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08.05.2020

Intellectual Property Clause (employment) Q&A: Turkey

Intellectual Property Clause (Employment) Q&A: Turkey

by Zeynep Ünlü and Burcu Çınar, BTS&Partners

Country Q&A | Law stated as at 31-Mar-2020 | Turkey (Published on Thomson Reuters)

IP clause

1. Is a clause such as Standard clause, Intellectual property clause (employment): International included in the terms of employment between employers and employees in your jurisdiction where the employer wants to protect any IP created by an employee? Including a clause in an employment contract for the protection of any intellectual property (IP) right created by the employee is a standard practice in Turkey.

Inventions

2. In the absence of a specific provision in the employee’s terms of employment, who owns and can patent any invention that the employee creates during the course of their employment? Inventions created by an employee during the course of employment is regulated under the Regulation on Employee Inventions. The provisions of this Regulation are mandatory and may not be altered for the disadvantage of the employee in the employment contract. According to the Regulation on Employee Inventions, the employee owns the invention created during the course of employment; however, they must notify the employer in writing regarding the invention without undue delay. Following the notification, the employer may request partial or full rights to the invention from the employee within four months following the notification by the employee. If the employer requests full rights to the invention, title to the invention is transferred to the employer as soon as such request is received by the employee, and the invention is deemed as an employment invention that the employer can patent.If the employer only asks for partial rights or fails to respond within four months following the notification, the invention is then deemed as a free invention and title stays with the employee, thus the employee can patent the invention. The employee must not patent the invention before the notification to the employer is made and a response is received from the employer. If the employee files a patent application before notifying the employer, the employer may file a lawsuit against the inventor employee.(For details of remuneration of the employee for rights to the invention, see Question 32.)

3. Would your answer to Question 2 above be different if the employee created the invention outside of working hours and/or using their own premises, resources and equipment? In order for an invention to qualify as an employment invention, it must either be created as part of the employee's duties or during the course of employment, and be based on the experience of and work carried out by the employer (Article 4, Regulation on Employee Inventions). Therefore, even if the employee creates the invention outside working hours and using their own premises, resources and equipment, the invention will be deemed an employment invention and the employer will have the power to claim full rights to the invention if it is created in close connection to the employee's duties (based on the experience gained at the workplace and work carried out at the office).

4. Is there any wording that should be included to ensure that any statutory requirements are met for the employer to be the owner of an invention by their employee in your jurisdiction? Since the employer is entitled to request the full rights to the invention by law (as long as the invention is created during the course of employment and based on the experience of, and work carried out by, the employer or the employee’s duties), even without any agreement the employer will receive a title to the employment invention. Therefore, no agreement and hence no wording need be included in the employment contract.

5. In the event of a dispute over ownership of an invention, and in particular whether it was created during the course of employment, what would the courts look at to determine whether the employer is entitled to the invention? Any dispute in relation to the application of the Regulation on Employee Inventions should be settled by arbitration, even in the absence of an arbitration agreement between the parties (Article 24(4), Regulation on Employee Inventions). In the absence of an arbitration agreement, the Turkish Law on International Arbitration or the related provisions of Turkish Civil Procedure Law will apply. Before obligatory arbitration was introduced (by the Regulation on Employee Inventions which came into force on 29 September 2017), disputes on employment inventions were settled by the courts. However, in deciding title to the invention, the Turkish courts, including the High Court of Appeal, would not look into the case in detail but rather would examine: Whether the invention closely relates to the work carried out in the workplace of the employee.Whether the invention was made during the course of employment.

Copyright

6. In the absence of a specific provision in the employee’s terms of employment, who will own the copyright in anything that the employee produces during their employment? The owner of the copyright is the creator of the work that is subject to the copyright (Article 1(B)(b), Intellectual and Artistic Works Act). Therefore, the employee, regardless of the employment relationship, will be the owner of the work. However, Article 18(2) of the Intellectual and Artistic Works Act states that the employer is authorised to use the financial rights of the works created during the course of employment (as part of the employee’s duties) unless otherwise anticipated due to the nature of the employment. For example, while the employer has the right to benefit financially from (use the financial rights in relation to) an architecture project created by an employee architect, the employer will not have any rights whatsoever on a drawing the employee architect has made during the course of employment. It should be noted that, for example, the line between a drawing and an architecture project is not always easy to determine, and the case law is not entirely consistent regarding the application of Article 18(2).

7. Would your answer to Question 6 above be different if the employee produced the copyright work outside of working hours and/or using their own premises, resources and equipment?The employee would own the copyright, if they created the copyright work outside the working hours and using their own premises, resources and equipment.

Trade mark

8. In the absence of a specific provision in the employee’s terms of employment, who is entitled to apply to register any trade mark that the employee creates during their employment? The employer entity can register the trade mark if it is using the trade mark to distinguish products and/or services from others (Article 7, Industrial Property Law). Under Turkish Law, a trade mark can be regarded as an IP right in the traditional sense only after registration. That is why the owner of the trade mark is the person who registers the trade mark. An unregistered trade mark can only be protected under the unfair trade provisions at Articles 54 to 64 of the Turkish Commercial Law. These are aimed at establishing and maintaining a fair trading environment to best preserve the interests of the consumer, and focus mainly on deception and defamation. To be entitled to damages or an injunction, the claimant must prove the damages such behaviour has already caused or will likely cause, whereas a registered trade mark grants the ultimate protection for the benefit of its owner. Even then, it is very hard to establish the ownership of a trade mark by an employee, because the legislation on trade marks is based on the idea of an economic unit which is using the trade mark to distinguish its products and services from other entities' products and services. Prior to registration, the issue of ownership between an employee and their employer can be dealt with under specific provisions of other IP rights if the identifiable sign, design, symbol, and other things to be registered as a trade mark is subject to another IP right, such as a copyright. In fact, Article 6(2) of the Industrial Property Law provides that if an agent applies for registration of a trade mark without the consent of the trade mark's owner, the trade mark owner (economic entity) can request the refusal of such application.

Definitions

9. Is the definition of “Employment IPRs” in Standard clause, Intellectual property clause (employment): International valid in your jurisdiction? This definition of “Employment IPRs” in Standard clause, Intellectual property clause (employment): International is valid and commonly used in Turkey.

10. Is it advisable in your jurisdiction to include in the definition of “Employment IPRs” the IPR that may not necessarily come into existence whilst the employee is carrying out their regular duties but nonetheless arises during their employment? The clause on the "Employment IPRs" appears to be drafted in a way to cover the IPRs that come into existence not specifically whilst carrying out regular duties but which nonetheless arise during their employment.However, it must be stressed that as long as the invention is closely linked to the employee's duties in the workplace (or if the invention is created by the employee during their employment, based on the experience of and work carried out by the employer), the invention will be deemed an employment invention (Article 4, Regulation on Employee Inventions), thus the employer has the power to claim full rights to it. Therefore, even in the absence of such definition, Turkish legislation and case law is wide enough to cover most of the inventions created during the course of employment.

11. Is the definition of “Intellectual Property Rights” in Standard clause, Intellectual property clause (employment): International valid in your jurisdiction? This definition of “Intellectual Property Rights” in Standard clause, Intellectual property clause (employment): International is valid under Turkish law. However, for the effective transfer of the financial rights in copyright, the works related to the rights to be transferred must be defined explicitly and separately. An assignment of “all copyrights” or “all financial rights related to all works” an employee owns will be deemed invalid under Article 53 of the Intellectual and Artistic Works Act. All financial rights subject to assignment should be explicitly (one by one) specified in the written agreement. These may include the right: To adapt the work.To reproduction.To distribute.To represent.To communicate the work with public via signs, audio and/or visuals.(Articles 20-25, Intellectual and Artistic Works Act.) If the assigned financial rights are not clearly determined and if the scope of the assigned financial rights is vague, the rights overreaching the aim and scope of the transaction shall not be assigned. This is specific to the assignment of the copyright, and, under Article 18(2) of the Intellectual and Artistic Works Act, the employer has the power to use the financial rights on any work that is created during the course of employment (as part of the duties of the employee) unless otherwise anticipated due to the nature of the employment (see Question 6).

12. Do all the rights listed in the definition of “Intellectual Property Rights” in Standard clause, Intellectual property clause (employment): International arise in your jurisdiction? Rights in get-up is not itself a recognised right under the Turkish legislation. That is why the look and feel of a product can only be protected under unfair competition provisions (Articles 54-65, Turkish Commercial Law). These provisions will not grant a property right but rather authorise the person who has suffered losses from unfair competition to claim damages from the infringer. Accordingly, the one who incurs losses is entitled to claim damages under unfair competition provisions. It should be noted that the definition of copyright material, “work”, under Article 1(B)(a) of the Intellectual and Artistic Works Act is broad, and would probably include the concept of rights in get-up.

13. Is it permissible to include rights that will subsist in the future in the definition of “Intellectual Property Rights”? It is permissible to include future rights in the definition of the “Intellectual Property Rights”. However, Article 48 of the Intellectual and Artistic Works Act states that future employment IPR may not be subject to assignment. On the other hand, Article 50 of the Intellectual and Artistic Works Act provides that undertakings on the assignment of future employment IPR are valid. However, such an undertaking does not constitute an assignment of future rights. In other words, those agreements cannot be enforced to claim specific performance of the assignment and thus to claim rights to the future works, but would provide the transferee with grounds for a compensation claim for breach of contract.

14. Are there any other rights in your jurisdiction that should be included in the definition of “Intellectual Property Rights” in Standard clause, Intellectual property clause (employment): International? Rights in utility models may also be included in the definition of “Intellectual Property Rights”.

Assignment of IPR

15. In your jurisdiction, can the IP rights, inventions and materials set out in Standard clause, Intellectual property clause (employment): International: clause 1.2 be stated to automatically belong to the employer, without any further steps being taken by either party? IP rights, inventions and materials do not automatically belong to the employer under Turkish law. Automatic assignment of the copyright on the work created by the employee is not possible, since the ownership of the copyright belongs to the employee upon creation and can only be transferred through a written assignment agreement; however, the employer automatically has the power to use the financial rights related to the copyright (see Question 6). Ownership of inventions is transferred only after a notification of the invention is made to the employer and the employer requests full title to it. Yet, it must be stressed that upon receipt of such request by the employee, the title to the invention then automatically transfers to the employer without any further step needing to be taken (see Question 2). These are specific requirements for the benefit of the employee that cannot be superseded by contract.

16. Can the employer create an effective assignment of the Employment IPR in its terms of employment with its employees as set out in Standard clause, Intellectual property clause (employment): International: clause 1.3(a)? A clause in the employment contract specifying the employee’s agreement to the assignment of the employment IPR to the employer would be valid and enforceable. However, such a clause would only be valid in terms of the financial rights to the employment IPR, and would not affect the moral rights, due to the untransferability principle of moral rights under Turkish law (see Question 6).

17. Is the language used at Standard clause, Intellectual property clause (employment): International: clause 1.3(a) sufficient to constitute an assignment from the employee to the employer of all Employment IPRs, present and future? If not, how does this need to be amended in order to be valid and enforceable in your jurisdiction? The language used at Standard clause, Intellectual property clause (employment): International: clause 1.3(a) is sufficient for the assignment of financial rights of the present employment IPRs from the employee to the employer. Moral rights are not transferrable under Turkish law, thus such language would not effect any assignment of moral rights (see Question 16). Article 48 of the Intellectual and Artistic Works Act states that future employment IPR may not be subject to assignment. On the other hand, Article 50 of the Intellectual and Artistic Works Act provides that undertakings on the assignment of future employment IPR are valid. However, such an undertaking does not constitute an assignment of future rights. In other words, those agreements cannot be enforced to claim specific performance of the assignment and thus to claim rights to the future works, but would provide the transferee with grounds for a compensation claim for breach of contract (see Question 13). In this respect, since Standard clause, Intellectual property clause (employment): International: clause 1.3(a) designates that the employee agrees to assign future employment IPR, such language is sufficient to be valid.

18. Is the concept of the employee holding any IP rights, inventions or materials “on trust” for the employer, if they do not automatically vest in the employer as set out in Standard clause, Intellectual property clause (employment): International: clause 1.3(b) recognised in your jurisdiction? The employee must notify the employer regarding any invention made during the course of employment without any delay as per the Industrial Property Law, and if the employee fails to do so, they must compensate the employer for losses it suffers as a result of this breach of duty (see Question 2). The employer automatically has the right to use the financial rights associated with the copyright material created by the employee (as part of the employment). However, if the employer wishes, it may request an “on trust” provision for the assignment of the title. Still, the assignment of the title of a copyright would transfer the financial rights to it (which the employer has the right to use anyway even without the assignment) and only the use of moral rights to it. Moreover, the below would still apply. If, instead of notifying the employer, the employee applies for a patent or transfers the right to apply for a patent to any third party, the employer is entitled to sue for the transfer of the title to itself (Article 5(7), Regulation on Employee Inventions). As a result, a contractual commitment to hold the employment IPR on trust only constitutes a restatement of the existing statutory duty. Besides, as the IPR, essentially, do not have a physical form and can be transferred via a written assignment (therefore cannot be held in escrow), a contractual duty to hold the IPR on trust would practically only give rights to compensation if the owner of the IPR (the employee) breaches such obligation but would not grant any rights to claim the title before the third person who has acquired the said IPR in good faith.

19. If holding “on trust” is not recognised in your jurisdiction, is there any equivalent wording or concept that could be used in Standard clause, Intellectual property clause (employment): International: clause 1.3(b) to increase the protection available to the employer in respect of the IP rights, inventions and materials that have not automatically vested in the employer and that are yet to be assigned to them? N/A (see Question 18).

Obligations on employees

20. Are the obligations on the employee as set out in Standard clause, Intellectual property clause (employment): International: clause 1.4 valid and enforceable in your jurisdiction? Such obligations on the employee would be valid and enforceable under Turkish law. In fact, the duty to notify the employer (both for free inventions and employment inventions created during the employment) is a statutory duty for the employee (see Question 2).

21. Is the specific confidentiality obligation as set out in Standard clause, Intellectual property clause (employment): International: clause 1.4(d) recommended in your jurisdiction so as to maintain the ability for an invention to be patentable? The specific confidentiality obligation set out in Standard clause, Intellectual property clause (employment): International: clause 1.4(d) is recommended, because under Turkish Law the invention needs to remain “novel” for it to be patentable (Article 83, Industrial Property Law). Therefore, it is essential that the confidentiality of the invention is maintained so that the novelty element exists. However, an employee is under the duty of confidentiality for the benefit of their employer as part of their loyalty obligation under Article 396 of the Turkish Code of Obligations. That is to say, even in the absence of such a specific confidentiality obligation, the employee is obliged to act in accordance with the employer’s interests.

Moral rights

22. Does your jurisdiction recognise moral rights? If not, is there an equivalent personal right that accrues in your jurisdiction to the author of a copyright work? Yes, the Intellectual and Artistic Works Act recognises moral rights (Articles 14-17).

23. If the answer to the question above is “yes”: a) How are these rights defined?b) What do they comprise?c) If copyright is registrable in your jurisdiction, can these rights be registered or recorded against the copyright work? “Moral rights” is a legal term which represents the immaterial aspect of the work and the personal relationship built between the author and their work. There is no definition of moral rights under Turkish law. Rather, the Intellectual and Artistic Works Act provides a list of the moral rights recognised in Turkey. Moral rights comprise: The right to disclose the work to the public (Article 14).The right to claim authorship of a work (Article 15).The right to oppose any modifications in (to protect the integrity of) the work (Article 16).The right to access the original version of the work, the right to display the work, and the right to prevent the destruction the work (Article 17).Although it is not a legal requirement, copyright is registrable upon the author’s request under Turkish law (Article 13(3), Intellectual and Artistic Works Act). However, it should be noted that film producers that make the first fixation of films and phonogram producers that make the first fixation of sounds must record and register their productions containing cinematographic and musical works in order to prove their rights to the said work and prevent any violations of those rights (paragraph 3, Article 13, Intellectual and Artistic Works Act). Still, this registration requirement does not have any effect as to the ownership of the work and existence of the copyright: the whole point of registration is to facilitate effortless proof.

24. In your jurisdiction, do moral rights (or equivalent) arise automatically upon creation of the copyright work, or must the author assert them in order for them to take effect? Moral rights arise automatically upon creation of the copyright work (see Question 23).

25. Can present moral rights (or the equivalent) be waived in your jurisdiction as set out in Standard clause, Intellectual property clause (employment): International: clause 1.5? It is not possible to waive present moral rights under Turkish law.

26. Can future moral rights (or the equivalent) be waived in your jurisdiction as set out in Standard clause, Intellectual property clause (employment): International: clause 1.5? It is not possible to waive future moral rights under Turkish law.

27. Who can waive moral rights (or the equivalent) in your jurisdiction? N/A

28. In your jurisdiction, if the copyright owner can waive moral rights (or the equivalent), do they need to: a) Obtain the author’s consent, orb) Give the author prior notice, before doing so? N/A

29. Can moral rights (or the equivalent) be licensed or assigned in your jurisdiction? Under Turkish law, moral rights are strictly attached to the author. Therefore, unlike financial rights, moral rights cannot be assigned. However, they can be licensed in the broad sense of a licence agreement, as Article 19(1) of the Intellectual and Artistic Works Act implicitly allows the author to transfer the power to use the moral rights to the copyrighted work to a third party.

30. If moral rights (or the equivalent in your jurisdiction) can be licensed or assigned: a) Is the author the only party entitled to license or assign them or (if not the same person) is the copyright owner also entitled to?b) If the copyright owner is also entitled, do they need to obtain the author’s consent, or give them prior notice, before granting the licence or making the assignment?c) Are any terms or conditions typically placed upon the third party receiving the benefit of any such licence or assignment? It is for the author but not the copyright owner to issue such “licence” to the use of moral rights, since they are regarded as being strictly linked to the author’s personality. The author will always have the right to prohibit any alterations to their work even when the power to use the moral rights are transferred to a third person. There are no terms and conditions typically placed upon the third party. However, as a general comment, a licence issued under Turkish law should explicitly state the rights that are licensed to the licensee.

Compensation

31. In your jurisdiction, is the employee entitled to any compensation from the employer if the employer registers or exploits (by licensing or assigning to third parties, or granting security over) any IP that has been created by the employee during their employment? The employee is not entitled to any compensation in relation to a work created within the scope of the Intellectual and Artistic Works Act. In case of inventions, the employee may ask for remuneration for the benefits gained from the inventions (see Question 32).

32. If so, what and how much compensation is the employee entitled to in your jurisdiction? The authority to exercise financial rights over the works belongs exclusively to the author (Article 18, Intellectual and Artistic Works Act). However, as stated in the second paragraph of Article 18, unless the contrary is implied by the contract executed between the employee and the employer or the nature of the employee’s duties, the employer is entitled to use the financial rights to the works created during the course of employment. Hence, the employee will not be entitled to any compensation due to the employer’s statutory right to use the financial rights to the works created by the employee. The employee may ask for a payment as remuneration for the employer’s use of the invention, if the employer has claimed full or partial title to it (Article 7, Regulation on Employee Inventions). The amount to be paid as remuneration for rights to the invention, will be determined by taking into account: The economic value of the employment invention.The nature of the employee’s duties.The employer’s contribution to the invention.(Article 10, Regulation on Employee Inventions.) The method of calculation of the price is specified in Article 21 of the Regulation on Employee Inventions. The price will differ in accordance with the profit gained by the employer from the invention, and the profit gained from the invention will differ depending on the employer’s usage of the invention. However, in any case, if the profit earned from the employment invention exceeds 150,000 times the net minimum wage (approximately TRY349 million), the employer will not be required to pay the amount above TRY349 million (Article 21(2), Regulation on Employee Inventions). Further, in addition to such remuneration payment, the employer must pay a bonus to the employee if the employer claims full title to the invention. Such a premium payment made to the employee as an incentive for their employee invention and such amount to be paid as a premium cannot be less than the net minimum wage. It must be paid within two months after the invention has been notified to the Turkish Patent and Trademark Institution (Article 7(2), Regulation on Employee Inventions).

33. In your jurisdiction, can a clause such as Standard clause, Intellectual property clause (employment): International: clause 1.6 be included in the terms of employment to establish that no compensation other than that contained in the agreement will be payable to the employee in respect of any IP rights?Yes, such a clause may be included in the employment contract and it will be enforceable. However, if the employee creates an employment invention and the employer requests full title to such invention, the employer must by law pay a bonus arising out of law (see Question 32).

Further assurance

34. Is the undertaking given in Standard clause, Intellectual property clause (employment): International: clause 1.7 valid and enforceable in your jurisdiction, that is, an undertaking to execute all documents and do anything to assist in vesting the IP rights in the employer? Although moral rights cannot be assigned or waived under Turkish law, it is possible to assign the financial rights of the work. Therefore, the employee’s undertaking to execute all documents and do anything to assist in vesting the IP rights in the employer would be valid and enforceable for the financial rights of the work, but not for the moral rights of the work. For the employee inventions, if the employer claims full rights to the invention, the employer is under a duty to apply for patent protection unless such an application contradicts its business interests (for example, because it wants to keep the formula as a business secret and not to make it public) (Article 116, Industrial Property Act). In such a case, the employee is under a duty to help with the application process and share the necessary information with the employer (Article 119, Industrial Property Act). Therefore, such an undertaking as given in Standard clause, Intellectual property clause (employment): International: clause 1.7 would be valid and enforceable. For trade marks, it is unlikely for the employee to register a “trade mark” because it is closely linked to the business not a person (see Question 8). In any case, such a clause would be valid and enforceable.

35. Is it permissible in your jurisdiction for future assignments to be included in such an undertaking as set out in Standard clause, Intellectual property clause (employment): International: clause 1.7? To give an undertaking on the future assignment of the financial rights of the work is valid and enforceable (Article 50, Intellectual and Artistic Works Act) (see Question 13 for more detail). This only relates to the future assignment of financial rights, since the assignment of moral rights is not permissible under Turkish law. To give an undertaking on the future assignment of inventions will be valid and enforceable. However, the assignment cannot be automatic, and the procedure set out in Question 2 and Question 15 should be followed. Also, the inclusion of an undertaking for future assignments of trade marks in the employment contract would be valid and enforceable (see Question 8 for more detail).

36. Is it usual in your jurisdiction for the employer to agree to reimburse the employee for expenses incurred in complying with this undertaking as set out in Standard clause, Intellectual property clause (employment): International: clause 1.7? It is not a common practice to include a reimbursement clause, but it is valid and enforceable since it is to the benefit of the employee.

37. Is the term “best endeavours” as set out in Standard clause, Intellectual property clause (employment): International: clause 1.7 understood in your jurisdiction? If not, is there an alternative or equivalent concept? This is not a common concept used in practice; but “best endeavours” would be valid and enforceable.

Assistance with infringement claims

38. Is Standard clause, Intellectual property clause (employment): International: clause 1.8 permitted and commonly included in terms of employment with employees in your jurisdiction to try to ensure that the employee gives valuable witness evidence as required by the employer in any IP litigation that arises around the world, even after their employment with the employer has come to an end? This clause requiring the employee to assist in any IP litigation would be permitted, but it is not commonly included in Turkish employment contracts.

39. What are the main defences to copyright and design right infringement claims in your jurisdiction? On a case-by-case basis, the main defences to copyright infringement are as follows: Expiration of the period of the copyright (70 years following the death of the author for real persons, 70 years following the publication of the work for legal person-owned works) (Article 27, Intellectual and Artistic Works Act). Use of copyrighted material once its protection period has expired will not constitute an infringement.Use for public order or public interest (Article 30, Intellectual and Artistic Works Act).Giving news and information (applies to speeches and addresses made in the Grand National Assembly and at other official assemblies and congresses) (Article 32, Intellectual and Artistic Works Act).Use for non-commercial and educational purposes (Articles 33 and 34, Intellectual and Artistic Works Act)Quotation (Article 35, Intellectual and Artistic Works Act).Contents of newspapers, (Article 36, Intellectual and Artistic Works Act).Personal use (Article 38, Intellectual and Artistic Works Act).Reproduction of works of fine art that are permanently placed on public avenues, and exhibition of fine arts by the owner of the work (unless otherwise is explicitly stated by the author of the work) (Article 40, Intellectual and Artistic Works Act).Contractual authorisation by the author (or the authors’ collecting society) in exchange for a commercial rights fee to be paid for the display of the fine arts (such as music, movies, and so on) in public places such as doctors’ offices, or restaurants (Article 41, Intellectual and Artistic Works Act).Interests of disabled persons (Additional Article 11, Intellectual and Artistic Works Act).On a case-by-case basis, the main defences to design infringement are as follows: Registration of the design right. (Design rights may also be registered to the Turkish Patent and Trademark Institution by the owner. If design rights are registered, the owner can protect its right against third parties by showing the registration.)Personal use (private and non-commercial purposes) (Article 59, Industrial Property Law).Use for educational or quotation purposes, provided that the ordinary usage of the design is not jeopardised, and references to the original author were made (Article 59, Industrial Property Law).Independent creation of the allegedly infringing work, provided that it would have been impossible to know via reasonable methods that the allegedly infringed work was registered (Article 59, Industrial Property Law).

40. Is the defence that the allegedly infringing work was independently created, and that it is a mere coincidence that it resembles closely the claimant’s copyright work or design, available in your jurisdiction (see Standard clause, Intellectual property clause (employment): International: clause 1.8)? If the allegedly infringing work or design was created independently, and accidentally resembles to the infringing work or design, this defence may be accepted by the court. However, if the infringing work may be established to be publicly known through a reasonable search, then such a defence should not be deemed as a strong argument (Article 59, Industrial Property Act).

41. In practice, how difficult would Standard clause, Intellectual property clause (employment): International: clause 1.8 be to enforce in your jurisdiction? This is enforceable and indeed is in compliance with the legal requirements.

Powers of attorney

42. Can the employee appoint their employer as their attorney in Standard clause, Intellectual Property clause (employment): International for the purpose of executing any documents that might be required in relation to the IPR under this clause? Under the freedom of contract principle, the employer and employee may agree such a clause but in general practice, these types of clauses are not included in standard contracts in Turkey.

43. Are there any formalities that must be adhered to in relation to the creation or execution of such a power of attorney to ensure that it is valid and enforceable in your jurisdiction? The Turkish Code of Obligations does not specify any requirement as to the form of a power of attorney agreement. There is no requirement of form in order for a power of attorney agreement to be duly executed. However, for practical reasons, it is advisable to notarise the power of attorney at a public notary, especially when representation is to be made before a public institution. That way, the addressee of the power of attorney will be able to rely on the authentication of the signatures, and thus the existence of an attorney relationship. Execution and other formalities

44. Do the terms of employment/contract into which Standard clause, Intellectual Property clause (employment): International is inserted need to be executed in any particular manner in order for the assignment set out in this standard clause to be valid and enforceable in your jurisdiction? All agreements and acts of disposal on the assignment of financial rights in intellectual and artistic works must be in writing in order to be valid and enforceable (Article 52, Intellectual and Artistic Works Act). Hence, a clause in an employment contract (which must also be in writing to be valid) designating the assignment of financial rights satisfies the requirement of written form. If the requirement of written form is not abided by, the assignment of financial rights is deemed to be void.In addition, transfer of the rights under Industrial Property Law is subject to notarization (Article 148, Industrial Property Law) (see Question 8). There are no formalities for execution in relation to inventions.

45. If Standard clause, Intellectual Property clause (employment): International is included in the employee’s terms of employment/contract in your jurisdiction, are there any other specific execution or registration formalities or other requirements that would be necessary for this clause to be valid and enforceable? There are no other formalities for this clause to be valid and enforceable, and there are no other requirements. However, please note that a patent application to the Turkish Patent and Trademark Institution should be made for the inventions following the assignment of the title to the employer (see Question 2 and Question 34 for more detail). General

46. Are any of the clauses set out in Standard clause, Intellectual property clause (employment): International not legally valid and enforceable or not standard practice in your jurisdiction? The clauses set out in Standard clause, Intellectual property clause (employment): International may be included in the employment agreement; however, the “waiver of moral rights” and “assignment of moral rights” clauses are not legally valid and enforceable under Turkish legislation.

47. Are there any other IP clauses that would be usual to see in such standard IP clauses and/or that are standard practice to include in your jurisdiction? There are no other IP clauses that are commonly used or are standard practice under Turkish law.

Contributor details

Zeynep Ünlü, Partner, BTS & Partners

E-mail: zeynep.unlu@bts-legal.com

Areas of practice: Employment, corporate, contracts, dispute resolution, fintech, information technologies, intellectual property.

Burcu Çınar, Associate, BTS & Partners

E-mail: burcu.cinar@bts-legal.com