Turkey - The new code of conduct rules on the Profession of Patent and Trademark Attorneys

Turkey has a new IP Code in force since 10 January 2017 containing provisions regarding the profession of Patent and Trademark Attorneys.

An (ad hoc) regulation in force since 18 May 2017 and issued on the basis of the new IP Code establishes the code of conduct with which Patent and Trademark Attorneys are bound.

The new IP Code and the (ad hoc) regulation on the code of conduct are set to have an important impact at the professional level as they bring new rules regarding the exercise of the profession especially from a disciplinary stand point.

Before the coming into force of the new IP Code on 10 January 2017, the situation in Turkey may be summarized as follows:

  1. absence of nationwide umbrella organization covering the profession,
  2. absence of specific act/provision for establishing such an organization and for organizing the profession in the country,
  3. absence of “code of conduct” rules for the profession,
  4. absence of sanctions and legal basis for taking disciplinary measures against professional malpractices and misconducts,
  5. absence of an officially recognized body/authority to sanction professional malpractices and misconducts and to apply the professional rules of conduct,
  6. no effective protection of the title of Patent and Trademark Attorney, for want of legal basis,
  7. no sanction against abusive or improper use of such title, for want of legal basis.
  8. no attorney/client privilege, for want of legal basis.

The new IP Code addresses only partly the above situation as it regulates points (c), (d) and (e) and leaves unaddressed points (a), (b), (f), (g) and (h) for organizing and running the profession on a countrywide basis, for the protection of the professional titles and for attorney/client privilege.

  • Patent and Trademark Attorneys – A double headed profession and regime

Since about 60% of the patent and trademark attorneys registered before the Turkish Patent and Trademark Office (Office) (priorly named Turkish Patent Institute) are also attorneys-at-law, they are to be distinguished under two groups in terms of their being attorneys-at-law or not.

 

  • Patent and trademark attorneys who are not attorneys-at-law

Before the coming into force of the new IP Code and of the (ad hoc) regulation, no “code(s) of conduct” rules existed which were applicable to patent and trademark attorneys who are not attorneys-at-law.

Accordingly, not only no disciplinary sanctions applicable against misconducts in professional activities were available for this group of attorneys but also there was no body empowered to sanction them.

  • Patent and trademark attorneys registered with the bar as attorneys-at-law

Even before the coming into force of the new IP Code and of the (ad hoc) regulation patent and trademark attorneys who are attorneys-at-law met most of the internationally accepted code of conduct criteria as they are bound by the Attorneyship Law No. 1136 and the Code of Conduct of the Union of Turkish Bars and are subject to sanctions foreseen in them through the bars they are registered with.

After the coming into force of the new IP Code and of the (ad hoc) regulation, Patent and Trademark Attorneys who are also Attorneys-at-law continue to be bound concurrently with the provisions of the Attorneyship Law and the rules of conduct of the Union of Turkish Bars.

However, to our knowledge, there are no decisions of reference indicating the applicability of the provisions of the Attorneyship Law and the Code of Conduct of the Union of Turkish Bars to the activity performed before the Office by the patent and trademark attorneys who are also attorneys-at-law.

  • New uniform rules and question marks
  • Until the coming into force of the new IP Code, the fact that patent and trademark attorneys who are not attorneys-at-law were not bound by any kind of “rule of conduct” and were not sanctionable created an enormous imbalance and ambiguity in the practice, not only for patent and trademark attorneys themselves but also for their clients and for the Office.

With the new IP Code, all the “patent” and “trademark” attorneys, irrespective of their being or not attorneys-at-law are now subject to and sanctionable on the basis of uniform rules of conduct in the exercise of their professional activity with their their peers, their clients and with the Office.

  • However, it is to be said that for some rules, such as for “advertising”, the solutions retained by the Code of Conduct of the Union of Turkish Bars and of the (ad hoc) regulation for Patent and Trademark Attorneys differ considerably.

As to the prohibition of advertising which is provided in the Attorneyship Law (Article 55), the regulation of the Union of Turkish Bars (of 21 November 2003 as amended on 07.09.2010) on “the prohibition of advertising” explicitely rules under Article 6, paragraph 5 that titles “such as patent attorney” and “trademark attorney” can not be used on the letterheads,

presentation cards and other printed material”.

Remains to be settled by case law as to how these opposing solutions will co-exist and whether they can be concurrently applicable without disadvantaging one group over the other.

This situation puts in clear disadvantage the attorneys-at-law as they are prohibited to make use in their printed material of their titles of “patent” “trademark attorney” earned through qualification exams held by the Office, which is a public body, because the use of such titles is deemed as advertising.

  • The legal frame concerning the Profession of Patent and Trademark Attorneys :

It consist of:

  • The Act No. 5000 of 6 November 2003 concerning “the establishment and duties of the Office.
  • The new Turkish Code of Industrial Property (IP Code) No. 6769, of 10 January 2017 amending the Act No. 5000 in respect of the profession.
  • The (ad hoc) regulation on “the Code of Conduct and Discipline of Patent and Trademark Attorneys” which entered into force upon its publication in the Official Gazette on 18 May 2017.

In the Turkish legislation the only provision about the profession is to be found in Law No. 5000 concerning the “establishment and duties of the Office” which under article 30 provides for the requirements for becoming Patent Attorneys and Trademark Attorneys and for the legal basis for the Office to organize the qualifying examinations.

This is the reason why the articles 181 and 182 of the new IP Code are directed to amend article 30 of the Law No. 5000 and to introduce therein a new article 30/A to address the points (c), (d) and (e).

Historically, the first text for organizing the profession on a nationwide basis is the draft law for “the protection of patents and utility models” prepared back in the 1990’s by an ad hoc commission under the aegis of the then “State Planning Authority” which included an entire chapter for the organization of patent attorneys as an autonomous body. When this text was enacted on 24 June 1994 as the Decree Law No. 544 this chapter was simply removed due to the fact that the organization of a professional body and the disciplinary sanctions it provided could not be established by Decree-Law and required an act of parliament.

On the basis of the above developpements, the first provision in the Turkish legislation concerning the patent and trademark attorneys goes back to the Decree-Law No. 544 of 24 June 1994 for the “establishment and duties of the Office” which under Article 30 rules and specifies the following:

  • The professional qualification requirements namely
  • Turkish citizenship
  • Legal/juridical capacity
  • Professional liability insurance in the amount determined by the Office
  • Domicile in Turkey
  • No criminal conviction
  • High Education of at least 4 years
  • Success in qualification examinations
  • The qualification examination separately for patent and trademark attorneys
  • Separate registers for patent and trademark attorneys
  • Acting and representation in the name of right holders before the Office limited solely to registered patent and trademark attorneys
  • Distinction between attorneys who are legal or physical persons
  • Requirement that legal person attorneys are to be represented by physical person attorneys
  • Patent and trademark attorneys are subject to the mandate provisions of the Code of Obligations
  • The persons who have served for at least 3 years in the Office as president, vice president, department chief, section chief, expert, deputy expert upon their leaving the Office have the right to exercise the profession without sitting the qualification examinations.

The article 30 of the Decree-Law No. 544 has been taken in the Act No. 5000 with the same number as Article 30, without any textual modification, but excluding its last paragraph concerning the persons having served in the Office, who are exempted from sitting the qualification examinations.

Some of our collegues, with the Office background, have shifted to private practice on the basis of said last paragraph.

  • The new IP Code contains two articles concerning the profession :

      Article 181 and Article 182

  • The new Article 181, repeats and replaces the earlier version of Article 30 of the Act No. 5000, by bringing additional precisions as to the representation of legal person attorneys by physical person attorneys, as well as their civil and penal responsibility, and by ruling that registration with the office is mandatory to exercise the profession but maintains unchanged the same professional qualification requirements and the same structural basis that existed in Article 30 when the Act No. 5000 entered into force back in 6 November 2003. That is to say that even with the new IP Code, apart from redactional differences, the structural basis of this provision has remained unchanged since the very first version of Article 30 under the Decree-Law No. 544 back in 24 June 1994.
  • In fact the major changes the new IP Code brings to the profession are in Article 182 which introduces an additional Article 30/A to the Act No. 5000. It is under this new Article 30/A that:
  • a new professional code of conduct is adopted as specified under the above mentioned

(ad hoc) regulation,

  • new sanctions are adopted against breach of professional code of conduct rules,
  • a new disciplinary board is established as an organ of the Office with power to sanction breach of professional code of conduct rules.
  • The Code of Conduct Rules

They are specified under Art. 5 of the (ad hoc) regulation. The following comperative table shows the extent with which these rules compare with the internationally recognized ones as of the prior situation as under the repealed legislation and as of the current situation with the new IP Code and (ad hoc) regulation. The table shows separately under DQ (standing for Double Qualified) the Code of Conduct Rules of the Union of Turkish Bars to which are concurrently subject the Patent and Trademark Attorneys who are also attorneys-at-law.

Turkey – Comparative Table on the Code of Conduct Rules

Internationally recognized criteria

Prior situation as of the repealed legislation

Situation as of the New IP Code and the Regulation on “the Code of Conduct and Discipline of  Patent & Trademark Attorneys”

1. Independence

YES - (DQ) Attorneyship Law Articles 1, 37; and Code of Conduct of the Union of Turkish Bars Articles 1, 2 and 38

YES
Regulation - Article 5(1)b

The attorney shall act “objectively” as a “reliable” and “independent” attorney.

2. No conflict of interests

YES - (DQ) Attorneyship Law Article 38; and Code of Conduct of the Union of Turkish Bars Articles 18, 35 and 36

YES – But

Regulation Article 5(1)b rules that the Attorney shall "act in the best interest of his/her client".

This term does not explicitely prohibit the criterion "no conflict of interest" but implies it, leaving room for interpretation.

3. Confidentiality

YES - (DQ) Attorneyship Law Articles 34, 36;  and Code of Conduct of the Union of Turkish Bars Article 37 

YES
Regulation - Article 5(1)ğ

This provision puts an obligation of confidentiality on the Attorney who is prohibited to disclose information and secrets regarding his/her client but does not in anyway involve a right benefiting his/her client in the sense of client/attorney privilege.

Attorney/client privilege

(-)

(-)

Immunity from seizure

YES - (DQ) Code of Criminal Procedure Article 130

(-)

4. Restrictions of advertising

YES - (DQ)

- Prohibition of advertising

- This prohibition extends to the use of

   titles such as “patent”, “trademark

   attorney”.

           

Attorneyship Law Article 55 ; Code of Conduct of the Union of Turkish Bars Articles 7 and 8 ; and Union of Turkish Bars Regulation on the prohibition of advertising Article 1.

Regulation - Article 5(1)

Right to advertise permitted conditionally :

- Advertising has to be truthfull, objective and respectfull of

   basic rules such as honesty, confidentiality (Article 5(1)e)

- the information given at the attorney’s premises, in the

   correspondance and in the advertising material should not

   be misleading the public Art (Article 5(1)d)

N.B.: As here reported the rules of the Attorneyship Law and of Union of Turkish Bars and of the Code of Conduct of Patent and Trademark Attorneys are opposed between outright prohibition and conditional admittance with further exceptions/limitations. Case law shall have to address this issue.

General advertisement

YES - (DQ) as above under point (4).

YES
Regulation - Article 5(1)e

With reference to the permitted right of advertising this provision contains exceptions/limitations to it namely:

-  disclosure of the name and logo of the client without

   authorization

-  trading and negociating client’s IP Rights without

   authorization

-  use of internet shortcuts with a view to direct internet  

   users to his/her own website or to another website in

   breach of unfair competition rules.

Active soliciting of work

YES - (DQ) as above under point (4).

YES - But
Regulation - Article 5(1)ç

This provision rules that "for the purpose of generating work, the attorney shall not approach potential clients with aggresive marketing methods". Here we have also room for interpretation in the sense that the active soliciting of work is prohibited to the extent "aggresive marketing methods" are used.

5. Excluded activities

   

Commercial activities as second occupation

NO - (DQ) Attorneyship Law Article 11

(-)

Employed patent attorneys in commercial enterprises

YES - (DQ) Attorneyship Law Article 12, parag. 1/c-e-f-g

(-)

Others

(-)

YES
Regulation - Article 5(1)e

This provision prohibits "the sale, purchase and negotiation regarding industrial property rights without the authorization of the right holder".

6. Professional cooperation

   

Legal structure

YES - (DQ) Attorneys-at-Law registered with the Bar are restricted to form Partnerships/Associations only with other Attorneys-at-law within the context of forms of Associations proper to the profession provided in the Attorneyship Law No. 1136, Article 44.

YES - The regulation of 27.06.2015 on the "Examination and Registration of the Patent and Trademark Attorneys" and the (ad hoc) regulation on the code of conduct rules distinguish between attorneys who are physical and legal persons. According to respective Articles (5) and (4/1-f) of said regulations, attorneys who are legal persons need to be incorporated as a limited liability company (GmbH) or as a company limited by shares (joint stock company/société anonyme).

External shareholders

NO - (DQ) Attorneyship Law Article 11

(-)

Cooperation with other  professions

NO - (DQ) Attorneyship Law Article 11

(-)

7. Liability

   

Mandatory insurance

YES - According to the regulation of 25.07.2007 on the "Examination and Registration of the Patent and Trademark Attorneys" before the Office (Articles 13/2-b and 14/2-c) all registered patent and trademark attorneys must pay the mandatory insurance determined by the Executive Board of the Office  separetely for trademark and for patent agents.   

The prior situation continues to be valid.

Restriction/exclusion of liability

YES - Principal restrictive clauses mentioned by the Office

1/ Liability matures after a court action against the Patent & Trademark Attorney awarding damages is finalized.

2/ Insurance liability is limited to the amount in the insurance policy irrespective of the number of parties benefiting from the favorable court decision.

3/ Insurance does not cover faulty, negligent acts of unlicensed persons working with or third persons connected with Patent & Trademark Attorney.

The prior situation continues to be valid.

amounts of cover to be held

YES - For each particular case maximum coverage TL. 14.500.- (circa € 4.800.-)
Yearly maximum coverage TL. 29.000.- (circa  € 9.600.-).

There is a franchise amount of USD 200.- for each case.

The prior situation continues to be valid.

insurance coverage monitored by authority/professional organization on regular basis

YES - Insurance coverage monitored yearly by the Office when renewing the registration as Patent & Trademark Attorneys. The Office will not effect the registration or renewal without the original of the insurance policy submitted to them.

The prior situation continues to be valid.

Insurance Company is obliged to communicate insurance coverage to prof. organization, esp. any lapse of coverage

(-)

The prior situation continues to be valid.

8. Fees

   

Official schedule of fees

YES - (DQ) The nationwide applied schedule of minimum fees of the Union of Turkish Bars regarding attorneys-at-law. According to Article 1 of the Schedule, the lawyer's fees can not be below the fees determined by the Schedule.

(-)

Individual agreements

YES - (DQ) Attorneyship Law Article 163, parag. 1

YES - But
Regulation - Article 5(1)h

This provision rules that "the attorney can not request a fee other than the fee for his/her services". This provision does not exclude individual agreements and contingency fees as such and leaves room for interpretation according to the circumstances of each case.

Contingency fees

YES - (DQ) Attorneyship Law Articles 47, 48 and 164 parag. 2

YES - But
Regulation - Article 5(1)h

This provision rules that "the attorney can not request a fee other than the fee for his/her services". This provision does not exclude individual agreements and contingency fees as such and leaves room for interpretation according to the circumstances of each case.


9. Professional organisations

 

No institute as the new IP Code No. 6769 and the implementing regulation do not provide a legal basis for an officially recognized national umbrella organization.

 

Statutory institution or private association?

YES - (DQ) Statutory

(-)

 

Mandatory membership

YES - (DQ) Attorneyship Law Article 67

(-)

 

Sanctions

YES - (DQ) Attorneyship Law / Chapter 10 on Disciplinary Measures and Sanctions, Articles 134 to 162

(-)

 



10. Qualification standards

     

Official qualification examination

YES - According to the regulation of 25.07.2007 on the "Examination and Registration of the Patent and Trademark Attorneys" of the Office in order to qualify to act as patent and trademark attorneys before the Office , the candidates must sit separate examinations for patents and for trademarks organized and held by the Office The Attorneys-at-law must also sit these examinations if they want to act before the Office

YES - The prior situation continues to be valid under the updated regulation on the "Examination and Registration of the Patent and Trademark Attorneys" which issued on 27.06.2015.

 

If no official exam., minimum qualification required (pls. specify)

(-)

(-)

 

Technical or scientific degree required

NO - Four years university degree.

       - No technical and scientific degree is
         required to sit the examinations for
         patent attorneys.

The prior situation continues to be valid.

 

Compulsory continuing education / extended vocational training

(-)

(-)

N.B.:  The new IP Code and the (ad hoc) regulation

on the code of conduct rules :

- are silent about compulsory continuing education /

   extended vocational training

- but provide the obligation to the attorney to have his/her
   collaborators correctly and appropriately educated in

   the  IP fields they will be specializing in. (Article 5/1-n)

 

11. Mediation

   

PA may characterize himself as "mediator" in IP matters?

YES - (DQ) The mediation act No. 6325 of 07.06.2012 permits only to the law graduates and to the attorneys-at-law or law graduate to act as mediators. As the act does not make any difference between IP and non-IP matters it is my understanding that nothing stays against a PA who is also an attorney-at-law acting under his attorney-at-law or law graduate hat as a mediator in a litigation involving IP in general or patents/utility models in particular. I would like to stress that this is my personal opinion as the act being relatively new I have no knowledge of a case regarding a double qualified PA acting as a mediator in a litigation involving IP/patents to serve as a reference.

YES – But


The new IP Law No. 6769 provides under Articles 19(4) in respect of Trademark Oppositions and 40(5) in respect of Geographical Indications Oppositions that the Office may encourage/urge the parties to settle their difference by mediation according to Mediation Act No. 6325. It is to be noted that there is no similar provision on mediation for Patents and Designs.

         

 

The code of conduct include also rules:

  • on general behavioural attitude such as:
  • the attorney shall not committ acts which may be harmful to the reputation of the profession (Regulation Article 5/1-a)
  • in his/her relations with the Office personel, the attorney shall act “curteously” and respectfull of the “honour of the profession” (Regulation Article 5/1-o)
  • in his/her business relations the attorney shall refrain from acting in a manner which does not comply with the “professional cooperation” and with the “honour of the profession” (Regulation Article 5/1-i)
  • the attorney can not make a statement, whether in written form or orally, in the name of the Office (Regulation Article 5/1-ö)
  • the attorney “can not make degrading/defaming statements/comments” regarding his/her peers (Regulation Article 5/1-j) and “can not share with the public his/her opinion on the professional behaviour and acts of his/her peer(s)” (Regulation Article 5/1-k)
  • as to the relations with the clients:
  • obligation of information which must be “timely”, “complete” and “accurate” (Regulation Article 5/1-f)
  • the attorney “can provide his/her opinion on the entrusted case” but is not allowed “to make a commitment as to the outcome of the case or of the action” (Regulation Article 5/1-ı)
  • the attorney is not allowed to accept an assignment when he/she knows upfront that he/she does not have the time or the skills to carry it out (Regulation Article 5/1-c)
  • obligation of information and obligation to take appropriate measures to protect the client’s interests when the attorney becomes incapable of professional activity, even for a transitory period, or wants to withdraw from representation (Regulation Article 5/1-g)
  • Sanctions:

4 levels of sanctions are provided, as cited under Act No. 5000. Article 30/A paragraph 2, for failure to comply with the Code of Conduct Rules in the exercise of the profession.

  • Warning in written form
  • Reprimand for cause faulty behavior
    • Attorneys having received a warning and repeating the same behavior within 2 years will be reprimanded
    • Attorneys acting in conflict of interest
  • Temporary suspension to exercise the activity of patent and trademark attorney for a period of at least 3 months and at most 1 year
  • Permanent dismissal from the profession
    • Attorneys having been sanctioned with temporary suspension and repeating similarly sanctionable behavior within 5 years will be sanctioned by permanent dismissal.
  • Disciplinary Board

The new disciplinary board is established as an internal organ of the Office and comprises 7 full and 7 substitute members, all appointed for a period of 3 years by the Minister of Science, Industry and Technology (Act No. 5000, Art. 30/A, paragraphs 7 & 8)

  • 1 member from the Ministry of Science, Industry and Technology
  • 3 members from the Office,
  • 3 members from Patent & Trademark Attorneys who have been actively excercising the profession for at least 5 years and wo have not been sanctioned,

As far as patent & trademark attorneys are concerned the President of the Office proposes the names of the candidates to the Ministry by taking into account the opinions provided by the two Chambers of Commerce and Attorney Associations having the largest membership (Act No. 5000, Art. 30/A, paragraph 7).

  • Competent Courts

The Board’s decisions, whether for sanctioning or not, can be appealed before the Administrative Courts with the last instance being the State Council (High Administrative Court).

  • Deadlines
  • Regarding the authority/competence to sanction which expires in case the investigation does not begin within 3 months from the date when the breach of the Code of Conduct becomes known and, at any case, where no sanction is decided within 2 years from the date when the breach has been committed. (Act No. 5000, Article 30/A, paragraph 3)
  • Regarding the sanctions which must be decided/pronounced within 30 days from the end of the investigation. (Act No. 5000, Article 30/A, paragraph 3)

Since the provision is silent as to what happens if the sanctions cited under Act No. 5000, Article 30/A, paragraph 2 are not decided/pronounced within 30 days from the end of the investigation there is room for interpretation as to the validity or applicability of such sanctions.

  • Regarding the forfeiture of the right of defence:

The patent and trademark attorney not having filed his/her writ of defence within the term (not less than 7 days) of reply given by the investigation officer is deemed to have forfeited his/her right of defence (Article 30/A, paragraph 5).

  • A few facts about representation:
  • Before the Office:
  • Only Patent and Trademark Attorneys registered before the Office are qualified to act before the Office in representation of their clients.
  • Attorneys-at-law are qualified to act provided they are also registered as a Patent and Trademark Attorney before the Office.
  • Registered Patent Attorneys are qualified to act before the Office in respect of patents, utility models, designs and semi-conductor topographies. (Regulation Art. 4/1-d)
  • Registered Trademark Attorneys are qualified to act before the Office in respect of trademarks, designs, geographical indications and traditional product names (Regulation Art. 4/1-ç)
  • A physical person attorney may be a partner or an employee of more than one legal person attorney firm but can use his/her authority to act as an attorney only for a single legal person attorney firm in which case he/she is prohibited to act as an independent attorney (Regulation Art. 5/1-p)
  • Before the Courts:
  • Only Patent and Trademark Attorneys who are also Attorneys-at-law are qualified to represent their clients before the Courts in their capacity of attorney-at-law.
  • Patent and Trademark Attorneys who are not attorneys-at-law do not have power of representation before the Courts. They can speak during an audience only upon invitation of the court to address specific and usually points of technical nature.

To conclude it is certainly a wellcome developpement that the new Code of Conduct rules and the establishment of the disciplinary board address the profession in its entirety. It is expected that the new rules will have a positive effect on the profession by framing the relation of “patent” and “trademark attorneys” with their clients, their peers and with the Office.

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