I. INTRODUCTION
Prior to the annulment decision of the Constitutional Court (file no. 2005/57, decision no. 2009/19, 05.2.2009), criminal sanctions stipulated in Decree-Law No. 554 on the Protection of Industrial Designs (“Decree-Law No. 554“) could be imposed on those who imitated someone else’s registered designs and sold, imported or exported these counterfeit products, or kept them for commercial purposes.
The Constitutional Court annulled the provisions of this decree-law on the grounds that decree-laws may not set forth criminal definitions since it would be contrary to the principle of legality. Despite lawmakers’ efforts to close this gap with various legislative amendments, the Decree-Law No. 554 was repealed by Industrial Property Law No. 6769 (“Law No. 6769“) on 10.01.2023. Although the new legislation contains legal protection provisions regarding the infringement of registered designs, it does not define any offense.
In this article titled “Analysis of Design Rights Infringements Under Criminal Law”, we will analyze whether the acts that infringe design rights could be penalized under Law No. 6769, Turkish Commercial Code No. 6102 (“Code No. 6102“) and Law No. 5846 on Intellectual and Artistic Works (“Law No. 5846“).
II. CONCEPT OF DESIGN AND ACTS DEEMED AS INFRINGEMENTS OF DESIGN RIGHTS
The term “design” derives from the Latin word “designare“, which means to give form, to represent. Article 55/1 of Law No. 6769 defines design as “the appearance of the whole or a part of a product resulting from the features of, the line, contour, color, shape, material or texture of the product itself or its ornamentation”.[1]
Under Turkish law, designs were protected by Decree-Law No. 554 of 1995; however, the Constitutional Court decided to annul the criminal sanctions stipulated in that law for acts deemed as infringements of design rights (file no. 2005/57, decision no. 2009/19, 05.2.2009).
With the enforcement of Law No. 6769, the definition of design in Decree-Law No. 554 was preserved, and while the relevant criterion was “perception by human senses” in Decree-Law No. 554, it was “appearance” in Law No. 6769.
Article 81 of Law No. 6769 lists acts deemed as infringements of design rights as follows: to produce, put on the market, sell, offer for contracting, import, use for commercial purposes or stock for those purposes, market in other ways or import a product that is identical to another product or so similar to the other product that it is indistinguishable from it in terms of its general impression, where a design protected under the provisions of Law No. 6769 is used or applied without the consent of the right holder; to broaden the rights granted by the design owner through licensing or to transfer these rights to third parties; and to disseize the rights pertaining to a design.
III. ANALYSIS OF ACTS DEEMED AS INFRINGEMENTS OF DESIGN RIGHTS UNDER LAW NO. 6769, CODE NO. 6102 and LAW NO. 5846
1. Analysis of Acts Deemed as Infringements of Design Rights Under Law No. 6769
Law No. 6769 regulates the acts deemed as infringements of registered or unregistered design rights. The law penalizes some of the acts deemed as infringements of trademark rights and, in Article 30/1, the use of an identical, imitated or similar trademark, the sale and production of products, and other similar commercial activities.
In contrast, Law No. 6769 does not penalize the infringement of registered or unregistered design rights and patent and utility model rights protected under the same law. Thus, these acts are not among the acts that are investigated or prosecuted under the law.
In other words, Law No. 6769 does not penalize the production and sale to the market of the same or imitation of registered or unregistered designs, patents and utility models as well as other commercial activities involving them. In face of actions that do not constitute a crime, the owners of design rights may defend their rights against criminal acts before the civil courts and may file a lawsuit for legal compensation liability. These civil lawsuits may lead to confiscation of and destruction of goods, confiscation of the tools used to produce goods, and their destruction or transfer to the person whose rights have been violated. It is clearly understood from the wording of the law that although the competent authority regarding the remaining issues is a civil court, the Chief Public Prosecutor’s Offices do not have the authority and duty to take any action regarding the requests to be made in this regard.[1]
2. Analysis of Acts Deemed as Infringements of Design Rights Under Code No. 6102
Article 55/4 of Code No. 6102 lists the production of counterfeit products as an example of unfair competition, referring to the act of “taking measures that lead to confusion with the goods, products, activities or works of others…” In Article 62, the Code states that the acts listed in Article 55 shall constitute the offense of “unfair competition”. There, the article stipulates that the perpetrators of the offense will be punished by stating that “…upon the complaint of one of those who have the right to file a civil lawsuit pursuant to Article 56, they shall be punished with imprisonment for up to two years or a judicial fine for the acts falling within the scope of each subparagraph.” In addition, Article 63 sets forth that security measures specific to legal entities will be applied if the offense is committed as part of the activities of a legal entity.
At this point, we may need to question whether the acts deemed as infringements of design rights can be considered as unfair competition offenses regulated under Code No. 6102. Article 62 of Code No. 6102, which entered into force upon publication in the Official Gazette on 14/02/2011, regulates the punishment of the persons who commit the unfair competition acts listed in Article 55. In this context, we should evaluate whether the infringement of registered design rights will fall within the scope of Article 55 of Code No. 6102 in view of the decisions of the Criminal Chambers of the Court of Appeals. Accordingly, it is seen that there are no criminal sanctions in special laws for infringement of rights in registered designs, unregistered designs, patents and utility models. Given the legislative amendments over the years regarding the acts of design rights infringements, the lawmaker does not consider the act of design infringement as a legal interest that should be protected under criminal law since this act is not regulated as a crime under Law No. 6769. Therefore, the relevant acts also cannot be treated as unfair competition offenses.
The judgments of the 15th and 19th Criminal Chambers of the Court of Appeals indicate that the infringement of design rights does not constitute any crime, including the crime of unfair competition (file no. 2019/4819, decision no. 2019/7682, 09.07.2019; and file no. 2015/17707, decision no. 2016/22561, 17.11.2016).[1]
3. Analysis of Acts Deemed as Infringements of Design Rights Under Law No. 5846
Article 4 of Law No. 5846 defines works of fine art as follows: “Works of fine art are: 1. Oil and watercolor paintings; all kinds of pictures, designs, pastels, engravings, manuscripts and gilding, works drawn or fixed with mineral, stone, wood or other substances by scratching, engraving, tapping or similar methods, calligraphy, screen printing, 2. Statutes, reliefs and carvings, 3. Works of architecture, 4. Handicrafts and minor works of art, miniatures and products of decorative art, and textile and fashion designs, 5. Photographic works and slides, 6. Graphic works, 7. Cartoon works, 8. All kinds of typing, with esthetical value. The usage of sketches, pictures, models, designs and similar works as industrial models and pictures does not affect their title as intellectual and artistic works.”
In the doctrine, Prof. Dr. İsa Eliri states that engravings on jewelry such as bracelets, rings, necklaces, etc. should be protected as works of fine art under the Law on Intellectual and Artistic Works in a doctoral thesis titled “Güzel Sanat Eserlerinde Fikri Mülkiyet Hakları ve Uygulamaları”.[1]
Articles 4/2 and 4/4 of Law No. 5846 clearly set forth that handicrafts and minor works of art, fashion designs, reliefs and carvings will be protected under the Law as works of fine art.
In addition, Article 71/1 of Law No. 5846 regulates that the following acts will constitute the crime of publication and public release of works without the authorization of the author: processing, reproducing, distributing copied works, and publicly transmitting (via signal, sound, or image) performances, phonograms, or productions without the written permission of the right holders.
As mentioned above, certain decisions of the Criminal Chambers of the Court of Appeals state that the acts deemed as design rights infringements are not regulated as a crime under Law No. 6769 and that these acts will also not give rise to the offense of unfair competition in view of the will of the lawmaker. However, in the investigations and prosecutions carried out by evaluating the characteristics of a specific case, an expert review should be performed to determine whether the relevant design is a work of fine art under Law No. 5846, and the case should be evaluated based on the findings.
IV. CONCLUSION
In this article, we have provided an overview of the concept of design and the acts that constitute design rights infringements. In addition, we have analyzed whether those acts can be penalized under Law No. 6769, Code No. 6102 and Law No. 5846 in light of case law of the Criminal Chambers of the Court of Appeals and doctrinal opinions.
The case law of the Court of Appeals suggests that the acts that infringe design rights do not constitute a crime under Law No. 6769 and Code No. 6102, and there is a gap in the law on this issue. However, in order to sustain economic, social and commercial activities and encourage registered designs in our country, we believe that design rights infringements should be regulated under criminal law in parallel with the regulations regarding trademark rights infringements, and that an assessment should also be made in accordance with Law No. 5846 in relevant investigations and prosecutions until the enactment of legislative amendments in this regard.
B. Batuhan Birtane, Senior Associate
