• What is a trademark?
The Industrial Property Law No. 6769 regulates the trademark as all kinds of signs such as person name, shape, colour, letter, number, sound and the shape of the goods or packaging that enable the goods or services of an enterprise to be distinguished from the goods or services of other enterprises. The most important function of the trademark is to distinguish the goods or services of one enterprise from the goods or services of another enterprise.
Trademark rights holders often make significant investments and promotional activities to increase the awareness of their brands. In the meanwhile, well-known brands are used by malicious third parties to gain unfair advantage.
These people are infringing on the trademark right mostly by imitating the trademark or using the trademark in their own products without the consent of the trademark owner. At this point, the owner of the trademark can prevent the use of his trademark by malicious people by applying the legal protection methods provided exclusively by the law.
• What is trademark infringement?
Trademark infringement is regulated in article 29 of the Industrial Property Law. In line with this article, the following acts constitute infringement of trademark rights:
- Using the trademark in the ways specified in Article 7 of the Law without the consent of the trademark owner
- To imitate the trademark by using the trademark or an indistinguishable likeness without the permission of the trademark owner
- To sell, to distribute, trade, import, export, hold for commercial purposes or make a proposal to conclude a contract for this product bearing the trademark used by infringement even though they know or should know that the trademark is imitated by using the trademark or its indistinguishable likeness.
- Extending the rights granted by the trademark owner through license or transferring these rights to third parties without permission
• What claims can the owner of the infringed trademark demand from the court?
Pursuant to paragraph 1 of article 149 under the title of “Common Provisions” in the First Part of the Fifth Book of the Industrial Property Law, the right owner whose industrial property right has been infringed may make the following demands from the court:
- Determining whether the act is infringement or not.
- Prevention of possible infringement.
- Stopping the acts of infringement.
- Compensation for material and moral damage by abolishing the infringement.
- Seizing products that constitute infringement or requiring punishment, and tools such as devices and machinery used exclusively in their production, in a way that does not prevent the production of other products other than the products subject to infringement.
- Recognition of the right of ownership over the confiscated products, devices and machines pursuant to subparagraph (d)
- Taking measures to prevent the continuation of the infringement, changing the shape of the confiscated products and vehicles such as devices and machinery, erasing the brands on them or destroying them if it is unavoidable in order to prevent infringement of industrial property rights, especially at the expense of the infringer.
- In case there is a just cause or interest, the final decision shall be announced in the daily newspaper or similar means, in whole or in summary, at the expense of the other party, or communicated to the relevant parties.
• Claims and lawsuits that can be alleged in the case of infringement
Lawsuits and claims that can be filed by the right owner whose trademark right is violated regulated in the industrial property law are as follows:
Request for Seizure at Customs and Precautionary Measure (Industrial property law article 159)
Pursuant to Article 159 of the Industrial property law, the owners of the trademark may request from the court to decide on an Precautionary Measure in order to ensure the effectiveness of the judgment, on condition that they prove that the trademark in question is being used in Turkey in a way that constitutes an infringement of their industrial property rights or that serious and effective studies have been carried out for its realization.
In this context, Article 159/2 of the Industrial property law has ruled that the precautionary measures should include the measures specified below in particular.
✓ It may decide to prevent and stop the acts constituting infringement of the plaintiff’s industrial property right. This includes; the production, packaging, stockpiling, selling, taking orders and preparing for all these acts of goods or services bearing the subject mark.
✓ A precautionary measure may be ordered in the form of confiscation and storage of imported products produced by infringing on trademark rights. These products can be confiscated anywhere within the borders of Turkey, as well as in customs, free ports or regions.
✓ It may be decided to provide a guarantee in terms of compensation for any damage.
The seizure measure at the customs in Article 159 of the Industrial property law is stated to protect the interests of the trademark owner. In this context, for example, it is possible to seize the counterfeit branded products at the customs, and the seizure is carried out by the relevant customs directorates upon the request of the right holder or his representative.
It is obligatory to file a lawsuit or take a precautionary decision from the court within ten days from the date of notification of the seizure decision. Otherwise, the confiscation decision of the administration will be eliminated. According to the regulation in the Customs Law, this period is three working days for the confiscated goods that are perishable.
Detection Of Evidence Or Determination Of Whether The Act Is Infringement (Industrial Property Law Article 149 1/a)
The person authorized to claim infringement of the trademark right may also request from the court the determination of the events that can be considered as infringement of the trademark right. In order to file this lawsuit, the plaintiff must have a legal interest worthy of protection in determining the legal relationship as soon as possible.
In this context, the detection cases stipulated in Industrial property law are the request for the determination of the evidence and the determination of the infringement action.
Pursuant to Article 149 of the same law, the purpose of determining the evidence is to collect and evaluate the evidence and, according to the result, to evaluate whether there is infringement according to Article 29 of the same law and Article 7 to which the same article refers.
Case For Negative Declaratory Action (Industrial property law, article 154)
Anyone who has an interest may request the right holder to submit his/her opinions on whether the commercial or industrial activity he/she has or will undertake in Turkey or the serious and actual attempts he/she has made for this purpose constitute an infringement of the trademark right. If no response is given within one month from the notification of this request or the response given is not accepted by the beneficiary, the beneficiary may file a lawsuit against the right owner with the request that it be decided that his actions do not constitute infringement. Notification is not required as a condition of action in the lawsuit to be filed.
However, it should be noted that this lawsuit cannot be filed by a person against whom a lawsuit has been filed for infringement of the trademark right. It cannot be invoked as a counterclaim. Since the existence of the infringement will already be discussed in the lawsuit filed due to infringement, this person has no interest in filing a negative declaratory action.
Antalya lawyer Ceren Topcu İncetaban and her Antalya Law Firm provide legal support and guide the clients in any negative declaratory action you are planning to take.
Case for Suspension of Infringement Acts (Industrial property law, article 149/1/b–c)
The trademark owner may request that the acts of trademark infringement to be stopped. The case of prohibition is a case that can be opened where the infringement of the trademark right has actually started, and in cases where the infringement act(s) has not started, but there is a danger of infringement.
In order to open this case, the fault of the perpetrator or even the existence of damage is not sought. In this context, a lawsuit can be filed not only after the infringement has occurred, but also to stop an infringement that has not yet occurred but is likely to occur in the future.
Case for Removal of Infrıngement (Industrial property law , Article 149/1/ç)
The person whose trademark right has been infringed can request from the court the elimination of the infringement and the legal contradictions created by the infringement. In cases where a lawsuit for the elimination of infringement is filed, the acts that infringe on the trademark right have already created resulted. In other words, branded products that constitute trademark infringement may already be sold or exhibited. The purpose of the case is to eliminate the unlawful consequences of infringement.
Compensation Case (Industrial Property Law, Article 149–150)
The owner of the trademark right may request compensation for both material and moral damages arising from the infringement of the trademark right.
Further, pursuant to Article 150/2 of the law, in case the reputation of the trademark is damaged as a result of the abuse or production of the products and services subject to the right by the infringer, the supply of products produced in this way or placing them on the market in an inappropriate manner, additional compensation may be claimed for this reason by the trademark owner.
With English speaking lawyers who are experts in intellectual property law, ALFA Law and Consultancy and Antalya Lawyer Ceren Topcu İncetaban provide comprehensive support in the formation of appropriate claims and litigation.
Other possible requests from the court
The trademark owner also have the right to request the confiscation of the products that constitute infringement or that require punishment, and tools such as devices, machinery, which are exclusively used in their production (IPL article 149/1/d), recognition of the right of ownership on the seized products (IPL, Article 149/1/e), request to take necessary measures to prevent the continuation of the infringement (IPL art.149/1/f), request the announcement of the provision to the public and notification request to the related persons (IPL art.149/1/g).
The person perpetrating the act of infringing on the trademark right have legal responsibility as well as criminal liability. The trademark owner may also request the punishment of these persons by filing a criminal complaint with the Office of the Chief Public Prosecutor about the perpetrators of the act of infringement. Article 30 of the Industrial Property Law No. 6769 stipulates that for acts of trademark infringement, imprisonment from 1 year to 4 years and at the same time a judicial fine shall be imposed.
• Which court is the authorized court for such claims?
Intellectual and industrial rights law courts are the courts in charge of civil cases regarding infringement of trademark rights. In places where these courts are not available, the Civil Courts of First Instance are in charge.
The Authorized Court has an optional power, and the competent court in civil lawsuits to be filed by the trademark owner against third parties is the plaintiff’s domicile or the court of the place where the unlawful act took place or the effects of this act were seen.
If the plaintiff does not have a domicile in Turkey, the competent court is the court where the registered attorney’s workplace is located at the date of the lawsuit, and if the attorney’s registration has been deleted, the court is located at the headquarters of the Institution.
• What is the limitation period for lawsuits due to infringement of trademark rights?
There is no specific time limit in the Industrial Property Law No. 6769 for civil lawsuits to be filed due to trademark infringement. In Article 157 of the Law, it is stated that the provisions of the Turkish Code of Obligations dated 11/1/2011 and numbered 6098 regarding the statute of limitations apply for private law claims arising from the industrial property right or traditional product name.
Since trademark infringement is also a tort, the statute of limitations for wrongful action in the Turkish Code of Obligations will be applied in civil lawsuits. Accordingly, the owner of the trademark right will be able to file the aforementioned lawsuits within 2 years, and probably within 10 years, after learning about the cases of infringement of the trademark right and the person or persons who carried out these cases.
However, if the act of trademark infringement is also defined as a crime in the law and a longer statute of limitations is stipulated in the criminal laws, these periods will be taken into account in the lawsuits to be filed. If a lawsuit is not filed within these periods specified in the law, the statute of limitations will expire.
• Important information
The above-mentioned explanations cover only the rights of the registered trademark owner. In this sense, if the trademark is not registered, the trademark owner can file a lawsuit based on unfair competition provisions within the scope of the Turkish Commercial Code regarding infringement.
Antalya lawyer Ceren Topcu İncetaban and her Antalya law firm provide understandable legal services of high quality in cases of trademark registration, protection and trademark infringement. Do not hesitate to contact us for your questions regarding all areas of Intellectual Property Law.