Facts
Background
Decision
Comment


Registering IP rights before customs is a strong means of IP protection as it provides cumulative protection over all Turkish borders and customs authorities. A customs registration gives rights holders 10 business days to pursue legal routes against suspicious products. However, this period is limited to three business days for perishable goods. This raises the question: how do the customs authorities determine whether a product is perishable?

Facts

In a recent case, customs granted a rights holder only three business days to act with respect to suspicious carbonated beverages bearing the rights holder's trademark, which had been registered before customs, referring to the perishable nature of the products. This decision contradicted earlier decisions of the customs authority to grant the rights holder 10 business days for the same goods. Accordingly, it had to be clarified how the perishable nature of the products should be determined under Turkish law.

Background

The number of IP rights registrations before the customs authorities is increasing yearly. Such registrations grant rights holders a preclusive protection to act against counterfeiters and the opportunity to combat counterfeit goods effectively before they enter the market.

Under Turkish legislation, the customs authorities grant the rights holder 10 business days to:

  • determine whether the suspended goods are counterfeit; and
  • take the necessary legal actions for preventing their release.

However, when the goods in question are perishable, this suspension period only lasts for three business days, even if the trademark is registered before customs. Therefore, determining whether products are perishable is of great importance for rights holders, as this determines the deadline within which they must take action.

The source for determining whether a product is perishable is the Ministry of Commerce's Sampling Guide. In the guide, perishable products are listed as "B1" products. These must be carried and stored in their original packaging and in refrigerated cabinets. Examples include:

  • powdered or concentrated milks;
  • fruit preparations; and
  • vegetables.

In practice, customs may mistakenly categorise some products (eg, carbonated beverages and soft drinks) as perishable goods, even though they are not categorised under the "B1" section in the Sampling Guide. Such misjudgements result in rights holders having a shorter period of only three business days to act against the suspended goods, when they should be given 10 business days. This period is crucial, especially for foreign rights owners, who work in different time zones than that of Turkey. It is nearly impossible to review the nature of the suspicious goods, receive instructions from the rights holders and apply to the necessary legal routes within three working days. In other words, an accurate determination of whether the suspended goods are perishable is vital to avoid any loss of rights, since rights holders must act swiftly.

Decision

In the present case, an explanatory petition was submitted to customs, referring to the Sampling Guide. Customs issued a correction decision, stating that carbonated beverages are not categorised as perishable products. Accordingly, customs reissued the suspension decision, granting the rights owner 10 business days.

Comment

Upon receipt of a decision about the nature of suspended products, rights holders may refer to the Sampling Guide of the Ministry of Commerce to obtain a correction decision.

For further information on this topic please contact Irem Bezek at Deriş Patents and Trademarks Agency by telephone (+90 212 252 6122) or email ([email protected]). The Deriş Patents and Trademarks Agency website can be accessed at www.deris.com.

Gökçenur Erk, intern, assisted in the preparation of this article.