Okan Çan Mustafa Akbas November 18 2019 Trademark rights versus freedom of speech Deriş Patents and Trademarks Agency | Intellectual Property - Turkey Okan Çan, Mustafa Akbas Intellectual Property FactsDecisionDissenting opinionCommentThe Constitutional Court recently handed down an important decision regarding freedom of speech and unfair competition claims following the use of a company's trademark in an online domain name. The decision was published in the Official Gazette on 20 March 2019.FactsThe applicant set up the domain name 'www.Xkargomagdurlari.com' ('www.victimsofthecouriercompanyX.com') with the aim of collecting criticism of a specific courier company by former employees who believed that their employment contracts had been unfairly terminated.The courier company sued the applicant on the grounds that the use of their trademark in the domain name in a negative way had damaged their commercial reputation. Further, the company requested that the damaging comments be deleted from the website and access thereto be restricted.The Fourth Civil IP Court of Istanbul (IP Court) concluded that the applicant's action constituted unfair competition under Article 55 of the Commercial Code and decided to restrict access to the website. This decision was upheld by the Supreme Court. As a result, the applicant applied to the Constitutional Court on the grounds of the violation of fundamental human rights (ie, equality before the law, freedom of communication, freedom of thought and freedom of speech).DecisionThe Constitutional Court found that the IP Court's verdict constituted a limitation to freedom of speech. It was therefore imperative to evaluate whether this limitation had a legal or legitimate purpose and conformed with the necessities of a democratic society.The Constitutional Court found that the IP Court's decision met the requirements of legality and legitimate purpose, as it was based on Article 55 of the Commercial Code and aimed to protect the courier company's commercial reputation. Further, the Constitutional Court stated that the limitation of freedom of speech conformed with the necessities of a democratic society, as the state must protect the fundamental rights of individuals (eg, their property rights). Considering the balance between the applicant's right to freedom of speech and the damage caused to the courier company's IP rights, the Constitutional Court declared that limitation of the former was proportionate and rejected the application based on the majority vote.Dissenting opinionNotably, one of the judges issued a dissenting opinion which stated that any limitation to the freedom of speech should:respond to a societal need;be a last resort; andbe the exception rather than the rule.According to the dissenting judge, under the principle of proportionality, the accuracy of the information published on the website in question and the public interest in this information must be considered while also establishing a balance between the courier company's IP rights and the applicant's freedom of speech.The dissenting judge argued that the indefinite restriction of access that the IP Court had placed on 'www.Xkargomagdurlari.com' (without having evaluated what type of societal need it responded to) could not be considered proportionate. Further, the judge underlined that protecting a company's commercial reputation serves a personal interest, whereas protecting freedom of speech serves the public interest. Therefore, steps taken to protect commercial interests should not cancel the right to freedom of speech.The dissenting judge categorised joint stock companies as individuals or institutions that voluntarily became public figures and should therefore be able to tolerate higher levels of criticism in comparison with regular people, as expressly stated by the European Court of Human Rights (ECHR) (eg, Steel and Morris v the United Kingdom, App 68416/01, 15 February 2005).The dissenting judge also referred to a similar case handled by the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre in which the complainant company requested that ownership of the domain name 'akbankmagdurlari.com' ('victimsofakbank.com') be transferred to itself. (The website published critical comments about a bank.) The presiding panellist stated that the websites featured critical comments from consumers about the complainant's services and should therefore be protected within the scope of freedom of speech.In this context, the dissenting judge concluded that the restriction of access to 'www.Xkargomagdurlari.com' to protect the courier company's IP rights and commercial reputation was not a necessary precaution in a democratic society and was instead a disproportionate violation of freedom of speech under Article 26 of the Constitution.CommentThe Constitutional Court's decision shows how it handles cases in which fundamental rights such as freedom of speech and IP rights compete, especially in the service industry sector. However, it is a concern to see the Constitutional Court evaluating freedom of speech so narrowly, despite the fact that it is widely protected by recent ECHR and WIPO decisions and jurisprudence in other countries.For further information on this topic please contact Okan Can or Mustafa Akbas at Deris Attorney At Law Partnership by telephone (+90 212 252 6122) or email ([email protected] or [email protected]). The Deris Attorney At Law Partnership website can be accessed at www.deris.com.tr.