Preventative measures and strategies
This article is part of a series on anti-counterfeiting in Turkey.(1)
Unauthorised Internet commerce
According to the E-Commerce Law and the Electronic Commerce Regulation, intermediary service providers are not liable for monitoring the lawfulness of the content provided by third parties in line with their services. However, they must remove unlawful content after being notified of infringement, otherwise they may be jointly liable.
Filing complaints with social media accounts
In determining the existence of counterfeit products sold via social media accounts, or where the adverse party is using trademarks or designs in account or domain names without authorisation, an online complaint can be filed with the social media accounts on the basis of IP rights infringement and a request can be made to remove the infringing content or close the account.
Online notary determination
This procedure can be applied as an initial step to secure evidence and is considered as official evidence before the courts. According to the Notary Public Law, it is possible to determine infringing content through the website of the Notaries Union of Turkey.
Cease and desist letters
Cease and desist letters can be served via a public notary to online infringers, requesting:
- the cessation of infringing acts (eg, the infringing use of logos);
- the removal of relevant content from websites and marketplaces;
- the destruction or removal of the conflicting IP right from webpages; and
- the undertaking in writing never to use or register the right.
Online investigation strategies
Some private investigation companies provide Internet monitoring services. They provide detailed investigation reports and, on request, purchase sample products as evidence for further legal proceedings.
There is no clear regulation regarding the liability of internet service providers (ISPs) with respect to trademark infringement takedowns. In practice, ISPs are not responsible for controlling the content or searching for the presence of unlawful practices. However, the "notify and remove" principle is accepted under Turkish law. ISPs must remove unlawful content from publication after being notified or informed of the infringement; otherwise, they will be jointly liable.
Article 4 of the Copyright Act regulates the takedown process in cases of online copyright infringement, such as the following acts if they are carried out without the authorisation or consent of the copyright owner:
- making the work available to the public; and
- alteration, distribution and communication to the public by devices enabling the transmission of signs, sound and images.
Copyright owners may contact the content provider for the removal of the infringing content within three days. If the content provider does not respond to the request within that period, the copyright owner may submit a request to the competent public prosecutor to grant an order against the ISP to block the content provider's internet access.
Preventive measures and strategies
Use of local counsel and investigators
Although there is no regulation regarding private investigation under Turkish legislation, rights holders may collaborate with independent consulting and investigation companies. These companies provide services including:
- internet monitoring;
- in-depth investigations;
- market checks, to establish a list of targeted stores selling counterfeit products; and
- purchasing sample products as evidence.
Licensing to third parties
Rights holders must have effective and timely control over contractual parties and cooperate with parties to keep a close eye on the market to fight existing and possible counterfeits. According to article 29 of the IP Code, the unauthorised extension of the licence right is deemed to be trademark infringement. The licensee can access a special authentication method for auditing the products.
Cooperation with national anti-counterfeiting agencies
The IP police department of the Security Directorate conducts raid operations periodically. Where counterfeit products are harmful to human health, it works in cooperation with the Ministry of Health to conduct ex officio operations upon the order of the public prosecutor.
The Directorate General of Customs of the Ministry of Trade offers training to build awareness between customs officers.
Products seized under the Anti-Smuggling Law will be confiscated before the Customs Liquidation Directorate. The liquidation of the products is carried out via sale or auction. The smuggled products are mostly counterfeit.
If the rights holder or its representative records its rights before the Customs General Directorate of Liquidation before the liquidation process begins, the directorate will inform ex officio the rights holder of the smuggled products that have been seized with respect to smuggling to allow the rights holder to submit a complaint or obtain a preliminary injunction decision within 10 working days to prevent the sale of those goods.
During trade fairs, infringing activities can be determined through the notary public or an expert appointed by the court. For an official expert examination, an evidential action should be filed before the specialised IP courts.
For further information on this topic please contact Feride Utku or Serra Coral 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.