Tuğçe Güven Serra Coral June 27 2022 Anti-counterfeiting in Turkey: legal framework and border measures Deriş Patents and Trademarks Agency | Intellectual Property - Turkey Tuğçe Güven, Serra Coral Intellectual Property Legal frameworkBorder measuresLegal frameworkTurkey is a party to several international conventions, including:the Paris Convention for the Protection of Industrial Property;the Agreement on Trade-Related Aspects of Intellectual Property Rights; andthe Berne Convention for the Protection of Literary and Artistic Works.Turkey also has specific national legislation, including:the Industrial Property Code 6769 (the IP code);the Law on Turkish Intellectual and Artistic Works (5846) (the Copyright Act);the Code of Commerce;the Customs Law;the Anti-Smuggling Law; andLaw 5651 on Regulating Broadcasting on the Internet and Fighting Against Crimes Committed through Internet Broadcasting (the Internet Law).Border measuresIt is possible to register IP rights (ie, trademarks, industrial designs, patents, utility models, copyrights, geographical indications, integrated circuit topographies and plant breeders' rights) before customs. It is advisable to follow this procedure as a crucial first step to combatting counterfeiting in Turkey.The IP rights registration procedure before customs is as follows:Rights holders can register their IP rights via an online central application filed before the Turkish Customs Ministry, which has effect over all Turkish borders and customs authorities.Customs monitors import, export and free trade zone transactions.Customs applications are registered within one to two months.No official fees are required for filing the applications.If customs finds any documents to be missing from the application, the rights holders or representatives will be requested to provide the missing documents within a reasonable time. If the missing documents are provided within the time provided, an official notification accepting the recordal of rights will be served to the applicant within approximately 20 to 30 days.Customs provides one year of protection from the application date for recorded rights. The registration can be renewed periodically and will always provide a one-year period of protection. If the renewal term is missed, a new customs application may always be filed.The following items are required for the records:documents evidencing that the applicant is the real rights holder (eg, the IP rights registration certificate);a power of attorney notarised and legalised (by apostille) if the application is filed via a legal representative; anda signatory circular evidencing the authorisation of the applicant if the application is filed in the name of a legal entity.Although the following information is not mandatory to complete an application, it is crucial for the protection process:information regarding the genuine products and their distinguishing features;the countries where the genuine products are manufactured;the suspected differences between the genuine and infringing products and any other information on the infringing product;the itinerary of the genuine products;the harmonised system codes (HSCs) of the genuine products (HSCs are international codes defining the products for international trade); andthe details of the local legitimate dealer, importer or licensees.If the suspicious goods carry a mark that has been registered before customs and the rights holder is notified of this, the rights holder will have 10 working days to examine the goods and commence legal procedures. If a sound reason is provided, it is possible to request a 10-working-day time extension from customs, which will be provided at customs' discretion.Customs can act ex officio and notify the trademark attorneys or trademark owners of suspicious third-party activities, even if the trademark is not registered with it. In those cases, the rights holders have three working days to complete all procedures (ie, examine the products and take action or register their trademark rights before customs to receive an additional seven working days of seizure).In the case of trademark counterfeits, criminal procedures can be followed and a complaint can be filed before the public prosecutor to commence criminal proceedings. It is also possible to request a preliminary injunction from the civil IP courts for civil proceedings; otherwise, customs will release the suspected goods once the seizure period ends.In the case of patent or design counterfeiting, only the civil routes can be pursued.If both parties agree, it is possible to request the destruction of the seized goods from customs officers by filing a petition between three and 10 working days after the seizure of the goods. The destruction procedure can be applied without a court order.The international exhaustion principle under article 152 of the IP Code permits the parallel importation of genuine products. Actions related to products that are subject to IP right protection fall outside the scope of the right once the products are released to the market by the rights holder or third parties with the rights holder's consent; therefore, international exhaustion of rights is accepted.However, the second paragraph of article 152 indicates that the trademark holder has the right to prevent the commercial use of the products, within the scope of the provisions of the first paragraph, by means of being modified or downgraded by third parties. These activities can be deemed to fall within the scope of trademark infringement and unfair competition, especially owing to the fact that the function of the trademark to identify or guarantee the source or origin is damaged.For further information on this topic please contact Tuğçe Güven or Serra Coral at Deris Attorney At Law Partnership by telephone (+90 212 252 6122) or email ([email protected] or [email protected].%20). The Deris Attorney At Law Partnership website can be accessed atwww.deris.com.tr.