A recent case clarifies the role of the informed user and freedom of choice in Turkish design law. Mutlu Yıldırım Köse and İrem Girenes Yücesoy explain.

Design law enables designers to protect the appearance of a product. According to the Turkish Industrial Property Code (IP Code), to obtain design protection, a design must be new and have individual character.

In order to consider whether the design has individual character, the overall impression produced by it on the informed user and the degree of freedom of the designer in developing the design must be taken into consideration.

While there is a reference to both the degree of freedom of choice and informed users in Article 56 of the IP Code, in practice it is not clear how these concepts will be defined and implemented in design disputes.

Informed user defined

The designs in the case

In the decision of the Ankara 1^st Civil Court for Intellectual and Industrial Rights (IP Court) with merit and decision no. 2019/72 and 2020/282 issued in 2021, the informed user and freedom of choice and their role in the assessment of individual character have been evaluated in detail.

The court defined the informed user as a user having information by using and experiencing the design. It also stated that the informed users are customers or end users, but not experts and emphasised that the determination of who is the informed user is specific to the subject matter of the case.

The action was filed against one of the leading water ride designers in the world, Proslide Technology Inc. As a result of the trial, Proslide’s waterslide design was found to be new and distinctive, and the action was dismissed.

The IP Court determined that the informed users in the waterslide sector were the managers or technicians who play a role in the selection or operation of the waterslide, rather than passive users, who are not concerned with technical features of the slide.

It even stated that the informed user in the waterslide sector may consist of persons who have decided to procure these slides or personnel appointed for maintenance in facility.

The IP Court also underlined that the informed users have a different level of awareness compared to passive users that are riders in the waterslide sector and they would consider details and act more carefully for issues which will require great investments.

In this way, the individual character evaluation on the waterslide designs was made in view of the informed users in the waterslide sector.

Freedom of choice

Similarly, the IP Court evaluated the degree of freedom of choice in detail. It defined the freedom of choice as the elbow room providing the designer to be able to include individual character to their design and emphasised that the determination of the degree of freedom of choice is objective and cannot vary from person to person.

For this dispute, the IP Court found that waterslide design has very limited freedom of choice in view of the existence of several requirements such as the need to design all waterslides in a size that riders from different group of ages can fit into, to design all waterslides to have a surface qualification decreasing friction, and to design all waterslides to be connected by joints to provide a certain distance and/or rotation.

Accordingly, the IP Court disregarded the mutual parts and features in the waterslide designs that were the subject of the case and focused on the parts/contributions of the designer outside of these uniform features and qualification. It evaluated the designs in terms of the informed users’ view and concluded that Proslide’s design had individual character.

Helping designers

The adoption of this approach to the determination of the informed users and the degree of freedom of choice by the court will facilitate designers’ work in creating and registering new designs where the freedom of choice is limited.

By Mutlu Yıldırım Köse (member of the MARQUES Anti-Counterfeiting & Parallel Trade Team) and İrem Girenes Yücesoy of Gün + Partners