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  • IP in Turkey: How to Register an Interior or Exterior Store Design in Turkey

    IP in Turkey: How to Register an Interior or Exterior Store Design in Turkey

    Companies wishing to obtain legal protection for their interior or exterior store designs in Turkey are faced with a choice: Whether to (1) Register the design as a trademark; or (2) Register it as an industrial design. Many jurisdictions around the world, including the United States, provide stronger trademark protection for store designs. In Turkey, however, trademark law as applied to store designs is unsettled, and greater protection may be found under the industrial design registration process. However, this option has some drawbacks as well, and companies should consider the relative merits of each alternative.

    Turkish law regarding the registrability and protection of non-traditional trademarks is still in flux. According to Article 5 of Trademark Decree Law No. 556, “A trademark, provided that it is capable of distinguishing the goods and services of one undertaking from the goods and services of other undertakings, may consist of all kinds of signs being represented graphically such as words, including personal names, designs, letters, numerals, shape of the goods or their packaging and similarly descriptive means capable of being published and reproduced by printing.” Based on this provision it appears that the interior or exterior design of a store can be registered as a trademark; however, in practice, many questions remain, including the level of distinctiveness required in order to obtain registration and the level of protection that needs to be provided. 

    The distinctiveness test for three-dimensional trademarks differs from the distinctiveness test for traditional trademarks. In principle, the Turkish Patent Institute (“TPI”) takes the following principles into account:

    • The shape of a three-dimensional trademark becomes more distinctive as it diverges from its natural shape, or what is standard in the relevant sector;
    • The average consumer should be able to identify the origin of the three-dimensional trademark without any effort because of the unusual and extra features added to it.

    Although both TPI and Turkish courts have started accepting the three-dimensional shape and visual identities as a sign which differentiates one company from another, in practice TPI has rendered many contradictory decisions which prevented the settlement of practice in Turkey.  Indeed, the record is replete with examples of conflicting decisions on essentially identical designs.

    One  rule, however, appears clear from the record: In cases where the three-dimensional device is filed together with a word element, the word element is taken into account and granted protection. So the chances of registering the store view in combination with a word mark are high. But this registration does not grant exclusive rights on the three-dimensional image as it is filed in combination with a word mark. Therefore, in cases where an interior or exterior design of a store needs to be protected, filing a trademark application in combination with a word mark will not provide the sufficient protection that is desired. 

    And when three-dimensional trademarks are filed without word elements, TPI rejects them. In such cases, applicants need to file an appeal and prove one of the following:

    • The rejected trademark is presently in use and has acquired distinctiveness through its use;
    • The rejected trademark’s acquired distinctiveness relates to the same goods and/or services indicated in the application; or
    • The rejected is perceived as a trademark in Turkey. (Proof of acquired distinctiveness abroad is not sufficient in this case).

    Evidence submitted in support should prove the acquired distinctiveness at the date of filing. Consequently, the evidence should date back to the period before the filing date. This means an interior or exterior store design can be registered as a trademark only if it has acquired distinctiveness in relation to the relevant service which led the consumer to relate the store design with the trademark owner without seeing a word mark/company name.

    However, while the bar of registrability is high in the trademark context, it is much easier to register an interior or exterior store concept as an industrial design in Turkey. According to Design Law No. 554, “a design shall be regarded as having individual character if the overall impression that it conveys to the informed user is significantly different from the overall impression conveyed to the same user by any design.” Unlike trademark applications, TPI does not examine an industrial design application on absolute grounds for refusal; it only examines for the correct application format and whether it complies with public policy and morality policies. TPI is not responsible for evaluating a design’s novelty or individual character. TPI only examines these issues if a third party files an opposition. Therefore, where an applicant files an application for its newly designed interior or exterior store concept, TPI will publish it and, unless challenged by third party opposition, it will be granted registration. Accordingly, most companies prefer registering their trade dress as an industrial design, unless the trade dress has already acquired distinctiveness by the application date.

    However, although registering as an industrial design seems like the easier and therefore preferable option, the nature of industrial design protection includes a few disadvantages compared to trademark, such as a limited period of protection (max. 25 years) and a difference in the test required for similarity. Companies seeking to introduce new designs to the public may therefore want to consider registering them as industrial designs first, to obtain the protections that registration provides, then register them as trademarks once the designs acquire distinctiveness.    

    By Isik Ozdogan, Partner, and Ezgi Baklaci Senior Associate, at Moroglu Arseven

    This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

     

  • Mayer Brown Advises Celebi on Acquisition of Aviapartner Cargo

    Mayer Brown has advised the Turkish airport service provider Celebi Havacilik Holding on its acquisition of the German air cargo handling and warehousing business from Aviapartner.

    With this purchase Celebi takes over Aviapartner´s freight handling business at Frankfurt’s Rhein-Main and Frankfurt-Hahn airports, which involved approximately 125,000 tons of cargo and approximately EUR 12.6 million turnover in 2013.

    The acquisition is part of Celebi´s international expansion, as in 2011 Mayer Brown advised on the company’s acquisition of Celebi Ground Services Austria (formerly Fraport Ground Services Austria), and on other Celebi activities in the German airport services market.

    The Mayer Brown team was led by Partner Guido Zeppenfeld, and included Counsel Bjorn Vollmuth and Associates Jan Streer, Vanessa Klesy, and Elmar Gunther. 

     

  • Dentons Advises EBRD on Loan to Ukraine’s PJSC Raiffeisen Bank Aval

    Dentons has acted as legal counsel to the European Bank for Reconstruction and Development on a USD 75 million loan to Ukraine’s PJSC Raiffeisen Bank Aval.

    The EBRD is the largest financial investor in Ukraine. As of January 1, 2014, the Bank had committed EUR 8.7 billion (USD 11.9 billion) through 321 projects in Ukraine.

    The Dentons team was led by Partners Zarko Iankov in London and Natalya Selyakova in Kiev, supported by Kiev Associate Nikolay Zhovner. 

     

  • UK-Based Emerging Markets Finance Partner to FFW

    Field Fisher Waterhouse has strengthened its Finance group with the hire of Partner Philip Abbott from Simmons & Simmons.

    He will join the firm at the end of March. Abbott is a Banking/Finance lawyer with a strong focus on funds finance, real estate finance, and restructurings. His experience of fund finance has seen him advise on equity bridge facilities, NAV base lending in the hedge fund sector as well as more traditional lending to and from funds.

    Abbott’s practice has a significant focus on the emerging markets, in particular Libya, Turkey and the Middle East. He advises a wide range of clients, and while his primary focus is on lenders – including German banks, investment banks and the commercial banks – he also acts for hedge funds, real estate funds and corporate borrowers.

    Abbott has been with Simmons and Simmons since 2003. The bulk of his time with the firm has been spent as a partner in its London Finance practice, with an interlude in its Dubai office as the head of regional finance for the Middle East from 2008 – 2010. Prior to joining Simmons and Simmons, he was an associate with Allen & Overy and qualified in 1996.

    Field Fisher Waterhouse Managing Partner Michael Chissick said: “The addition of a senior partner such as Philip to our Finance group is a great addition to an already strong team. We have made a number of lateral hires into the group over the past 12 months, and with Philip’s arrival we feel that we are in a better position than ever to service our clients’ needs. The breadth of his experience, in particular his work in the emerging markets, makes him a good fit for the group.” 

     

  • DZP Becomes Member of Polish Council for Supplements and Nutritional Foods

    Domanski Zakrzewski Palinka (DZP) has announced that it has become a supporting member of the Polish Council for Supplements and Nutritional Foods (PCSNF).

    DZP will be represented at the Association by Tomasz Kaczynski, Senior Associate in the firm’s Life Sciences Practice.

    DZP’s responsibilities will include making sure that the PCSNF adapts legal regulations to the current state of knowledge regarding dietary supplements, supporting organizational units and individuals involved in the supplements and nutritional foods sector, lobbying for favorable political and legal conditions for the functioning of the supplements and nutritional foods sector to facilitate the sector’s development, representing the interests of PCSNF members in court, and providing advice and organizational, economic, and training assistance for members and other entities interested in the Association’s activity.  

    The PCSNF was founded in 2004. It represents the interests of manufacturers of dietary supplements and functional foods and stimulates sector development. It is a member of the International Alliance of Dietary/Food Supplement Associations and the European Federation of Associations of Health Product Manufacturers, and it co-operates closely with the European Responsible Nutrition Alliance. 

     

  • Sayenko Kharenko Hires New Partner

    Sayenko Kharenko has announced that IP Partner Oleksandr Padalka has joined the firm with a team from rival Asters.

    Padalka specializes in advising clients on various IT, Corporate, Labor and Unfair Competition issues. In a statement released by Sayenko Kharenko, the firm announced that the new team will “boost its expertise in IP and IT … and enable it to offer cutting-edge solutions to clients in those areas, as well as facilitate day-to-day legal support of the largest Ukrainian and international companies in FMCG and IT sectors, pharmaceutical and food industries in the course of their operations in Ukraine.”

     

  • Integrites Advises Next Group on Advertising Agreements

    Integrites has advised Next Group regarding the execution and performance of various advertising agreements.

    Integrites’ team advised Next Group on risks connected with the performance of advertising agreements with leading media agencies and amended relevant documents to make them enforceable and compliant with local laws — including ensuring that mandatory local provisions applicable to foreign economic agreements were included to protect Next Group’s rights and interests .

    The Integrites team included Associates Yevgen Blok and Dmitriy Nyshpal, and was supervised by Partner Oleksandr Aleksyeyenko. 

     

  • EPAM Hires Capital Markets Team from Liniya Prava

    Egorov Puginsky Afanasiev & Partners (EPAM) has announced that former Liniya Prava Managing Partner Dmitriy Glazounov and his team have agreed to join the firm. Glazounov will head EPAM’s Moscow Banking & Finance and Capital Markets practices.

    Before joining Liniya Prava Glazounov held senior positions with Russia’s Federal Commission for the Securities Market and the Agency for Housing Mortgage Lending. He is the only lawyer on the Bank of Russia’s Expert Board on Development of the Bonds and Debt Instruments Market — a working group responsible for developing legislation for the Russian financial market.

    According to a statement released by EPAM, Glazounov’s team “boasts unique experience in providing legal support for complex financial transactions (securitization and project finance), issuing tailored financial products (mortgage participation certificates, foreign-issued securities placed in the Russian Federation and foreign currency bonds), advising on corporate restructuring and debt restructuring, and participating in major projects related to securities issues, company entries onto the IPO market, and corporate law matters.”

    Glazounov’s clients include BNP Paribas, Morgan Stanley, Citibank, Petrocommerce Bank, VTB Capital, Renaissance Capital, VEB Capital, Uralsib Capital; Soyuz Bank, Tatfondbank, MGTS, Federal Freight, ZENITH Bank, Miratorg Agro-Industrial Holding, Orgsyntez Group CJSC (Renova Group), and others.

    “Egorov Puginsky Afanasiev & Partners is the biggest player on the Russian legal market, boasting an impressive representative list of clients and unique expertise in various practice areas. The synergy we anticipate from combining these factors and the unique experience my team and I have gained at Liniya Prava can create a platform for the strongest Banking & Finance and Capital Markets Practice on the Russian market”, said Glazounov.

    Dmitriy Afanasiev, EPAM Chairman, released a statement announcing that “We sincerely welcome Dmitry’s decision to join the firm. I am confident that his unique status as a true market leader in the field of Finance and Capital Markets, combined with his team’s vast experience, will help us make a giant leap in developing the Firm’s Moscow-based Banking & Finance and Capital Markets Practice.”

     

  • Gessel Lawyer Becomes Vice President of Polish Union

    Gessel has announced that Managing Associate Adam Kraszewski was appointed vice president of the Polish Union of Consulting Sector Employers of the Lewiatan Confederation.

    Kraszewski specializes in employment law and intellectual property law at Gessel.

    The Polish Union of Consulting Sector Employers was founded in 1998 and its current membership comprises 59 entities, including consulting firms, law firms, training firms, and vocational counseling entities. It provides advocacy to the benefit of its members in their dealings with trade unions and public authorities. Its representatives contribute to legislative work at the national and European Union level and assist government and parliamentary committees on legislative projects.

     

  • Gessel Advises Comperia.pl on its Warsaw IPO

    Gessel has advised the Warsaw-based Comperia.pl on its initial public offering, including the drafting of its issue prospectus concerning shares from the new issue and transfer of its existing shares from the NewConnect market to the main floor of the Warsaw Securities Exchange.

    The Gessel lawyers involved in the project included Partner Leszek Koziorowski and Of Counsel Tomasz Dragowski.

    Comperia.pl is an IT company which operates Poland’s first Internet platform providing a comparison of banking and financial products.

    The issue of ordinary F-series bearer shares in Comperia.pl was effectuated by way of open subscriptions within a public offering between February 1 and 14, 2014 (on the basis of the issue prospectus approved by the Polish Financial Supervision Authority on January 30, 2014), and resulted in the acquisition of 575,000 shares by an assortment of institutional and private investors. The attendant share capital increase was entered in the National Court Register on February 27, 2014. Along with the remaining bearer shares of the company (listed on the NewConnect market within the alternative trading system), the F-series shares in Comperia.pl are now the object of proceedings geared at securing permission for listing on the main floor of the Warsaw Securities Exchange, and their first listing is expected in the second half of March 2014.