Intellectual Property Law Firm in Turkey; In general, a trademark can be defined as a sign that distinguishes the goods and services of one business from those of another.
Trademark Infringement Lawsuits in Turkey
Turkish industrial property law indicates that marks consisting of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provide that such signs are capable of distinguishing the goods or services of one business from those of other businesses and that are capable of being registered on the trademark registry in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor, can be considered as trademarks. Like other intellectual property rights, trademark applications are subject to registration system of each country thus are territorial.
As per the principle of territoriality, in order for a trademark to be protected in Turkey, it needs to be registered in Turkey. Of course there are some exceptions to this rule such as priority claims and well-known brands however principle of territoriality is accepted as one of the main rules of Turkish trademark law. Therefore, protection under 6769 numbered Turkish Industrial Property Code cannot be claimed in Turkey based on a trademark registered, for example, in France.
On the other hand we can say that registering a trademark before Turkish Patent and Trademark Office is not a legal requirement for real persons and legal entities. These persons can still use a trademark that is not registered before the Turkish Patent and Trademark Office in the relevant Turkish market and yet their non-registered trademark will still be protected under Turkish law, as per unfair competition articles of 6102 numbered Turkish Commercial Code.
One of the prominent functions of a brand is its distinctive function. The distinctive function of a brand is the ability of the brand to differentiate the goods and services of one business from those of others. Through its distinctive function, a brand provides information about the origin and supplier of the goods and services and prevents the mark from becoming anonymous. Undoubtedly, each brand owner enhances the value of their brand by promoting and increasing its brand recognition through various advertising investments.
Therefore in practice, it is seen that once a brand starts to become visible and valuable before the eyes of consumers they become vulnerable to infringement attempts of third parties. We have come face to face with many infringement actions of third parties upon the trademark rights of the rightful owner by imitating the brand exactly or in a way that is indistinguishably similar, taking advantage of the value and recognition of the brand, and attempting to confuse and bear away the established consumer base of the main brand. In such cases it becomes inevitable for the victims to proceed by filing trademark infringement lawsuits in Turkey.
Trademark Law in Turkey
In Turkey the old Trademarks Law No. 551 was adopted and entered into force in 1965. This law remained in effect until the entry into force of Decree Law No. 556 on the Protection of Trademarks, which came into effect on 27.06.1995. Decree Law No. 556 remained into effect until 10.01.2017. On January 10, 2017, the Industrial Property Law No. 6769 came into effect, and it is still in force. Furthermore, according the Article 90 of the Constitution, international agreements that have been duly put into effect are considered as law. Therefore, trademarks are also protected under international agreements that Turkey is a party to, such as the Paris Convention for the Protection of Intellectual Property and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).
Actions Constituting Violation of Trademark Rights in Turkey
Article 29 of the 6769 numbered Turkish Industrial Property Code specifies the cases that constitute infringement of the trademark rights. According to the mentioned article, the following cases are directly considered as trademark infringement:
1) To use the trademark as set out in Article 7 of 6769 numbered Industrial Property Code, without the consent of the trademark proprietor. The cases specified in Article 7 of the 6769 numbered Industrial Property Code that constituted trademark infringement are as follows:
- Using of any sign identical to a registered trademark for goods or services within the scope of the registration.
- Using any sign identical or similar to a registered trademark and covering goods or services identical or similar to those covered by the registered trademark, thereby creating a likelihood of confusion or association with the registered trademark in the minds of the public.
- Using any sign identical or similar to a registered trademark, regardless of whether the goods or services are the same, similar, or different, in a matter that would unjustly benefit from or harm the reputation of the trademark, or un-determine its distinctive character, without justifiable reason.
2) Imitating the trademark by using the trademark or a sufficiently similar one without the permission of the trademark owner constitutes infringement of trademark rights.
3) Selling, distributing, placing on the market in any other way, importing, exporting, possessing for commercial purposes, or making offers to enter into contracts concerning products bearing a mark that is knowingly or should have been known to be an imitation of the trademark or sufficiently similar to it, by using the infringing mark, constitutes infringement on trademark rights.
4) Unauthorized expansion of rights granted through licensing by the trademark owner or transferring these rights to third parties constitutes infringement of trademark rights.
Trademark Infringement Lawsuits in Turkey
According to Article 149 of the Industrial Property Code, the right holder whose intellectual property right has been infringed may request the court to determine whether the act constitutes infringement, prevent the likely infringement from occur, cease the infringing actions, remove the infringement, and claim compensation for material and moral damages. In other words, in a trademark infringement lawsuit in Turkey the plaintiff can claim determination of the infringement, prevention of possible infringement, prohibition of infringing actions, material and moral compensation and announcement of the judgement through daily newspapers or other means and to the relevant third parties.
The individuals who commit acts that are considered infringement of trademark rights are obligated to compensate the damages suffered by the right holder. The liability for compensation of those who commit acts considered infringement of trademark rights is essentially a tort liability within the scope of the Law of Obligations, and in accordance with Article 40 of the 6098 numbered Turkish Obligations Code, a person who causes harm to another by a wrongful act with fault is obliged to remedy that harm. In trademark infringement cases with a claim for material compensation, the right holder may request the compensation of their material damages. The damages suffered by the right holder include “actual loss” and “loss of profits”.
With regard to the calculation of loss of profits, the trademark owner in Turkey is granted the right to choose one of the three different calculation methods the law specifies. Actual loss is defined as the net decrease in the trademark owners’ assets due to infringement of his trademark rights, while loss of profits refers to the losses that occur if the infringement action had never taken place, and the probable gain could not be obtained due to the fact that the assets of the trademark owner did not reach to the point they would reach. The calculation of loss of profits is carried out by panel of experts using one of the following evaluation methos, often by examining the defendants’ commercial books and records:
- The potential income that the right holder could have obtained if there had been no competition from the infringer.
- The net profit obtained by the infringer as a result of his infringing actions.
- The license fee that the infringer would have had to pay if they had lawfully used the right through a licensing agreement.
Other Claims That Can Be Alleged in Trademark Infringement Lawsuits in Turkey
One of the most effective methods that a trademark owner can resort to in case of trademark infringement is to apply for a preliminary injunction. If the courts 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 examples of the content 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. According to the mentioned article, when a trademark infringement lawsuit is filed, the lawsuit can be filed with a request for a preliminary injunction (PI), and the preliminary injunction may include the following contents:
- Preventing and ceasing the acts that constitute infringement of the plaintiff’s trademark right.
- Seizing and prohibiting the infringing products, the means used exclusively in their production, and other non-infringing products, in a manner that does not hinder the production of other products, within the boundaries of Turkey or in areas such as customs, free zones, or regions, wherever they are located.
- For the compensation of any damages suffered by the plaintiff, the party involved in the acts constituting infringement of the trademark right shall provide security. This type of security, referred to in the doctrine as “Reverse Security”, is specifically regulated in the Industrial Property Code and is seen to be different from traditional types of security, as it is requested to protect the subject matter of the case.
One of the most common requests we come face to face related to preliminary injunctions in practice is to suspend access to and impose an access ban on the infringing website that violates the trademark right until conclusion of the lawsuit.
It is important to note that the preliminary injunction claims can be concluded without notifying the case to the defendant. A verdict can be granted in favor of the plaintiff related to preliminary injunction in exchange for a security bond which can be deposited in cash, via bank letters or without any security. If the preliminary injunction verdict is granted, it is required for the plaintiff to apply to the enforcement office for execution of the preliminary injunction decision within 1 (one) week of the date of grant.
Competent and Authorized Court in Trademark Infringement Lawsuits in Turkey
In trademark infringement lawsuits in Turkey filed by the owner of the industrial property rights against third parties, the competent court is either the court of the plaintiff’s domicile or the court where the unlawful act took place, or where the effects of such act are observed. In this regard, it can be seen that Article 156 of the 6769 numbered Industrial Property Code grants the plaintiff the option to choose the court where the lawsuit will be filed. In trademark infringement cases, the competent courts are the Civil Courts for Intellectual and Industrial Property Rights (specialized IP courts) and the Criminal Courts for Intellectual and Industrial Property Rights. In places where there are no Courts for Intellectual and Industrial Property Rights, Civil Courts of General Jurisdiction is authorized to review and hear the disputes related to intellectual and industrial property rights.
Time Bar in Trademark Infringement Lawsuits in Turkey
According to Article 157 of the Industrial Property Law No. 6769, the statute of limitations provisions of the Turkish Code of Obligations No. 6098 are applicable to civil lawsuits filed for trademark infringement. Pursuant to Article 72 of the Turkish Code of Obligations No. 6098, as a general rule, trademark infringement lawsuits in Turkey become time-barred after the expiration of 2 (two) years from the date trademark owner became aware of the damage and the liable party, and in any case, after the expiration of 10 (ten) years from the date the infringement occur. It is important to note that as long as the infringement continues, the statute of limitation does not expire.
Other Lawsuits That Can Be Filed In Case of Trademark Infringement in Turkey
Sometimes the plaintiff may not have concrete evidence proving the actions constituting trademark infringement. In such cases, before filing a civil lawsuit with material and moral compensation claim related to trademark infringement, the plaintiff can request the preservation and collection of evidences through a declaratory lawsuit. The request for the collection and determination of evidences is not specifically regulated in 6769 numbered Industrial Property Code. Pursuant to Article 400 and the following articles of the Turkish Code of Civil Procedure No. 6100, with a declaratory action, the plaintiff can request procedures such as discovery, expert examination, or taking witness statements for the purpose of establishing a fact that the plaintiff will assert in a future lawsuit or for a lawsuit that which examination stage has not yet been reached. In such types of cases decision cannot be appealed or the parties cannot apply to supreme court against the verdict.
It is important to note that in cases where it is necessary to protect the rights of the requesting party, evidences can be collected and determined without serving notice to the opposing party. A copy of the expert report prepared about evidences collected and determined is filed, it is automatically being served to the other party by the court.
If the person entering into actions constituting trademark infringement has also registered his infringing mark before the Turkish Patent and Trademark Office, the plaintiff can file a trademark infringement lawsuit with a request for invalidation and removal of the mark from the trademark registry. In the presence of absolute grounds for refusal stated in Article 5 and relative grounds for refusal stated in Article 6 of the Industrial Property Code, upon request, a decision can be issued for the invalidation and removal of the aggressor mark from the trademark registry.
In practice, infringement becomes apparent especially when trademark is published in the Trademark Bulletin. The trademark owner based in abroad has the right to file his objections against publication and registration of the aggressor trademark before Turkish Patent and Trademark Office within 2 months following publication of the aggressor trademark.
If the aggressor trademark has not been registered yet before the Turkish Patent and Trademark Office, there is no need to file an invalidation lawsuit. However, after mentioned 2 months period is over, rightful owner of the trademark can file an invalidation lawsuit and request the invalidation of the infringing trademark from the competent court.
Trademark infringement is also considered a crime under the Industrial Property Code. In case of trademark infringement, the rights holder can file a complaint for the investigation and prosecution of the offense. The complaint is subject to a six-month period starting from the knowledge of the offender and the act.
According to Article 30 of the 6769 numbered Industrial Property Code, individuals who infringe on another persons’ trademark rights by producing, offering for sale, importing, exporting, purchasing for commercial purposes, possessing, transporting, or storing goods or providing services in a manner that imitates or resembles the trademark can be sentenced to imprisonment for a period of one to three years and fined up to twenty thousand judicial days.
Complaints made regarding trademark infringement can include requests for search and seizure of infringing goods. This allows for effective measures to be taken against infringing products. However, in every case of infringement, a bill of indictment may not be prepared, and a decision of non-prosecution may be reached, as the approach of public prosecutors to trademark infringement cases in Turkey may vary depending on the severity of the violation.
Therefore in most cases, it would be beneficial to obtain evidence through a request for judicial examination before filing a complaint. Nonetheless, it should be noted that as mentioned above, it is also possible to protect our clients’ rights by requesting interim measures in trademark infringement lawsuits filed before the Courts for the Intellectual and Industrial Property Rights.
By contacting our intellectual property lawyers in Turkey and providing them with preliminary information, our legal team will create an effective and applicable legal roadmap for the unique case.
Intellectual Property Law Firm in Turkey
Our law firm understands that in today’s knowledge-based economy, intellectual property has become a critical asset for businesses, artists and innovators. Protecting and managing your intellectual property rights require specialized legal expertise and comprehensive understanding of intellectual property laws of Turkey. Mesci Law Firm, as a leading intellectual property law firm in Turkey, has established itself as a premier intellectual property law firm, offering a wide range of legal services to protect, enforce and maximize the value of intellectual property assets of their clients.
Our intellectual property law firm in Turkey has a client-centric approach and is dedicated to protecting and maximizing the value of our clients’ intellectual property assets. Over the last couple of years, our intellectual property law firm in Turkey managed to legally assist hundreds of multinational and Turkish clients all around the World, from different sectors such as construction, fashion and textile, luxury products, food, entertainment, hotel & tourism, energy and transportation.
Turkish Intellectual Property Law Services
Our intellectual property law firm in Turkey provides a comprehensive range of trademark services, catering to the diverse needs of our clients from IP due diligence for M&A to initiating anti-counterfeiting legal actions against aggressor brands or products; from obtaining ex-parte and inter-parte preliminary injunction decisions from the court to filing trademark applications; from drafting co-existence agreements to registering license agreements.
Our expert trademark lawyers in Turkey offer personalized guidance and support at every stage of the trademark lifecycle. Our Turkish intellectual property law services include:
- Trademark Registration Services in Turkey: Our intellectual property law firm in Turkey assists clients in conducting thorough trademark searches to assess the availability of a proposed mark. Our intellectual property lawyers in Turkey guide our clients through the registration process, preparing and filing all necessary applications with relevant authorities, and ensuring compliance with legal requirements.
- Trademark Enforcement in Turkey: In case of trademark infringement or unauthorized usage of a trademark, our intellectual property lawyers in Turkey employ their expertise in enforcement actions. They actively pursue legal remedies to protect clients’ trademarks including issuing cease and desist letters, negotiating settlements, obtaining required preliminary injunction decisions, collecting evidences and representing clients in litigation if required.
- Trademark Licensing in Turkey: Understanding the value of licensing agreements, our intellectual property law firm legally helps clients on drafting, negotiating, revising and reviewing licensing contracts to ensure our clients’ trademarks are or will be used appropriately while safeguarding their rights and interests. Our law firm also provides law services related to registration of trademark license agreements in Turkey.
- Trademark Portfolio Management in Turkey: With a strong focus on long-term brand protection, our intellectual property lawyers in Turkey assist their clients in managing their trademark portfolios effectively. They offer strategic advice on trademark portfolio development, maintenance and renewal, and following up the Trademark Bulletin enabling clients to stay ahead of potential challenges and infringements.
Intellectual Property Lawyers in Turkey
Mesci Law Firm boasts a team of highly skilled and experienced intellectual property lawyers in Turkey. Recognizing the complexity of this field, our law firm has assembled a talented group of professionals who possess in-depth knowledge on Turkish IP laws and regulations, as well as international intellectual property standards.
These expert intellectual property lawyers in Turkey stay up-to-date with the latest developments in IP law and employ their expertise to provide clients with exceptional legal advice and representation. Founder of the firm is also known to be specialized on intellectual and industrial property law in Turkey, dealing with both trademark and patent infringement and invalidation cases.
Our law firm is one of the leading intellectual property law firms in Turkey. Please don’t hesitate to contact our intellectual property lawyers through our contact page and obtain a detailed case evaluation and to file a trademark infringement lawsuit in Turkey. If you would like to learn more about our law services related to trademark registration in Turkey, you can visit our Article, “Intellectual and Industrial Property Law”.
