Copying the appearance of a product may constitute infringement of a design right. Similarity alone, however, is not enough: the scope of the protected design, its novelty and individual character, the validity of the registration and the overall impression that the compared products leave on the informed user are examined. For an unregistered design, the condition of copying is added to these. For this reason, two photographs showing the products side by side are the beginning of the legal review, not the whole of it. [S1]
In furniture, lighting, packaging, jewelry and industrial products, the commercial effect of a dispute can emerge quickly. After the product reaches the market, evidence may change, stocks may run out and online listings may be removed. The right holder’s first need is to verify the scope of protection and to preserve the traces of the infringement reliably.
What features does a design right protect?
Separating appearance from technical function
For the purposes of the Industrial Property Law No. 6769 (SMK), a design is the appearance of the whole or a part of a product resulting from features such as its lines, shape, form, color, material or surface texture. The operating principle of a machine and its external appearance may fall into different areas of protection. A design registration does not provide a patent-like unlimited monopoly over a technical solution.
Appearance features required by the technical function of the product may remain outside protection. There are also special limitations for forms and dimensions that are necessary for a mechanical connection. On the other hand, the technical nature of a product does not mean that all of its aesthetic choices are unprotected. Elements dictated by technical necessity must be distinguished from those freely chosen by the designer.
Registered and unregistered design
Registered design protection lasts five years from the filing date; it can be extended by renewals of five years each, up to a total of twenty-five years. Unregistered design protection lasts three years from the first making available to the public in Türkiye, under the conditions in the Law. It should not be assumed that every new product automatically enjoys the same protection before the conditions of unregistered protection are met.
For a registered design, the register and the visual representations are particularly important; for an unregistered design, the date, place and scope of the first disclosure to the public and entitlement to the right are. A trade fair or internet publication abroad must be examined separately as regards unregistered protection in Türkiye. The effect of disclosures made before filing is also a separate matter.
Why do novelty and individual character matter?
Disclosures before filing
The fact that a design that is not new or lacks individual character is registered does not remove the risk of invalidity. Previously published catalogs, product listings, patent and design databases, trade fair records and dated sales documents may matter in the review. Limiting the search to designs registered in Türkiye may not be sufficient.
For certain disclosures made by the designer, their successor or with their consent, the twelve-month exception in Article 57 of the SMK is considered. This exception is not a common and unconditional safeguard for applications worldwide. Building a filing strategy in the target countries before the product is announced provides safer planning than debating the effect of a disclosure afterwards.
The informed user and the designer’s freedom of choice
The comparison is identified neither with an expert who knows every technical detail of the product nor with a completely unrelated person. The overall impression produced on an informed user who knows the relevant products is assessed. As the designer’s freedom of choice narrows, the weight of necessarily shared features may change.
In a lamp, that all products give light is a common technical purpose. On the other hand, the lines of the body, the proportions of the base, the surface texture and the placement of the head may create a different overall impression. The review should not be limited to counting similar and different elements; their weight within the overall appearance should be explained.
What conduct may infringe a design right?
Unauthorized production, placing on the market, sale, import, use for commercial purposes, or possession for that purpose of the protected design or of the product to which it is applied may constitute infringement. The acts of the manufacturer and the seller are assessed separately. That a business has purchased the product from another supplier does not remove liability in every case.
The copying condition for an unregistered design
An unregistered design provides protection against the copying of the protected appearance or of one so similar that it cannot be distinguished in terms of overall impression. The independent work of a designer who could not reasonably have been aware of the protected design is assessed differently. For this reason, design development files, the dates of drawings and prototype records matter not only for the right holder but also for the business facing an infringement allegation.
Exceptions and repair parts
Private and non-commercial use, use for experimental purposes, and reproductions for teaching or reference purposes that meet the statutory conditions are subject to separate provisions. There are also special provisions for repair parts of complex products. It cannot be generalized that every spare part can be freely copied or that every part is entirely prohibited. The conditions of period, purpose, visual dependency and non-misleading nature in Article 59 of the SMK must be assessed on the specific product.
What evidence should be gathered when an infringement is detected?
First, entitlement and the scope of protection are determined: the registration certificate, renewal status, register images, contracts with the designer and, if any, the chain of assignment are brought together. Then, it is investigated to whom the opposing product actually belongs and on which dates it was placed on the market.
| Evidence | Function in the file |
|---|---|
| Registration images and register record | Determining the subject of protection and the right holder |
| Dated drawings and prototype records | Development of the design and the independent-work defense |
| Product sample with invoice | Making the opposing product concrete and the link to the seller |
| Record containing the URL, date and seller information | Establishing the online presentation |
| Earlier catalog and trade fair documents | Review of novelty and disclosure to the public |
| Sales and cost records | Supporting the calculation of loss and profit |
A screenshot containing only a product photograph may be insufficient to prove the owner of the listing or the date. The product number, page address, seller identity, price and access date should be preserved together. If there is a risk of the evidence being lost, preservation of evidence (delil tespiti) by the court may come into play. Records obtained through unlawful access may create a new dispute in addition to the problem of proof.
A real decision: why was the similarity report not considered sufficient?
In the decision of the Civil General Assembly of the Court of Cassation (Yargıtay Hukuk Genel Kurulu) dated 01.03.2023, E.2021/11-975, K.2023/143, designs relating to the appearance of twisted cheese (burgu peynir) were assessed. In the review, focusing only on the similarity between the parties’ products was not considered sufficient; the importance of earlier examples and the necessary technical research with regard to the novelty and individual character of the design was emphasized. The decision of persistence (direnme kararı) was reversed. [K1]
The dispute falls within the framework of the provisions of the earlier Decree-Law No. 554 period. The historical legislation applied by the decision and the current SMK provisions must therefore not be confused. The methodological conclusion that can be carried over to current files is that the right holder’s submission of the registration certificate does not by itself close the validity debate, and that an expert examination must contain a verifiable comparison.
This example does not show that the claim will necessarily be dismissed either. A reversal requires the remedying of an incomplete or insufficient examination; it does not guarantee the final substantive outcome in advance. Taking into account the distinction between the compilation heading in the source PDF and the date in the conclusion section of the decision, the decision’s own conclusion date is used here.
What claims can be made?
Cessation, prevention and infringing products
Under Article 149 of the SMK, a declaration, prevention and cessation of the infringement; if the conditions are met, measures concerning infringing products and the tools used in their production; compensation for pecuniary and non-pecuniary damage; and publication of the decision may be requested. The claim should be framed in proportion to the scale of the infringement and the right sought to be protected.
For an interim injunction, sufficient explanation and evidence must be submitted that the right exists and that the infringement has occurred or that serious preparation exists. An injunction is not an automatic result of the action. Security, hearing the other side, enforcement and the time limits for the main action are assessed separately. A request seeking intervention in all stocks of the product and a request seeking only the removal of a particular listing do not have the same effect.
Calculation of compensation
Alongside actual loss, lost profit may come into play. Article 151 of the SMK regulates calculation methods such as the income the right holder could have earned, the net profit earned by the infringer or a hypothetical license fee. The appropriate method should be chosen rather than adding these together indiscriminately for the same loss.
For example, a business claiming that its sales have fallen should not be content with presenting only a total turnover table. The link between the infringement period, the product group, market conditions and costs must be explained. In the hypothetical license approach as well, there is no fixed fee valid for every design; the duration, scope and economic value of use matter.
Competent court, time limits and the foreign connection
In design disputes, as a rule, the civil courts for intellectual and industrial property rights have jurisdiction; where such courts do not exist, the designated civil courts of first instance (asliye hukuk mahkemesi) act. Territorial jurisdiction is examined under Article 156 of the SMK and the type of claim. For monetary claims of a commercial nature, mediation as a condition precedent to litigation must also be assessed. The mere fact that a file relates to a design does not subject all claims to the same procedure.
As to compensation, the statute of limitations is dealt with within the framework of the relevant law-of-obligations provisions to which Article 157 of the SMK refers. The start of the period and the effect of a continuing infringement are determined according to the specific case. The term of protection of the design and the statute of limitations for compensation are different concepts.
A registration in Türkiye does not provide protection worldwide. Where production, import or sale takes place in different countries, the territoriality of protection and the registrations effective in that country are investigated. For foreign documents, translation, representation and, where necessary, official document authentication are planned; it should not be assumed that the same certification procedure must be applied to every foreign document.
Conclusion
An effective file in a design dispute is built on a valid right, a correct visual comparison and reliable evidence. A business whose product has been copied should first verify the conditions of registered or unregistered protection; then it should choose the appropriate claims to stop the infringement and remedy the economic consequences. A business facing an infringement allegation should likewise preserve its independent development records and examples of prior designs. For both sides, examining the specific product is more valuable than general similarity comments.
Related articles: Trademark Infringement: Stopping Unauthorized Use and Compensation; Copyright Infringement: Legal Remedies for Unauthorized Use of Photographs, Videos and Text; Invalidation and Revocation of a Trademark: Unused Marks and the Correct Route of Application.
Frequently Asked Questions
Can I file an action if I have no design registration?
If the conditions and period of an unregistered design are met, protection may be sought. In addition, copyright or unfair competition provisions may be examined in the specific case; these are not automatic and unlimited alternatives.
Does changing the color of the product remove the infringement?
Not always. The subject of protection and the overall impression produced on the informed user are assessed together. The effect of minor changes depends on the characteristics of the design.
Is a registered design definitively valid?
Registration provides protection; but it does not prevent invalidity allegations. Novelty, individual character and entitlement may be examined in the proceedings when necessary.
Is a criminal case automatically opened for a design infringement?
The trademark offenses in the SMK do not apply to design infringement unchanged. The civil-law routes concerning the design right should be distinguished from other offenses that may arise separately in the case.
Sources
- Industrial Property Law No. 6769, in particular Articles 55–60, 69, 77, 81, 149–159. TÜRKPATENT legislation index; accessible text of the Law.
- Code of Civil Procedure No. 6100, Articles 389–406; Turkish Commercial Code No. 6102, Article 5/A; Code of Obligations No. 6098, Article 72. Legislation Information System.
- Court of Cassation Civil General Assembly, 01.03.2023, E.2021/11-975, K.2023/143. Compilation PDF containing the text of the decision, first decision. The reasoning and conclusion have been reviewed; it should be borne in mind that the dispute belongs to the period of Decree-Law No. 554.