A General Overview of Trademark Infringement in Turkey ; A trademark is generally defined as a sign that serves to promote goods and services owned by an enterprise and distinguish them from goods and services owned by the other enterprises. There are differences in the quality, price and features of the goods sold or services provided by different enterprises in the market.
A General Overview of Trademark Infringement in Turkey
The customers of the relevant goods or services choose what they find most suitable for themselves among these different goods or services available in the market. This, in return, leads to competition among enterprises depending on the choices made by the consumers who purchase goods and services, encouraging businesses to offer products or services that are equal to or superior to those of their competitors.
Therefore, by personalizing goods and services and ensuring differentiation between them, trademarks play a vital role in creating this natural competitive environment. Hence, it is essential to protect the trademarks, as they constitute one of the fundamental elements of the economy and marketing.
The recognition, strength, and value a brand gains in the market attracts in time aggressor third parties who do not have ownership of the trademark or a right to use the trademark, leading to its infringement and unfair exploitation of the brand’s identity and market influence.
We will provide you herewith general information on trademark infringement in Turkey and trademark infringement lawsuits in Turkey. Should you require more information, please don’t hesitate to contact our IP law firm in Turkey.
Infringement of a Trademark
The actions considered as infringement of a trademark in Turkey are explicitly stated under Article 29 of the 6769 numbered Industrial Property Code, in a restrictive manner, meaning that their scope cannot be expanded. It should also be noted that the essential requirement to benefit from the protection provided by the Industrial Property Code is for the trademarks registered before the Trademark Registry by the Turkish Patent and Trademark Office.
An unregistered trademark cannot benefit from the protection provided under 6769 numbered Industrial Property Code, except for the provisions of Article 6, paragraph 3 (three) which is stating the protection granted to real owner of the trademark and paragraph 4 (four) which is stating the protection granted to well-known marks in accordance with Paris Convention.
However, even if a trademark is not registered, it can still be protected under the unfair competition articles of the 6102 numbered Turkish Commercial Code. According to aforementioned Article 29:
Without the consent of the trademark owner, using the trademark as set out under Article 7 constitutes infringement of a trademark in Turkey. These actions constituting trademark infringement are as follows:
- Through reference of Article 29, as per Article 7/2-a of the IPC, use of any sign identical with the trademark at products or services that are in the scope of the registration constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/2-b of the IPC, use of any mark identical with or similar to a registered trademark and covering identical or similar products or services with the registered trademark, and is therefore liable to create a likelihood of confusion on the part of the public; including the likelihood of association between the sign and the trademark, constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/2-c of the IPC, use of any mark identical with, or similar to the registered trademark, irrespective of being for identical, similar or different products or services, where the use of that mark without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark due to the reputation it has in Turkey, constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/3-a of the IPC, affixing the mark to the products or to the packaging thereof constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/3-b, putting the products on the market, offering these products as deliverable, or stocking these products for these purposes under the mark, or offering or supplying services thereunder constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/3-c, importing or exporting the products under the mark, constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/3-ç, using the mark on business papers and advertisements of the enterprise constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/3-d, using identical or similar mark on internet media as domain name, router code, and keyword or in similar manner with a commercial influence; provided that the person using the sign has no right or legal affiliation for the use of that sign, constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/3-e, using the sign as a trade name or business name constitutes trademark infringement.
- Through reference of Article 29, as per Article 7/3-f, using the sign in comparative advertising in a manner that is against the law constitutes trademark infringement.
2) Counterfeiting the trademark by using the trademark or indistinguishably similar trademark without permission of the trademark owner, constitutes trademark infringement.
3) Selling, distributing, putting on the market in a different way, possessing with commercial purposes, importing, exporting the products carrying the infringed trademark or to offer to make a contract related to this product while being fully aware or should be aware that the trademark is counterfeited by use of the trademark or indistinguishably similar trademark constitutes trademark infringement.
4) Broadening or transferring to third parties, without permission, the rights given by the trademark owner through license, constitutes trademark infringement.
In cases brought to our law firm’s information, we often observe and detect multiple actions that constitute trademark infringement based on a single incident. Once you provide our law firm with relevant information and documents regarding the actions you believe to be infringing your trademark rights, we will provide you legal consultation including the information whether relevant actions constitute infringement or not, which lawsuits shall be filed if infringement exists, what legal measures shall be taken preliminarily and provide you a legal roadmap on how to proceed. Please do not hesitate to contact our law firm to obtain a preliminary case evaluation.
Claims That Can Be Filed Against Trademark Infringement
The claims that owner of the trademark whose trademark right is infringed that can be asserted in the lawsuit to be filed before the Courts for Intellectual and Industrial Property Rights are explicitly stated under Article 149 of the 6769 numbered Industrial Property Code. These claims are listed in the code as follows:
a) Owner of the trademark, whose trademark rights have been infringed can request from the court, determination of whether the act constitutes infringement or not.
b) Owner of the trademark, whose trademark rights have been infringed can request from the court to prevent the possible infringing actions.
c) Owner of the trademark, whose trademark rights have been infringed can request from the court to stop the infringing actions.
ç) Owner of the trademark, whose trademark rights have been infringed can request from the court to remedy infringement and compensate material and moral damages.
d) Owner of the trademark, whose trademark rights have been infringed can request from the court to seize the products causing infringement or requiring penalty, as well as the instruments, such as devices and machine exclusively used in their production, without preventing the production of the products other than infringing products.
e) Owner of the trademark, whose trademark rights have been infringed can request from the court to be granted ownership on the subject products, devices and machines seized in accordance with subparagraph (d).
f) Owner of the trademark, whose trademark rights have been infringed can request from the court to take measures to prevent continuance of the infringement, and in particular at the expense of the infringer to change the shapes of the goods and instruments such as devices and machines seized according to subparagraph (d), to erase the trademarks on these goods or to destroy these goods if it is inevitable for preventing the infringement of the trademark right.
g) If there is interest, owner of the trademark whose trademark rights have been infringed can also request from the court announcement of the final judgement at the expense of the opposite party fully or in summary through the daily newspapers or other means or notification to relevant parties.
We can say that there are some pre-protective measures that can be strategically pursued in cases of trademark infringement in Turkey. Among these, the most commonly preferred ones by our clients are as follows:
- Preliminary Injunction: Trademark infringement cases often take a long time to conclude and finalize. During the period leading up to the final decision and obtaining the finalization statement, fulfilling the plaintiff’s claims and remedying the damages incurred may become almost impossible. Additionally, the trademark owner may continue to suffer from losses due to ongoing infringing actions of the defendant while the case is still ongoing. A preliminary injunction can be requested by the owner of the trademark to prevent the irreparable or extremely difficult-to-remedy damages caused by infringing actions or transactions of the defendant to occur. If the person filing or planning to file a trademark infringement lawsuit in Turkey can prove that the subject trademark is currently being used in Turkey in a way that would infringe upon their own trademark rights or that serious and effective efforts have been made in order for its use, the Court may decide to grant a preliminary injunction decision. The examples of the type and subject of the preliminary injunction are provided under Article 159 of 6769 numbered Industrial Property Code, and the situations stated in Article 159/2 are not exhaustive. Therefore, the type of preliminary injunction type to be requested from the court by the plaintiff may be different and unique based on types of the infringing actions thus applicable to the subject of the case.
- Evidence Collection, Determination and Preservation: Owner of the trademark whose rights are infringed may request from the court the determination of acts that can be considered as trademark infringement. Essentially, for determination, collection and preservation of the evidences, filing a declaratory lawsuit is a mechanism enabling your lawyers to collect and secure the evidence under specific conditions, proving the occurrence of the infringing actions in an ongoing case or a lawsuit that will be filed in the future. If a trademark owner lacks sufficient evidence related to the infringement and there is a possibility of the evidences to be destroyed, it is advisable to file a lawsuit for evidence preservation before the main lawsuit filed with material and moral compensation claims. With such a remedy, the plaintiff can request law procedures such as discovery, expert examination, or collection of witness statements by the court and the panel of experts that will be appointed by the judge.
How are the Court Procedures like in Trademark Infringement Lawsuits in Turkey?
Court procedures may sound complex and detailed to court clients thus we decided to save this section of our essay to provide our clients with concise and clear information on court procedures in Turkey.
First of all, clients based in foreign countries shall appoint us with an apostilled power of attorney and original power of attorney shall be sent to our firm. It will be translated here by a certified translator and later on will be notarized by a Notary Public. After power of attorney, evidences and also translation of evidences are ready, we prepare a lawsuit petition and an evidence list to be presented to the court while filing the lawsuit.
After the lawsuit is filed, the court issues a preliminary proceedings report and serves it on the parties in which it basically informs the parties related to their obligation under Code of Civil Procedure. If a preliminary injunction is requested through the lawsuit petition, the court may appoint an expert committee for a preliminary case evaluation to be considered as basis of the preliminary injunction.
Based on the expert report obtained for the case, if the Court of Intellectual and Industrial Property Rights determines that there is sufficient evidence in the file that serious and effective efforts have been made to prove that the plaintiff’s trademark has been or will be infringed, it will issue a decision on preliminary injunction to ensure the effectiveness of the judgement and prevent the plaintiff from suffering damages until the finalization statement is issued.
The defendant can file his objections within one week following the notification of the preliminary injunction minute. In such a case, the court will open a hearing and evaluate objections raised against the preliminary injunction decision and will issue an interim decision on the matter. If objections of the defendant is rejected, the defendant can appeal the interim decision before the Court of Appeal. Decision to be issued by the Court of Appeal is final.
Trademark infringement lawsuits are handled through written judgement procedure, therefore, after the plaintiff’s lawsuit petition, within the legal period the defendant will submit a reply petition, the plaintiff will then submit a reply to reply petition within the legal period and finally the defendant will submit a second reply petition as a reply to the reply to reply petition of the plaintiff within the legal period.
During the first court hearing, which the court notifies to the parties, attorneys should be present in person, and they will state their initial objections, claims and requests. This hearing is the preliminary examination hearing and the physical attendance of attorneys is mandatory. After the preliminary examination hearing, if the parties have witnesses, they will be heard during the next trial, if not, the case will be sent to a panel of experts composed of expert witnesses specialized in the field.
The expert committee will prepare a report, and after the report is served on the parties, attorneys will submit their declarations or objections to the expert report within 2 weeks. If the case is not assigned to a new expert committee for a new report or to the same committee for an additional report, the court will grant time for the parties to present their final statements prepared for the subject of the case and the next hearing the court will move to the oral argument stage.
During the oral argument stage, attorneys will restate their arguments, claims, and requests, and on the same hearing, the court will issue a brief judgment. After the brief judgment is served verbally, generally within 1 to 3 months, the court will write the reasoned judgment and serve it to the parties. The losing party can appeal the decision before the Court of Appeal within 2 weeks after being served with the judgment.
Against the decision of the Court of Appeal, the party against whom the judgment was rendered to the detriment of, can apply to the Supreme Court within 2 weeks after being served with the decision.
Completion of all these processes and finalization of the decision may take approximately 4 to 5 years, depending on the court’s workload.
Competent Court for Trademark Infringement Lawsuits in Turkey
In accordance with Article 156 of 6769 numbered Industrial Property Code, trademark infringement lawsuits to be filed in Turkey can be examined and finalized by Civil Courts for Intellectual and Industrial Property Rights. In regions where a Civil Court for Intellectual and Industrial Property Rights is not established, the Civil Court of First Instance acting as the Civil Court for Intellectual and Industrial Property Rights in that region shall have jurisdiction over trademark infringement lawsuits.
On the other hand, in lawsuits filed by the trademark owner against third parties, the authorized court shall be the court of the plaintiff’s residence or the court where the unlawful act took place, or where the effects of this act are observed.
If the plaintiff does not have a place of residence in Turkey, the authorized court shall be the court where the attorney’s office is located at the time the lawsuit is filed, as indicated in the trademark registry, and if the attorney’s record has been erased, the court where the Turkish Patent and Trademark Office is located.
The filing of the lawsuit before the competent and authorized court is of utmost importance. If filed in noncompetent or unauthorized court, the defendant may raise objections based on the court’s lack of jurisdiction or authority as first thing to do.
Statute of Limitation for Trademark Infringement Lawsuits in Turkey
According to Article 157 of the 6769 numbered Turkish Industrial Property Code, the statute of limitations provisions of the 6098 numbered Turkish Code of Obligations are applicable to civil lawsuits filed for trademark infringement.
Pursuant to Article 72 of the 6098 numbered Turkish Code of Obligations, as a general rule, trademark infringement lawsuits in Turkey become time barred after the expiration of two years from the date trademark owner became aware of the damage and the liable party, and in any case, after the expiration of ten years from the date that the infringement occur.
It is important to note that as long as the infringement continues, the statute of limitation does not expire.
Reach Our Trademark Lawyers in Turkey If you are a business owner, looking to protect your brand identity, trademark rights and position in the market, you can work with our law firm in Turkey, your premier destination for top-notch trademark legal services.
With a team of experienced, dynamic and dedicated trademark lawyers in Turkey, our law firm is committed to safeguarding your brands identity while providing expert guidance on all trademark related matters. Trademark law is not just a practice area we provide services under; it is our passion. Our team of trademark lawyers in Turkey possesses in-depth knowledge of the Turkish law regulations and the intricacies of trademark registration, enforcement and protection.
With our unmatched expertise, our IP lawyers in Turkey can navigate complex legal procedures and ensure your trademarks are registered and protected efficiently and effectively. If you believe that your trademark rights are being violated and that you are a victim of trademark infringement, reach our trademark lawyers in Turkey and obtain a case evaluation.