Criminal prosecution
Civil enforcement
Preliminary measures
This article is part of a series on anti-counterfeiting in Turkey.(1)
Criminal provisions are regulated for infringement of registered trademark rights and copyright infringement, whereas design and patent infringement is not regulated as a criminal offence.
The criminal route is generally used for counterfeit products where the trademarks are identical and there is no room to evaluate similarity and confusion. Trademark infringement is an offence prosecuted based on a complaint. Rights holders must file a criminal complaint before the relevant public prosecutor.
Only a criminal judge can issue search and seizure warrants. According to such warrants, seizure operations are conducted by the provincial security or the police directorate IP department.
To prevent the loss of evidence, or if the counterfeiting products are harmful to human health, seizure operations can be conducted ex officio by the police upon the order of the public prosecutor. In those cases, rights holders must file a complaint before the relevant public prosecutor to continue the seizure and commence criminal proceedings. There are specialised criminal IP courts available in Istanbul, Izmir, Ankara and Antalya.
Criminal provisions are regulated by the IP Code. Article 30 of the IP Code sets out the following penalties:
- between one- and three-years' imprisonment and a judicial fine calculated per day for up to 20,000 days will be handed to a person who, while infringing a trademark right through adaptation or likelihood of confusion, produces or provides services, puts on the market or sells, imports, exports, buys for commercial purposes, possesses, transports or stores goods;
- between one- and three-years' imprisonment or a judicial fine calculated per day for up to 5,000 days will be handed to a person who removes the sign indicating trademark protection from a product or its packaging without authorisation; and
- between two- and four-years' imprisonment and a judicial fine calculated per day for up to 5,000 days will be handed a person who, without authorisation, disposes of a trademark right, which is owned by someone else, by transferring, licensing or pledging it.
Additional specific security measures will be taken if a legal entity commits a crime outlined in article 30.
If the counterfeiter reveals the source of the counterfeit products and assists in the identification of the producer and the seizure of the counterfeits, they will not be sentenced; however, in practice, it is almost impossible to apply this procedure owing to lack of cooperation.
If the accused has no criminal record, the court may decide to defer the announcement of the verdict. In that case, the accused should give their consent; otherwise, the clause regarding the deferment of the announcement of the verdict will not be applied. Where the accused intentionally commits any crime within the five-year period after the date of the finalisation of the decision, the court will pronounce the judgment.
If the court is convinced of the counterfeit nature of the seized products, the products will be destroyed at the end of the criminal procedure. The IP Code regulates a fast-destruction procedure.
Pursuant to article 163, if the seized goods cannot be preserved at the custodial office owing to quantity, size or character, in line with the public prosecutor's instructions, sufficient samples will be taken from the goods, and the remaining goods will be sent to a financial organisation in the locality.
If there is a risk that the infringing goods will be damaged or lose value, or their preservation will be a significant burden, following the examination, based on the public prosecutor's request at the investigation phase, the court may decide to destroy the goods before the final decision.
Rights holders may follow a civil route to cease and prevent infringing acts and seek damages.
The key points of civil enforcement include the following:
- Rights holders may apply to specialised IP courts, which are available in Istanbul, Izmir, Ankara and Antalya. In places where there is no specialised IP court, the first-instance civil court will undertake the legal proceedings and procedures that are within its scope. If there are more than two first-instance civil courts, the third first-instance civil court will be the competent court.
- Turkey has a three-degree system (ie, the first-instance court, the appellate court and the Supreme Court), which is accepted until a case is finalised.
- The first-instance court's initial decision in a straightforward dispute is received within approximately 15 months, and the processes before the appellate court and the Supreme Court take approximately 18 months per appeal.
Rights holders may take the following route in a civil enforcement:
- preliminary injunction request;
- evidential action; and
- main civil action.
In the absence of any registered rights, it is possible to put forward claims of unfair competition.
Persons who have the right to institute legal proceedings under the IP Code – on condition that they prove that the action forming the subject of the proceedings violates their IP rights in Turkey, or serious and effective preparations are performed to that end – may ask the court to order a preliminary injunction to ensure the effectiveness of the judgment to be delivered. The court usually requests a guarantee deposit to prevent possible losses of the adverse parties.
Preliminary injunctions can:
- prevent and stop actions (eg, purchasing, selling, displaying at fairs, importing and exporting) that constitute infringement of the plaintiff's IP rights;
- seize and store anywhere in Turkey (including customs and free ports or zones) products infringing IP rights, imported products and instruments used exclusively in the production of infringing goods;
- block access to the infringing content from internet; and
- submit a security in terms of compensation for any damage.
A rights holder may apply for a preliminary injunction by making a request without notification to the adverse party. This can be granted on an ex parte basis, generally by ordering prior expert examination. Pursuant to the Civil Procedure Law, if the applicant's right requires immediate protection or notifying the adverse party would cause serious and irrecoverable damage, the judge may grant the preliminary injunction without hearing the adverse party's arguments.
In those cases, the adverse party is entitled to file an objection within one week of being notified of the preliminary injunction. If the court rejects the removal of the preliminary injunction, the adverse party may appeal the interim decision. The preliminary injunction will be valid until the case has been finalised unless the court renders an interim decision to the contrary or the appellate court decides to remove the preliminary injunction.
To implement a preliminary injunction, a rights holder should apply to the relevant execution office within one week of notification of the preliminary injunction decision; otherwise, it will ex officio be deemed invalid.
Preliminary injunctions can be requested within an evidential or civil action or solely as an immediate precaution. In case a preliminary injunction is obtained without filing a main civil action, the rights holder must file a civil action within two weeks of the date of the execution request and notify the relevant execution office.
Remedies include:
- determination and cease of infringement;
- preliminary injunction;
- compensation;
- permanent injunction;
- seizure and destruction of the infringing products and tools (eg, devices and machines) used exclusively for the production of the products; and
- publication of the summary verdict of the court decision.
If the rights holder files an evidential action, the court may decide to order a determination of evidence at the premises of the adverse party without notifying the adverse party to avoid the destruction of evidence. In such case, the infringing goods will be determined with the official expert present, and the evidence will be properly stored and secured.
Civil action for damages can be based on an existing IP right application after its publication in the bulletin for opposition purposes.
Material damages include actual loss and loss of revenue. Loss of revenue should be calculated using three evaluation methods:
- the potential revenue gained by the rights holder had the competition brought about by the infringer not existed;
- the net revenue obtained by the infringer; or
- the payment of the licence fee by the person who infringed the IP right, if that person used the rights through a licence agreement in accordance with the law.
The rights holder can choose any of the above methods, and the court may decide to add an equitable share to the calculation of revenue.
In calculating non-realised income, factors such as the economic value of the IP right or the number, term and type of licence related to the IP right at the time of infringement, as well as the nature and extent of infringement, is considered. The court can decide on a fair share to be added in the calculation of the income if it concludes that the IP right is the determining factor in the generation of demand for the product.
Compensation of reputational damage can be requested within the scope of a civil action.
Mandatory mediation for compensation claims
The mediation process as an initial procedure is a mandatory course of action for civil proceedings where compensation is claimed. Three options are available:
- the parties may mutually agree on a mediator from the official list;
- if one party applies to a mediator, the adverse party may approve it; and
- parties may apply to the mediation office located at the address of the competent court, and the mediation centre will appoint the mediator.
The mediator must resolve the dispute within six weeks, which can be extended for a further two weeks. At the end of this process, if the parties cannot reach an agreement, the mediator will submit their final report, and the court will hold the dispute.
For further information on this topic please contact F Burcum Evgin 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.tr.
Endnotes
(1) For the first article in the series, see "Anti-counterfeiting in Turkey: legal framework and border measures".