new or does not have individual character and files a counterclaim or a separate action for invalidity, the court must treat the invalidity action as a preliminary issue and wait for its result. If the design is declared invalid, the infringement action loses its legal basis.

CONCLUSION AND ASSESSMENT

Design disputes are a dynamic area in which the visual appearance of the product, its commercial life and litigation strategy must be managed together. Recent case law of the 11th Civil Chamber of the Court of Cassation and practice show that the following main points should be considered:

• Correct Choice Between Registered and Unregistered Protection: In sectors with short product life cycles, such as fashion and textiles, three-year unregistered design protection under SMK Article 59/2 gives practical protection. However, it protects only against copying and may not overcome an independent development defence. For main product models with a large market share and long-term production, registration may provide an exclusive right for up to 25 years.
• Document the First Disclosure Date in Advance: Claims based on an unregistered design depend on proof of the date when the product was first made available to the public. For this reason, fair participation records, dated printed catalogues, social media posts and first shipment records should be kept regularly. This helps prevent evidence problems during litigation.
• Avoid Cumulative Claims: For infringement of a registered design, the Court of Cassation does not accept additional reliance on the TTK unfair competition rules when the SMK infringement rules apply. Claims should therefore be based directly and only on SMK Articles 81 and 149 et seq. This avoids procedural confusion, unnecessary delay and the risk of adverse attorney’s fees.
• Invalidity as a Defence and Preliminary Issue: If the claimant’s design does not differ from forms already known in the market, an invalidity action under SMK Article 77 may be an effective defence for a party facing a design infringement action. Because an invalidity decision has retroactive effect (ex tunc), the party should request that the invalidity action be treated as a preliminary issue in the main infringement case.
• Choose a Realistic Method for Damages: If the defendant’s accounting records are unreliable or there is a risk of unrecorded sales, the hypothetical licence fee method under SMK Article 151/2-c may be more suitable than the net profit method because it is based on more objective evidence. For claims concerning damage to reputation, the claimant should not rely only on the existence of copying. Concrete loss in the value of the trademark/design and market loss should also be proved with clear evidence.