1- Infringement of Trademark Rights
Under Article 4 of the Industrial Property Law, a trademark is defined as follows: “A trademark may consist of any kind of signs, including words, figures, colors, letters, numbers, sounds and the form of the goods or their packaging, including personal names, provided that they enable the goods or services of an undertaking to be distinguished from the goods or services of other undertakings and can be displayed in the register in such a way that the subject matter of the protection granted to the trademark owner can be clearly and precisely understood.” It can be said that the main purpose of the trademark is to create an element of distinctiveness.
Based on Article 4 of the Industrial Property Law, trademark infringement can be characterized as the unauthorized use of the same or indistinguishably similar trademark by third parties.
The cases of trademark infringement are listed under Article 29 of the Industrial Property Law. Although the cases, constituting infringement, are listed follows:
“a) Using the trademark in the ways specified in Article 7 without the consent of the trademark owner. Situations in Article 7
b) Imitation of a trademark by using the trademark or an indistinguishably similar trademark without the consent of the trademark owner.
c) Selling, distributing, otherwise putting into the field of commerce, importing, exporting, holding for commercial purposes or making a proposal to make a contract for this product, even though s/he knows or should know that the trademark is imitated by using the trademark or its indistinguishably similar trademark.
ç) Expanding the rights granted by the trademark owner through a license without consent or transferring these rights to third parties”
These cases are not subject to the principle of limited number. Different situations that are not set out under the Law may also be determined as trademark infringement.
The actions that can be brought in case of trademark infringement are as follows; detection, cessation and prevention of infringement, and in addition to civil liability, criminal liability is also set forth under Article 30 of the Industrial Property Law.
2- Legal Actions that Can Be Filed within the scope of Trademark Infringement
a. Case for Determination of Infringement and its Scope
Within the scope of Article 149/1-a of the Industrial Property Law, the action for determination of infringement examines whether an act constitutes infringement of a trademark right, rather than determining the existence or non-existence of a right or legal relationship, as foreseen in the action for determination of infringement under Article 106 of the Code of Civil Procedure. However, within the scope of Article 149 of the Industrial Property Law, the trademark right holder may request determination of infringement separately or together with other claims (such as prohibition, compensation, etc.) depending on its legal interest.
For determination of infringement, it is not necessary that the perpetrator of the act is at fault and that a damage has occurred as a result of the act. A legal action may be filed against the defendant for determination of infringement of the trademark right without prior notice or warning. In the event that the action has been terminated, the trademark right holder may also file a legal action for determination of infringement since the legal interest of the trademark right holder is present. In essence, the action for determination of infringement is brought to determine the content of the infringements that the trademark right holder believes to have occurred against her/his trademark and to establish the certainty of the existence of infringement. After the content of the infringement has been determined, the trademark right holder will be able to file other legal actions, as set forth under the law, to eliminate the infringements and damages related to the trademark right.
b. Legal Action for Prevention of Infringement and its Scope
The owner of the trademark right may request the court to prevent an infringement that is about to occur or is likely to be repeated, pursuant to Article 149/1-b of the Industrial Property Law. In order to file a legal action for prevention of infringement, there must be a danger of infringement. The danger of infringement is the existence of strong indications that the act of infringement will be repeated or committed. Therefore, since the element of danger is sufficient for filing of an action for prevention of infringement, the elements of fault and damage are not sought.
c. Legal Action for Cease of Infringement and its Scope
The owner of the trademark right may request cessation of an infringement, which has begun and continues, in accordance with Article 149/1-c of the Industrial Property Law. The legal action for cessation of infringement can be filed as long as the infringement continues, and the statute of limitations does not run during this period. If the infringement has ceased, the cessation of infringement cannot be requested. After that, only prevention of possible repetition and elimination of the material consequences can be requested.
d. Legal Action for Removal of Infringement and its Scope (Elimination/Revocation of Infringement)
The person whose trademark right has been infringed may request the court to restore the previous situation and to eliminate the material consequences of the infringement within the framework of Article 149/1-ç of the Industrial Property Law. In order to file a legal action under this article, it is not necessary that the infringement is ongoing, but the infringement must have started and be continuing. The request for elimination of infringement may be made as long as the infringement or the consequences of the infringement continue. After the infringement has ceased and the consequences of the infringement have disappeared, a claim for removal of the infringement cannot be made.
The intended result of this legal action is elimination of the consequences of the infringement and restoration of the previous state, and the results that may be requested to be removed will vary depending on each concrete case. The fault of the infringer is not required for this action. The requests that can be put forward with this type of legal action lay lead to such consequences: confiscation of the goods, the production or use of which requires punishment, and the means of producing these goods, granting the right of ownership on the confiscated product, taking other necessary measures, deregistration of trademarks, disposal of products and vehicles, etc..
e. Legal Action for Damage Compensation and its Scope
Pursuant to Article 150/1 of the Industrial Property Law, persons who commit acts deemed as infringement of the trademark right are obliged to compensate the right holder for the damages. The liability for compensation, as set out under Articles 150 and 151 of the Industrial Property Law, is essentially tort liability in the sense of the law of obligations. Since trademark infringement is also a tort, it can be proved by all kinds of evidence.
The person whose trademark right has been infringed may claim the “damage caused” according to Article 151 of the Industrial Property Law. The concept of damage caused includes both the actual damage incurred and the profit deprived by the trademark right holder due to this action.
f. Other Claims in Case of Trademark Infringement
In addition to the above-mentioned legal actions, the trademark right owner who is subject to trademark infringement may also request disposal of the imitated trademark products subject to infringement, detection of evidence, and publication of the finalized court decision on daily newspapers, etc., if the relevant infringement is determined and finalized.
Pursuant to Article 159 of the Industrial Property Law, persons who have filed or will file a legal action for trademark infringement may request an interim injunction to ensure the effectiveness of the legal action, provided that they prove that the trademark subject to the legal action is being used in Türkiye in a way that constitutes infringement of their trademark rights or that serious and effective efforts are being made to use it.
As per Article 149/1 (d) of the Industrial Property Law, the trademark owner may request seizure of goods, the production or use of which requires a penalty due to infringement of the trademark right, and the means such as tools, devices, and machinery used to produce these goods, in a manner to prevent production of the infringing products.
According to Article 149/1 (e) of the Industrial Property Law, the trademark owner may request a decision to recognize the ownership of the confiscated goods according to subparagraph (d) of this provision. In the event that the trademark owner is granted the right of ownership, the value of the goods in question will be deducted from the compensation amount.
Article 149/1 (f) of the Industrial Property Law sets out the trademark owner's request for disposal. According to this provision, the trademark owner may request that measures be taken to prevent continuation of the infringement of the trademark right and that the trademarks on the products and means seized pursuant to subparagraph (d) of the Article be erased or disposed of if it is inevitable to prevent infringement of the trademark right. If it is easy to remove the imitated trademark from the goods, the disposal of the goods cannot be requested.
According to Article 149/1 (g) of the Industrial Property Law, the trademark owner whose trademark right has been infringed may request the court to notify and publish the decision to the relevant persons. As stated under the wording of the article, “In the event that there is a justifiable reason or interest, the final judgment may be published in full or in summary form on a daily newspaper or by similar means, or notified to the relevant persons, at the expense of the other party”.
One of the most important measures that can be taken to prevent continuation of trademark infringement and to eliminate its consequences is cancellation of the internet domain name. In case of trademark infringement through internet domain name, trademark right infringement is also in question, and internet domain name registrations made outside the trademark owner may face the sanction of abandonment. In domain name abandonment requests, courts generally decide on the abandonment of domain names with .com.tr extension. The abandonment of domain name cancellation or abandonment decisions of Turkish courts abroad is a matter of enforcement.
The statutory claims that may be filed in
case of trademark infringement may be asserted alone or it is possible to file
more than one claim under the same legal action.
The decision, bearing the Basis number #2021/3692 and the Decision number #2022/7831, of the 11th Civil Chamber of the Court of Cassation reads as follows:
"On the grounds that it is necessary to re-establish a new judgment on the issues of trial expenses, attorney fees and charges by the regional court of appeals, the appeal request of the defendant's attorney was rejected on the merits, the appeal application of the plaintiff's attorney by way of participation was partially accepted, the decision of the first instance court was abolished, a new judgment was established, considering the defendant's commercial presentation, the defendant's infringement and unfair competition of the plaintiff's registered trademark right belonging to the plaintiff was determined, stopped, prevented, the request for moral damages was partially accepted and moral damages of TRY 10.000.- to be collected from the defendant along with the legal interest to be accrued thereon as of the date of the legal action, rejection of the request for more, when the decision becomes final, the cost of the judgment paragraph is taken from the defendant and announced once on one of the three newspapers with high circulation throughout Türkiye, the injunction decision dated 17/04/2015 issued by the court to continue until the decision is finalized, when the decision becomes final, if there is still a product subject to the defendant's product subject to the trial that constitutes a violation in the market, it is decided to dispose of it by collecting it from where it is located within the scope of Article 56/4 of the Turkish Commercial Code.
…
With rejection of the appeal request of the defendant's attorney, the decision rendered by the Regional Court of Appeals is APPROVED in accordance with Article 370/1 of the Code of Civil Procedure…"
3- Criminal Liability in Case of Trademark Infringement
As a result of detection of trademark infringement, it may be requested to punish the infringing party in accordance with the penal provisions set, as set out under Article 30 of the Industrial Property Law. The offenses under this article are set out to protect the rights of the trademark right holder and to ensure functioning of the trademark system. Article 30 of the Industrial Property Law lists the acts that constitute infringement of the rights provided by the trademark to prevent infringement by others of the trademark owner's exclusive right to use the trademark. However, the acts related to infringement of the trademark right are not limited, and acts other than the relevant article may also fall under the scope of trademark infringement.
Article 30 of the Industrial Property Law reads as follows: “(1) Any person who produces goods or provides services, offers for sale or sells, imports or exports, purchases, possesses, transports or stores for commercial purposes, produces goods or provides services, offers for sale or sells, imports or exports, purchases for commercial purposes, possesses, transports or stores goods by infringing the trademark right of another person through adaptation or confusion shall be sentenced to imprisonment from one year to three years and a judicial fine up to twenty thousand days. (2) A person who removes the sign indicating trademark protection from the goods or packaging without authorization shall be sentenced to imprisonment from one year to three years and a judicial fine up to five thousand days. (3) A person who disposes of another person's trademark right by transferring, licensing or pledging it without authorization shall be sentenced to imprisonment from two years to four years and a judicial fine up to five thousand days. (4) If the offenses under this Article are committed within the scope of the activities of a legal entity, security measures specific to such offenses shall also be imposed. (5) In order to be sentenced for the offenses under this Article, the trademark must be registered in Türkiye. (6) Investigation and prosecution of the offenses under this Article are subject to complaint. (7) No penalty shall be imposed on the person who offers for sale or sells the goods produced by imitating the trademark to which another person has the right, in case the person who offers for sale or sells the goods informs where s/he obtained these goods and thus ensures that the producers are revealed and the goods produced are confiscated."
The trademark right holder will file a criminal complaint as the person who claims that her/his rights have been infringed. However, it is important to consider who has the right to file a complaint and what powers are granted to the attorney by the persons who will file a criminal complaint through their attorneys. Otherwise, the case will have to be dismissed procedurally.
The decision, bearing the Basis number #2021/22209 and the Decision number #2021/12970, of the 7th Criminal Chamber of the Court of Cassation reads as follows:
"Although the public case was filed against the defendant for the crime of trademark infringement upon the complaint of the attorneys of the participating companies namely ... Electronics Co Ltd., Apple Inc. and ..., based on the allegation that imitated products with trademarks registered in the name of the participating companies were seized for sale during the search of the defendant's workplace, the right to complain in trademark infringement crimes belongs exclusively to the trademark owner, and the real or legal person who owns the registered trademark and whose rights arising from trademark protection are infringed. In other words, the trademark owner who will exercise the right to complain is the natural or legal person on whose behalf the trademark is registered in the trademark registry kept before the Turkish Patent and Trademark Office. Since the right to file a complaint is a strictly personal right, it is possible to exercise this right by others.”
4- Statute of Limitations in Trademark Infringement Cases
Article 157 of the Industrial Property Law reads as follows: “The provisions of the Turkish Code of Obligations dated 11/1/2011 and numbered #6098 regarding the statute of limitations shall apply to claims arising from industrial property rights or traditional product names.” Therefore, the statute of limitations, as set out under the Code of Obligations, will be applicable for trademark infringement claims. The periods to be applied here is the statute of limitations for torts since trademark infringement is characterized as a tort in nature. In other words, the statute of limitations of 2 and 10 years will apply here. This period may even be longer in cases where the act also requires a penalty and the statute of limitations of penalty nature is longer.
5- Competent and Authorized Court in Trademark Infringement Cases
The court in charge of civil actions regarding infringement of trademark rights is the Civil Court of Intellectual and Industrial Rights. Where these courts are not available, the Civil Courts of First Instance are authorized. The competent court for civil actions to be filed by the trademark owner against third parties is the court of the plaintiff's domicile or the place where the unlawful act occurred or where the effects of this act are seen.
The competent court for criminal cases that may be filed due to infringement of the trademark right is the Criminal Court of Intellectual and Industrial Rights. If there is no Criminal Court of Intellectual and Industrial Rights across the respective jurisdiction, the Criminal Courts of First Instance will be in charge. As for jurisdiction, since there is no special provision under the Industrial Property Law, the general and special jurisdiction rules in the Code of Criminal Procedure will be taken into consideration.
The above-mentioned issues cover the rights of the registered trademark owner, and if the trademark is not registered, the trademark owner may file a legal action based on the unfair competition provisions under the Turkish Commercial Code regarding infringements.
6- Conclusion
The most important function of a trademark, as defined under Article 4 of the Industrial Property Law, is to distinguish the goods or services of one undertaking from the goods or services of other undertakings. Although the registration system is valid as a rule in terms of trademark protection, unregistered trademarks can also be protected as there is no obligation to register the trademark. However, trademark owners who register their trademarks obtain a broader and stronger protection under the Industrial Property Law Nr. #6769.
Accordingly, legal uncertainty in terms of protection in the field of trademark law has been eliminated and trademark protection has been harmonized with international conventions by and through the Industrial Property Law Nr. #6769.
Att. Merve Hilal Menteş
References:
1. Cahit SULUK, Rauf KARASU, Temel NAL,
Fikri Mülkiyet Hukuku, Ankara, 2017
2. Industrial Property Law
3. The decision, bearing the Basis number #2021/3692
and the Decision number #2022/7831, of the 11th Civil Chamber of the
Court of Cessation
4. The decision, bearing the Basis number #2021/22209
and the Decision number #2021/12970, of the 7th Criminal Chamber of the Court
of Cessation
