As per Article 5 of the Turkish Commercial Code Nr. #6102 and dated 13.01.2011, all commercial cases and non-contentious judicial proceedings of a commercial nature are handled by the Commercial Courts. As per Article 156 of the Industrial Property Law Nr. #6769 and dated 22.12.2016, all cases set out under the Industrial Property Law are heard by the Civil Courts for Intellectual and Industrial Property Rights. Pursuant to Article 76 of the Law Nr. #5846 on Intellectual and Artistic Works dated 05.12.1951, the Civil Courts for Intellectual and Industrial Property Rights are in charge.
Commercial Courts of First Instance and Civil Courts for Intellectual and Industrial Property Rights are special courts and there is a duty relationship between them. Since the rights set out under the Law on Intellectual and Artistic Works and Industry Property Law compete with the rights set out under the Turkish Code of Commerce, there are some problems in practice regarding determination of the competent court.
In this study, the jurisdiction of the Commercial Courts of First Instance and the Civil Courts for Intellectual and Industrial Property Rights will be briefly mentioned, and the jurisdiction of the courts will be analyzed through the decisions of the Court of Cassation.
1. Competence of the Commercial Courts of First Instance
Pursuant to Article 5 of the Turkish Commercial, all commercial cases and non-contentious judicial proceedings of a commercial nature fall within the jurisdiction of the Commercial Court of First Instance. Article 4 of the Turkish Commercial Code defines the commercial lawsuits and non-contentious judicial proceedings. All lawsuits and non-contentious judicial proceedings within the scope of Article 4 of the Turkish Commercial Code fall within the jurisdiction of the Commercial Courts of First Instance.
Turkish Commercial Code
ARTICLE 5- (1) Unless otherwise provided, regardless of the value or amount of the thing sued, the commercial court of first instance shall be in charge of all commercial cases and non-contentious judicial affairs of commercial nature.
Regardless of whether the parties are merchants or not, and regardless of whether the transaction or act is related to a commercial enterprise or not, the lawsuits that are deemed commercial by law are considered as absolute commercial lawsuits. The lawsuits set out under the Turkish Commercial Code and the lawsuits that are set out under other laws but are deemed to be commercial lawsuits pursuant to Article 4 of the Turkish Commercial Code are included within this scope.
Civil lawsuits and non-contentious judicial proceedings arising out of matters related to the commercial enterprise of both parties, regardless of whether the parties are merchants or not, are considered commercial lawsuits and non-contentious judicial proceedings of a commercial nature. The cases within this scope are characterized as relative commercial cases [1].
Disputes arising from commercial transactions, disputes arising from corporate law, competition law, bankruptcy and arrangement of bankruptcy cases, disputes arising from maritime trade law fall within the jurisdiction of the Commercial Court of First Instance. Among the commercial cases listed under Article 4 of the Turkish Commercial Code, the cases arising from the issues regulated in the legislation on intellectual property law are commercial cases and fall within the jurisdiction of the Commercial Court of First Instance. Although it will be discussed below, pursuant to the Industrial Property Law, disputes arising from intellectual property law fall within the jurisdiction of the Civil Courts for Intellectual and Industrial Property Rights, which are specialized courts.
2. Jurisdiction of Civil Courts for Intellectual and Industrial Property Rights
The lawsuits, set out under the Law on Intellectual and Artistic Works and the Industrial Property Law, fall within the jurisdiction of the Civil Courts for Intellectual and Industrial Property Rights. Law on Intellectual and Artistic Works sets out the material and moral rights arising from the work. The IPL sets out the rights arising from trademarks, geographical indications, designs, patents, utility models and traditional product names.
Article 156 of the Industrial Property Law
The court in charge of the cases provided for in this Law shall be the civil court for intellectual and industrial property rights and the criminal court for intellectual and industrial property rights.
Article 76 of the Law on Intellectual and Artistic Works
The competent court for the lawsuits and actions arising out of the legal relations, as set out under this Law, and criminal cases, arising out of this Law, shall be the courts specified in the first paragraph of Article 156 of the Industrial Property Law.
It is set out that the disputes regarding the rights regulated by the Law on Intellectual and Artistic Works are within the jurisdiction of the Civil Courts for Intellectual and Industrial Property Rights. However, disputes arising from the Turkish Commercial Code and the applicable Intellectual Property Regulations remain within the scope of absolute commercial litigation.
Pursuant to the Law on Intellectual and Artistic Works, the right holder may request refusal of infringement, prevention of infringement, material and moral damages and transfer of the profits obtained.
Pursuant to the IPL, it is possible to file a lawsuit for annulment of the decision of the Commission for Review and Reevaluation, cancellation of registration, invalidation, determination of whether the act is infringement, prevention of possible infringement, cessation of infringing acts, removal of infringement and compensation for material and moral damages.
3. Related Judicial Decisions
Acts constituting infringement may also
constitute unfair competition in lawsuits for determination, cessation and
compensation of infringement of rights within the scope of the IPL and Law on
Intellectual and Artistic Works. In the event that a lawsuit is filed for
determination of infringement, cessation of infringement and compensation in
relation to the rights within the scope of the IP Law and the Law on
Intellectual and Artistic Works, the Civil Courts for Intellectual and
Industrial Property are the competent court in terms of the unfair competition
claim.
THE DECISION, BEARING THE BASIS NUMBER #2017/458, AND THE DECISION NUMBER #2017/5478 AND DATED 15.6.2017, OF THE 20TH CIVIL CHAMBER OF THE COURT OF CESSATION reads as follows:
The plaintiff's attorney filed the lawsuit bearing the basis number #2005/164 at and before the Civil Court for Intellectual and Industrial Property Rights, requesting to determine and prohibit the acts and actions of the defendant that constitute unfair competition over the name, title, logo, sign, etc. and the infringement, and to prevent use of telephones. The court decided to retain the request for determination and prohibition of infringement of the trademark and decided that the Commercial Court has no jurisdiction since the other requests fall within the scope of Article 57 of the Turkish Commercial Code and finalized without appeal. The case, decided for lack of jurisdiction, was registered to the Commercial Court of First Instance under the basis number #2007/226.
In case the issue falls outside of the Commercial Court's jurisdiction, it is necessary to issue a decision for lack of jurisdiction against it, and in case the decision is finalized without appeal, the file should be sent to the relevant Chamber of the Court of Cassation to resolve the negative conflict of jurisdiction, but since it is understood that the file has been transferred by issuing a decision for lack of jurisdiction in terms of the main case, there is no trial to be conducted by the court due to the pending files, as well as the evaluations related to the request in this file. Since the judgment of the Civil Court for Intellectual and Industrial Property Rights and the decision has not yet been finalized, there is no trial to be held by the court due to the pending files, as well as the evaluations related to the request in this file were separated from the issues requested in the unfair competition in the original case sent to the commercial court with the lack of jurisdiction, and it was decided to dismiss the lawsuit regarding the requests in the original case on the grounds that only the issues that constitute unfair competition are not within the jurisdiction of the Civil Court for Intellectual and Industrial Property Rights, but within the jurisdiction of the commercial courts, and it became final without appeal.
Article 23/2 of the Code of Civil Procedure Nr. #6100 sets out as follows; “The decisions on jurisdiction and competence, which are finalized as a result of the decisions of the Court of Cassation and the appellate review, bind the court that will hear the case thereafter”. In the concrete case, the conflict of jurisdiction between the 3rd Civil Court for Intellectual and Industrial Property Rights and the 13th Commercial Court of First Instance was resolved by determining the Civil Court for Intellectual and Industrial Property Rights as the seat of jurisdiction with the decision, dated 10.11.2014 and bearing the Basis number #2014/8571 and the Decision number #2014/17242, of the 11th Civil Chamber of the Court of Cassation. Pursuant to Article 23/2 of the Code of Civil Procedure Nr. #6100, the decision of the 11th Civil Chamber is binding on the courts.
Therefore, the dispute should be heard and finalized at and before the 3rd Civil Court for Intellectual and Industrial Property Rights.[2]
The IPL provides protection for unregistered trademark and design rights, and cases regarding unregistered trademark or design rights fall within the jurisdiction of the Civil Court for Intellectual and Industrial Property Rights.
The Decision, bearing the Basis number #2018/2218, and the Decision number #2018/1705 and dated 18.7.2018, of the 16th Civil Chamber of the Regional Court of Justice of Istanbul reads as follows:
From the evidence under the file and the expert report, it is understood that the plaintiff's designs are unregistered original designs, and the defendant uses the same design. According to Article 57 of the IPL, if unregistered designs are made available to the public, the right holder is authorized to sue for infringement of the design right.
Pursuant to the aforementioned provision, it is possible to file a lawsuit at and before the Civil Court for Intellectual and Industrial Property Rights for unregistered designs, and after the lawsuit is filed, the assessment of whether the design will benefit from the protection provided for by this law according to Article 69/2 of the same law, and if not, whether unfair competition conditions occur within the scope of Article 55/a-4 of the Turkish Commercial Code is not an assessment regarding the task, but an assessment regarding the solution of the work according to the IPL, and since this should be done by the Civil Courts for Intellectual and Industrial Property Rights, the Civil Court for Intellectual and Industrial Property Rights is authorized to look into the dispute. [3]
Disputes arising out of contracts regarding the rights, as set out under the Law on Intellectual and Artistic Works or IPL, fall within the jurisdiction of the Civil Court for Intellectual and Industrial Property Rights.
The Decision, bearing the Basis number #2016/2514, and the Decision number #2016/4673 and dated 18.4.2016, of the 20th Civil Chamber of the Court of Cassation reads as follows:
The plaintiff's attorney claimed that an agreement was executed by and between the parties to use the TSE trademark, that his client received an annual trademark usage fee from the persons using the document, that a debt enforcement proceeding was initiated against the defendant company due to the defendant company's failure to pay the invoices for the trademark usage fee, and that the debt enforcement proceeding was suspended upon the objection filed by the defendant against the proceeding, and requested and sued for annulment of the objection and the award of denial compensation.
The lawsuit is related to cancellation of the objection against the debt enforcement proceeding initiated for collection of the trademark license fee. According to the nature of the dispute, pursuant to Article 71 of the Decree Law Nr. #556 on Protection of Trademarks, the competent court to hear the case is 2nd Civil Court for Intellectual and Industrial Property Rights of Ankara, which is a specialized court. [4]
The Decision, bearing the Basis number #2015/13114, and the Decision number #2015/11572 and dated 20.11.2015, of the 20th Civil Chamber of the Court of Cassation reads as follows:
The Civil Court for Intellectual and Industrial Property Rights, on the other hand, ruled that the case is a commercial business, that there is no case arising from a situation such as trademark infringement, unauthorized use of the trademark, exceeding the license within the scope of the Decree Law Nr. #556, and that the plaintiff's request is cancellation of the objection filed due to the objection against the enforcement proceedings regarding non-payment of the invoices issued for the service fee arising from the agreement, and that the Commercial Court of First Instance has the duty to look into the case where there is no dispute due to the trademark”.
The lawsuit is related to cancellation of the objection against the enforcement proceeding for collection of the trademark license fee. According to the nature of the dispute, pursuant to Article 71 of the Decree Law Nr. #556 on Protection of Trademarks, the court authorized to hear the case is the Civil Court for Intellectual and Industrial Property Rights, which is a specialized court. [5]
In determining the disputes falling within the jurisdiction of the Civil Court for Intellectual and Industrial Property Rights, it may be necessary to examine the merits of the subject matter of the case.
The Decision, bearing the Basis number #2021/1330, and the Decision number #2022/1432 and dated 16.5.2022, of the 37th Civil Chamber of the Regional Court of Justice of Istanbul reads as follows:
The case is not a dispute arising from intellectual property law in nature, but a recourse case for the claim of compensation from the defendant for the price paid by the plaintiff to an extra-judicial third party. Since the merits of the matter should be resolved according to the general provisions, it should be resolved by the Civil Court of First Instance, which is a general court, not by the specialized court. It is therefore necessary to rule as follows. ” … on the grounds of lack of jurisdiction. In the concrete case; after the decision taken by the plaintiff University publication commission to translate and print the foreign work by paying the royalty fee, the royalty fee was paid to the related foreign organization, but the compensation of the institutional damage caused by the defendant's failure to fulfill its responsibility in terms of translation and royalty was requested. Since there is no claim for existence and violation of the rights arising from the Law on Intellectual and Artistic Works numbered #5846 and there is no claim based on the registered design or trademark right, the application of the provisions of the Law on Intellectual and Artistic Works numbered #5846 in the case will not be in question. In this case, the dispute, which is related to its general provisions, should be heard and concluded at and before the Civil Court of First Instance. [6]
There is a close connection between the disputes arising from the applicable regulations on Intellectual and Industrial Property Rights and the Commercial Code. It is possible that the claim may be protected as a trademark under the IPL and as a business name under the Turkish Commercial Code. It is also possible that the acts constituting infringement of industrial property rights may also be protected under unfair competition pursuant to the Turkish Commercial Code, and it may be possible to assert the claims in question in alternating claims or to assert them together within the scope of related acts. In the event that the claims asserted pursuant to the Turkish Commercial Code are subject to the lawsuit together with the claims arising from the applicable regulations on Intellectual and Industrial Property Rights, the Civil Court for Intellectual and Industrial Property Rights is authorized for all claims. However, this situation may cause the Civil Court for Intellectual and Industrial Property Rights to hear cases related to rights that are not protected under the applicable IP regulations, but only under the Turkish Commercial Code.
4. Assessment
Lawsuits related to the rights, as set out under the Law on Intellectual and Artistic Works and the Intellectual Property Law, fall within the jurisdiction of the Civil Courts for Intellectual and Industrial Property Rights. However, these disputes also fall within the scope of commercial disputes. Therefore, for disputes that overlap between intellectual property rights and commercial law, there may be uncertainties in determining the competent court. In cases concerning unregistered trademark and design rights, it can only be determined at the end of the trial whether the rights subject to the lawsuit meet the conditions set forth under the IPL. The same applies to the claims asserted under the Law on Intellectual and Artistic Works, but it will only be possible to determine whether the subject matter of the lawsuit qualifies as a work pursuant to the Law on Intellectual and Artistic Works. Determination of disputes falling within the jurisdiction of the Civil Court for Intellectual and Industrial Property Rights and the Commercial Court of First Instance may lead to conflicts of jurisdiction due to the competition of rights regulated under the aforementioned laws and the fact that it can be determined at the end of the proceedings under which law the claims asserted are protected.
Att. Tuğbanur
Akyıldız
References:
1. İbrahim Karaaslan, Birbirleriyle
İlişkileri Bakımından Ticari İş ve Ticari Dava
Kavramları p. 37
2. THE DECISION, BEARING THE BASIS NUMBER #2017/458,
AND THE DECISION NUMBER #2017/5478 AND DATED 15.6.2017, OF THE 20TH
CIVIL CHAMBER OF THE COURT OF CESSATION
https://lib.kazanci.com.tr/yargitay
3. İstanbul Regional Court
of Justice, 16. HD., E. 2018/2218 K. 2018/1705 T. 18.7.2018,
https://www.lexpera.com.tr/ictihat/bolge-adliye-mahkemesi/istanbul-bam16-hd-e-
2018-2218-k-2018-1705-t-18-7-2018-1
4. THE DECISION, BEARING THE BASIS NUMBER
#2016/2514, AND THE DECISION NUMBER #2016/4673 AND DATED 18.04.2016, OF THE
20TH CIVIL CHAMBER OF THE COURT OF CESSATION
https://karararama.yargitay.gov.tr/
5. THE DECISION, BEARING THE BASIS NUMBER
#2015/13114, AND THE DECISION NUMBER #2015/11572 AND DATED 20.11.2015, OF THE
20TH CIVIL CHAMBER OF THE COURT OF CESSATION
https://karararama.yargitay.gov.tr/
6. THE DECISION, BEARING THE BASIS NUMBER
#2021/1330, AND THE DECISION NUMBER #2020/1432 AND DATED 16.5.2022, OF THE 37TH
CIVIL CHAMBER OF THE REGIONAL COURT OF JUSTICE OF ISTANBUL
https://www.lexpera.com.tr/ictihat/bolge-adliye-mahkemesi/istanbul-bam37-hd-e-
2021-1330-k-2022-1432-t-16-5-2022
