ASSESSMENT OF "NOVELTY" AND "DISTINCTIVE CHARACTER" IN INDUSTRIAL DESIGNS

As the world economy has become more global towards the end of the 20th century, protection of intellectual property rights has gained a special importance for the free movement of goods. Intellectual property rights are generally organized into two categories: Copyright and industrial property. Copyright refers to the rights related to artistic and literary works whereas industrial property primarily refers to inventions, trademarks and industrial designs. As designs are intellectual outputs embodying both artistic and technical qualities, they cannot be treated as possessing purely technical or purely artistic aspects. Accordingly, assessment of designs presents different challenges in comparison to other types of intellectual property such as inventions, trademarks or artistic works. The design registration system in Turkey does not involve an examination regarding the terms of protection; it involves a formal examination and publication-opposition process managed by the Turkish Patent Institute (TPI). In a registration-without-examination system, a design may get registered although it does not meet the terms of protection, or an infringement claim may be raised. In such cases, the parties in disagreement may file an opposition to registration with TPI, or may file an invalidity case with the specialized courts. Novelty and distinctive character of a design is assessed when either of these situations occurs. When an opposition is filed, the claims and evidence concerning the novelty and distinctive character are usually presented by the design agents, and the decision is taken by the TPI Re-examination and Evaluation Board; or when an invalidity case is filed, judges, court experts and attorneys get involved in the assessment of disputed designs. This study investigates the assessment strategies employed by the parties actively involved in the assessment process. With this purpose, judges, court experts, TPI experts, attorneys and design agents were subjected to face-to-face interviews. The interviews were conducted with 51 participants in total. The aim was to investigate how these parties assessed novelty and distinctive character, and to see whether the professional background played a role in it. The paper describes the assessment strategies employed by these parties actively involved in the assessment process, and proposes two flow charts developed with a holistic approach for the assessment of novelty and distinctive character