Legal frameworkDomestic law
What is the primary legislation governing trademarks in your jurisdiction?
In Turkey, the primary legislation governing trademarks is the Intellectual Property Law No. 6769, which entered into force on 10 January 2017.International law
Which international trademark agreements has your jurisdiction signed?
Turkey is part of many international trademark agreements such as:
- the Trade-Related Aspects of Intellectual Property Rights (TRIPS);
- the Bern Convention;
- the Paris Convention;
- the Trademark Law Treaty (TLT);
- the Protocol Regarding to the Madrid Agreement Concerning the International Registration of Marks;
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Trademarks (the Nice Agreement); and
- the Vienna Agreement.
Which government bodies regulate trademark law?
Trademark legislation in Turkey is prepared by the Grand National Assembly and, in terms of terms of prosecution matters, the execution of trademark legislation is handled by the Trademark and Patent Office. The Trademark and Patent Office carries its activities under the Ministry of Science, Industry and Technology.
Registration and useOwnership of marks
Who may apply for registration?
According to article 3 of new Industrial Property Law No. 6769, which came into force on 10 January 2017, the following are entitled to trademark ownership:
- Turkish citizens;
- real or legal persons who are domiciled or who have commercial establishments within Turkish territory;
- persons who have application rights arising owing to the terms of the Paris Agreement and the Agreement Establishing the World Trade Organization dated 15 April 1994; and
- in line with reciprocity principles, nationals of states that provide industrial property rights to Turkish nationals.
What may and may not be protected and registered as a trademark?
According to article 4 of Industrial Property Law No. 6769, trademarks should distinguish one enterprise’s goods and services from another’s and should explicitly define the protections and rights granted to the trademark owner by being registered, and can include names of persons, other words, colours, shapes, symbols, letters, numbers, sounds and labels. In addition, Industrial Property Law No. 6769 defines registration of guarantee marks and joint marks.
Article 5 of Industrial Property Law No. 6769 defines signs and symbols that cannot be registered as trademarks:
- signs that are not distinctive;
- signs that provide the type, kind, qualification, amount, purpose, value or geographical source, that provide the time of production of the goods or the time when the service is provided, or signs that include other qualifications of the goods or services exclusively or as their essential part;
- trademarks that consist exclusively of signs or indications that serve in trade to indicate the kind, characteristics, quality, intended purpose, value or geographical origin, or designate the time of production of the goods or of rendering of the service or other characteristics of goods or services;
- signs that exclusively or as a main element include signs and names that are generally used by all in the trade or that distinguish those that are subject to a specific profession, art or trade group;
- signs containing the shape of the product resulting from the nature of the product, which is necessary to obtain a technical result or which gives substantial value to the product;
- signs that will confuse the public regarding the qualification, quality and geographical source of the goods and services, place of production or geographical origin of the goods and services;
- signs that are to be refused pursuant to article 6-bis(2) of the Paris Convention;
- trademarks containing badges, emblems or escutcheons other than those covered by article 6-bis(2) of the Paris Convention that have not been authorised by the competent authorities and are of particular historical and cultural public interest;
- signs that contain religious symbols;
- signs that are contrary to public order and morality; and
- signs that consist of or include registered geographical indications.
Also, service marks, collective or certification marks and non-traditional marks such as sounds, smells, designs, etc, are registrable under Turkish trademark law.Unregistered trademarks
Can trademark rights be established without registration?
In principle, Turkish trademark law is based on the system of registration. Accordingly, a trademark owner is entitled to rights through registration.
However, in practice, in some cases, non-registered trademarks may also be protected. Such exceptions are as follows:
- the trademark started to be used in Turkey, before the application date of a third party’s trademark;
- the unregistered trademark’s owner has a relationship (such as a distributorship, etc) with the owner of a third party’s trademark; or
- the trademark is filed in bad faith, in other words, a third party is aware of an unregistered trademark and files an application for the exact same trademark.
Also, trademark infringements against non-registered trademarks are protected by articles regulating unfair competition under the Commercial Code.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
According to Turkish precedents, well-known trademarks are also under use obligation. The Supreme Court precedents rule that use requirement of a trademark is valid in terms of all types of trademarks, including well-known trademarks, as well. In other words, even if a trademark is registered as a well-known mark before the Patent and Trademark Office, it will be under threat of cancellation based on non-use - in terms of goods and services that are not used - if the trademark is not used for five years, retrospectively from its registration date.
To prove use of a trademark - being independent from whether it is well-known or not - the following documents such as information about the dealer or distributor in Turkey, invoices, shipping documents, custom documents, catalogues, examples of promotional materials, examples of correspondence with Turkish customers of Turkish dealers, are required.The benefits of registration
What are the benefits of registration?
In Turkish trademark law practice, even if registration is not compulsory, it has by the way an explicatory character, which allow to ensure the trademark owner’s rights. The registered trademarks are protected under Intellectual Property Law No. 6769 - which is being integrated with EU trademark legislation - which is specialised solely for the IP rights and, therefore, includes very specific regulations as to IP matters.
Regardless of whether a trademark is registered or not, there are specialised civil and criminal IP courts in Turkey's three largest cities: Istanbul, Ankara and Izmir. In other cities, regular civil and criminal courts have jurisdiction over IP rights cases. Following years of campaigning against counterfeiting, even non-specialised judges have an establish point of view on IP matters and accept their importance.
However, as a matter of course, registration of a trademark allows greater protection that allows the rights owner to act before any component legal authorities in Turkey, including the customs authority.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
To file a trademark application before the Patent and Trademark Office, no power of attorney is required. For word marks, correct spelling of the word and device marks is required with a digital representation of the trademark in JPEG format, with a resolution of 300 dots per inch and a size of 5cm x 5cm as a minimum.
Also, name, address, telephone and facsimile number of the owner, list of goods or services claimed, certified copy of the priority document - if priority is claimed - are required.
In order to appoint someone as a legal representative before the Patent and Trademark Office, a simple signed power of attorney is required without notarisation. The electronic filing of a trademark application is also available.
Trademark searches before filing are available but not mandatory. The official fees are as follows:
- a similarity or availability search for a trademark in one class: €10; and
- for each additional class: €4.
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
The period of trademark registration begins with the application for registration and ends with issuance of the registration certificate. In other words, registration formally comes into effect, following deposit of the registration fee. However, a trademark is protected as of its application date, with the condition that it is duly registered during the final stage. The Patent and Trademark Office has gone through organisational developments, and with new Industrial Property Law No. 6769 coming into force the publication period of trademark applications on the Official Trademark Bulletin has been decreased from three to two months; as a consequence, this has speeded up the registration process of trademarks. Accordingly, the average trademark registration may take up to six to seven months.
The official cost of the registration process for trademarks with a single class of goods or services is about €125 to €130.
The estimated time and costs given above are purely for smooth registration processes; therefore, in the following cases, the time and costs would increase:
- provisional refusal decisions of the Patent and Trademark Office; or
- filing of third-party opposition to the published trademark.
Another innovation brought in by new Industrial Property Law No. 6769 is abolition of the requirement to submit a power of attorney document during the application process. Accordingly, additional document submission is not required.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Turkey became a party to the Nice Agreement on 12 July 1995 with Decision No. 95/7094 of the Board of Ministers. The agreement came into force on 1 January 1996. Turkey has signed the revised Geneva version of 1997.
The Patent and Trademark Office classifies goods and services in accordance with the Nice Agreement and publishes communiques accordingly.
Turkish trademark law allows multi-class trademark applications.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The trademark application process consists of a formal examination, search of absolute grounds for rejection, opposition to decision of the Patent and Trademark Office and opposition to publication of an application, and assessment of the views and oppositions of third parties. The final part of the process is registration of the trademark.
To duly claim registration, the application submitted to the Patent and Trademark Office must be subjected to formal examination. If any deficiencies are found during the formal examination the applicant shall be informed regarding these deficiencies or mistakes and be given a period of two months in order to remedy the deficiencies. As the law points out, if the formal requirements have not been met during the two-month period, the requests are either dropped or only partially accepted.
Once the formal examination is finalised, absolute reasons for rejection are evaluated by experts also by considering the type of goods and services. If any of the circumstances listed in article 5 of Industrial Property Law No. 6769 are found in part or whole, then the application will be partially or wholly rejected on the grounds of absolute rejection defined in article 5.
Pursuant to article 5/3 of Industrial Property Law No. 6769, coexistence agreements and letters of consent are now enforceable, which allows the applicants to overcome the absolute grounds of rejection (ex officio refusal grounds) by obtaining the prior rights owner’s consent.
The applicant has the right to appeal against the decision of the Patent and Trademark Office within a period of two months.
Applications that have been duly submitted, that have not been rejected on the above grounds, or that have not been appealed or else have been appealed and accepted by the Patent and Trademark Office shall be published in the Official Trademark Bulletin. Oppositions made in relation to articles 5 and 6 of Industrial Property Law No. 6769 to the publications in the Official Trademark Bulletin may be proposed by whom it may concern within a period of two months.
The application is registered and published in the Official Trademark Bulletin in the following circumstances:
- if the application has satisfied all relevant criteria or has done so within any additional period available;
- if any oppositions have been rejected by the Patent Institute; and
- if the registration fee has been paid.
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
As the result of another innovation brought in by new Industrial Property Law No. 6769, in the case of opposition made on the grounds of similarity of the applicant’s trademark to a previously registered trademark, the applicant must be able to submit evidence proving that the goods or services have been widely used in Turkey or must propose justifiable reasons regarding non-use of the trademark within a period of five years prior to the application date. The opposition shall be rejected if the opposition cannot submit any contrary evidence suggesting otherwise.
In addition, an invalidation lawsuit may be brought by the people who it concerns if the trademark has been seriously inactive for five years following the date of registration.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Symbols or phrases such as ™ and ® etc, can be used to trademark use or registration. However, such use is not mandatory, but optional. Also, as long as an application ends with registration, there is no risk of using such signs during application of a trademark. Actually, in Turkey, since registration of a trademark already grants a full trademark protection and since the trademark registry is open to the public, there is no specific positive or negative in using such symbols or phrases. Even if such use does not grant any specific legal rights, in a potential dispute, such use of symbols may help the rights owner to allege that the counterparty should already been aware of the fact that the trademark in dispute is already registered in the name of someone else.Appealing a denied application
Is there an appeal process if the application is denied?
Applicants may submit a written and reasoned appeal against the decisions of the Patent and Trademark Office within a period of two months starting from the date of notification. Appeals submitted to the office are reviewed by the Re-Evaluation and Re-Examination Board. Applicants may apply to the Ankara Court on Duty of Intellectual and Industrial Property Rights against the final decisions given by the board.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Duly made applications and applications that have not been rejected by the Patent and Trademark Office are published in the Official Trademark Bulletin.
Oppositions may be brought within a two-month period on the basis of the grounds set out in article 6 of Industrial Property Law No. 6769.
Third parties that did not oppose the publication within the given period of two months may file an invalidation action based on the same opposition grounds.
One of the listed reasons for opposition under article 6 of the Industrial Trademark Law is bad faith. The Patent and Trademark Office demands substantial and concrete evidence explicitly showing bad faith. In order to demonstrate bad faith:
- the trademark owner opposing must prove that the trademark is widely known and actively used in Turkey and that the applicant should have been aware of such circumstances;
- the existence of a prior professional or commercial relationship between the applicant and the opponent;
- the existence of figurative similarities between the two trademarks in question; and
- the existence of similar conditions must be put forward with substantial evidence.
The official fee for filing an opposition against the Official Trademark Bulletin is €30.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
Trademark protection begins with the application and is granted for 10-year periods. Every 10 years, renewal of trademark registration provides continued protection. Applications for renewal shall be made within six months starting from the end date of the 10-year period of protection, otherwise they will be invalidated. Renewal of trademarks does not require any documents indicating active use of the trademark.Surrender
What is the procedure for surrendering a trademark registration?
Since surrendering a trademark application means a loss of right, for the withdrawal of a trademark, a notarised power of attorney - clearly mentioning the withdrawal authorisation - is required. The withdrawal request may be submitted through the online system along with an official withdrawal form.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Yes. Trademarks may also be protected under other IP rights, ensuring that the conditions foreseen in the relevant legislations are met.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
There is no specific regulation regarding online trademark protection in accordance with Intellectual Property Law No. 6769. In other words, trademarks used in online platforms are protected within the scope of the Law's general provisions.
In terms of the domain names, apart from the international dispute resolution authority the Internet Corporation for Assigned Names and Numbers, there is also Turkey's dispute resolution authority, Nic.tr, which governs Turkey's top-level domain names and is based at the Middle East Technical University in Ankara. Nic.tr has its own regulations, according to which they resolve the disputes brought before them.
Licensing and assignmentLicences
May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?
It is possible to have licences recorded before the Patent and Trademark Office. In Turkish trademark law practice, licence agreements may be drafted as exclusive or non-exclusive. The licence agreements should be in written form, which is a validity condition according to Turkish practice. Any party of the licence agreement may apply for its registration before the Patent and Trademark Office. If it is duly applied for and with the condition that the relevant costs are deposited, the licence agreement will be recorded within a couple of weeks and will also be published in the bulletin.
Registration of licence agreements is important because it enables allegations to be made against third parties; however, it is not legally mandatory but explicatory. If the licence is not registered before the trademark registry, rights relating to licences can only be secured against third parties after a notification declaring the licence right has been sent.
In general, provisions include regulations like time, territory, type of use of the trademark, jurisdictions, production sale, etc.Assignment
What can be assigned?
Trademarks may be transferred including all goods or services or only part of them. On the other hand, it has been foreseen that trademarks may be transferred with or independently from the business.Assignment documentation
What documents are required for assignment and what form must they take? What procedures apply?
The documents listed below must be submitted in order to register the partial or complete transfer of the trademark:
- the transfer agreement containing the trademark registration number and the name of the trademark, and explanations regarding the transferred goods and services in the cases of partial transfer;
- a Turkish translation of transfers contracted in foreign languages by a sworn Turkish translator if the transfer agreement is signed in a foreign language; and
- a power of attorney if the transfer is filed by a trademark agent.
Also, in case the trademark is assigned in the name of a third party, in other words, if the assignment agreement will be signed by a legal representative and is the real assignor or assignee is located abroad, then a power of attorney duly notarised and bearing apostille in accordance with The Hague Convention should be issued.
Once the above listed documents are prepared, they are submitted to the Patent and Trademark Office and the assignment is recorded before the office within approximately one to two months, if all the required documents are duly provided.Validity of assignment
Must the assignment be recorded for purposes of its validity?
It is possible to register the transfer agreement in the registry of the Patent and Trademark Office. This registration is not a formal requirement, but the rights transferred cannot be secured in relation to third parties unless the transfer agreement has been registered. For this reason, it is highly recommended that the transfer agreements be registered.Security interests
Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
Trademarks can be pledged independently from the business and can be given as security. Both pledge and security procedures shall be registered in the registry and published following the request of one of the parties.
The following documents need to be submitted for registration and publishing of the pledge:
- a pledge agreement containing the registration number and name of the trademark; and
- if the agreement is executed in a foreign language, a Turkish translation signed by a sworn Turkish translator.
EnforcementTrademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
Industrial Property Law No. 6769 gives the trademark holder the right to file a civil lawsuit and, if necessary, the right to carry out criminal proceedings in the event its trademark is infringed.
Determination, prevention and ending of infringement, preventing the sale of products that are the source of infringement and requesting compensation of both material and immaterial compensation are all within the scope of civil lawsuits. In addition, a preliminary injunction may be requested from the court before or during the lawsuit. This request may include stopping actions constituting infringement by confiscation of goods, collection of all types of advertising material (catalogues, signboards and business cards, etc) and prevention of access to related websites. There are specialised civil IP courts in the cities of Istanbul, Ankara and Izmir. In other cities, civil courts of first instance are the courts on duty for IP-related lawsuits.
With regard to criminal lawsuits, the trademark rights holder has the right to file a criminal complaint with the public prosecutor and to demand the filing of a criminal lawsuit against infringing parties. There are specialised criminal IP courts in the cities of Istanbul, Ankara and Izmir. In other cities, the criminal courts of first instance are on duty.
In addition, according to the Customs Law and Customs Regulations, a trademark rights holder has the right to apply to the customs in order to stop and prevent further imports and exports related to the products causing infringement and, if necessary, can request confiscation of such products.Procedural format and timing
What is the format of the infringement proceeding?Civil lawsuits
The claimant may request determination of evidence from the court before filing the actual civil lawsuit. This determination of evidence may be carried out in the workplace or warehouse of the defendant or the website or social media accounts belonging to the defendant, depending on the case. In practice, the court instructs an expert in the related field to carry out the examination, following which the expert submits a report to the court. Since this determination process is carried out without making a prior notification to the defendant, it brings about successful results for determination of the infringement action.
In relation to infringement lawsuits IP courts are authorised; in places without IP courts, civil courts of first instance are on duty. The geographically authorised courts are determined by:
- the defendant’s domicile;
- the place in which the infringement occurred or its results were seen; and
- if the claimant’s domicile is abroad, the workplace of the trademark attorney (who must be registered with the Patent and Trademark Office) at the time of filing the case.
Preliminary injunction decisions are given before or during the lawsuit against infringement actions and include the prevention, stopping of infringement, the collection of products that are the source of infringement, collection of all types of advertising material (signboards, business cards and catalogues, etc), and prevention of access to certain websites and social media accounts in relation to the infringement. The IP courts tend to be in favour of giving preliminary injunction decisions and usually a security deposit is requested from the claimant.
The lawsuit petition given by the claimant is notified to the defendant and the defendant is given two weeks’ notice to respond by a written petition and to submit its responses and relevant evidence to the court. Following the petitions submitted by both parties, the parties are given the opportunity to submit one more petition each. After the procedure of exchanging petitions, the court assigns a date for a preliminary hearing. During the preliminary hearing, the claims and defences of both parties are heard and it is decided whether the parties can come to an agreement before continuing with the trial. If the parties are unable to come to an agreement, the court moves on to the inquiry stage. At this stage, the court will request an examination report from an independent group of experts. This is the most important point of the lawsuit. The group of experts shall base its report on the evidence and the claims of both parties that have all been added to the lawsuit file. Both parties are entitled to object to the experts’ report within two weeks. The court shall evaluate the objections and if the court does not find any deficiencies, the objections will be disregarded. If the court does find deficiencies in the experts’ report, the experts may be asked to re-evaluate their findings or the court might assign a different group of experts to perform the task. Both parties are entitled to appeal the court’s decision within two weeks starting from the day of notification.
Civil lawsuits heard in courts of first instance are usually finalised between 16 and 20 weeks. The appeal procedure may take up to 12 months to be finalised.Criminal lawsuits
The criminal procedure begins with the rights holder filing a criminal complaint to the prosecutor. The rights holder usually requests a search and confiscation decision when filing the criminal complaint. At the request of the prosecutor, the search and confiscation decision is given by the judge of the criminal court and is executed by the police department. The goods are seized and later destroyed at the end of the trial.
The prosecutor usually requests an expert report in relation to the confiscated goods. With the detection of infringement by the expert, lawsuits are filed in the criminal courts against the suspects. After the suspects are heard at the criminal trial, the lawsuit file is sent again to the expert. The expert analyses the file and, with the expert’s final report, the court decides either to punish the suspects or to acquit them.
In Turkey, criminal cases are usually the most effective way to prevent the production, distribution and sale of infringing products and are also a lot less costly when compared with civil lawsuits.Burden of proof
What is the burden of proof to establish infringement or dilution?
According to Turkish procedural law, the court is obliged to examine and evaluate the evidence submitted by both parties. If all the facts have been established by the evidence submitted, there is no point in defining who bears the burden of proof. However, if the evidence submitted was not sufficient for the court to come to an opinion on the case, then determination of which party has the burden of proof needs to be made. In this case, in principle, the claimant has the burden of proof.Standing
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
Following publication of the trademark in the Official Trademark Bulletin, the applicant acquires the right:
- to file all types of civil and criminal lawsuits;
- to demand determination and preliminary injunctions;
- to address complaints to the prosecutor; and
- to demand search, confiscation and collection decisions.
However, if the legal action has been made in relation to a trademark application rather than registration, then the court must wait until the decision in relation to the trademark application has been made. The rights holder of an exclusive licence may also take precautionary legal measures against infringement.Border enforcement and foreign activities
What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?
According to the article 57 of the Customs Code, infringing goods may be detained by the customs authority on condition that the real rights owner of the trademark has a valid customs application. In the case of the real rights owner having no valid customs application at the date on which the products are detained, the customs authority grants three working days to file a valid customs application.
Once having a valid customs application, the customs authority grants three working days for perishable goods and 10 business days for non-perishable goods to the rights owner, to examine the detained products and provide a confiscation decision obtained from the relevant courts. And, if necessary, and if found reasonable by the customs directorate, upon the rights owner’s request, the customs authority may grant a time extension of 10 further business days. However, it is always in the customs’ discretion whether to accept such a request.
Turkish courts are only competent to hear cases regarding infringements that have taken place within Turkish borders.Discovery
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
The trademark rights holder may demand determination of evidence from the court before filing the actual lawsuit. This determination of evidence may be carried out in the workplace or warehouse of the defendant, or may be carried out on the websites or social media accounts belonging to the defendant, depending on the case. Courts authorise experts to carry out the determination of evidence, and after their final observations the experts submit a report to the court. As the determination of evidence is carried out without making a prior notification to the defendant, it results in successful determination of the infringement.Timing
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
Civil lawsuits filed at courts of first instance are usually finalised within 16 to 20 weeks. The appeal stage may be finalised in 12 to 18 months. In this context, the average civil lawsuit takes two-and-a half to three years to be finalised.
Criminal lawsuits filed in courts of first instance are usually finalised within six to 12 months. The appeal stage may be finalised in 18 to 24 months. In this context, it takes approximately two to three years to finalise a criminal lawsuit.Limitation period
What is the limitation period for filing an infringement action?
According to Turkish trademark law practice, as soon as the infringing activities continue to take place, the statute of limitation will not be applied.Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
Expenses from beginning to end of a lawsuit should be examined in two separate categories:
- expenses in relation to the lawsuit (case fee and expert fee, etc), for which the court decides that the defendant be held responsible; and
- expenses in addition to court expenses (transport and accommodation, etc), which cannot be compensated, and therefore each party pays its own expenses in this category.
Expenses in a lawsuit amount to an average of €1,500.
The court also decides on a fee that needs to be paid to the defendant in order to cover attorneys’ fees. This fee cannot be above the yearly maximum limit that is announced each year by the Turkish Bar Association. For IP courts, the fee set for 2019 is approximately €700.
The claimant may demand the costs made and the fee given to the attorney to be paid by the defendant by filing a separate lawsuit.Appeals
What avenues of appeal are available?
With the Law of Civil Procedure that came into force in 2016, the appeal system has been transformed into a two-stage system. Regional courts of justice were established and these courts began operating as regional courts of appeal. The decisions given by these courts are under the supervision of the Court of Appeals. With these innovations, reduction of the workload of the Court of Appeals and faster and more precise court decisions have been achieved.Defences
What defences are available to a charge of infringement or dilution, or any related action?
Possible defence arguments to be raised in an infringement lawsuit are listed below:
- parallel import;
- fair use in trade;
- no likelihood of confusion or similarity;
- use is not trademark-related;
- trademark has become generic and is used to define a type of product;
- true ownership of rights; and
- loss of rights owing to silence.
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?Civil lawsuits
In civil lawsuits, the following may be resolved by the court:
- confiscation of goods constituting infringement, wherever they are located, including at customs;
- confiscation of all marketing material (signboards, business cards and catalogues, etc) constituting infringement;
- prevention of access to websites constituting infringement;
- confiscation of any devices and machinery that are used for the production of infringing products;
- to grant property rights for products, devices and machinery that has been confiscated;
- at the infringer’s expense, to change the shape of confiscated goods and of devices and machinery;
- to remove the trademarks on such goods, or to spoil such goods if eliminating the infringement is inevitable;
- to pay non-pecuniary and material damages; and
- to announce the decision in a newspaper having the highest daily circulation.
In criminal lawsuits, the following may be resolved by the court against infringers:
- a person who produces goods, offer services, exposes for sale or sells, imports or exports, buys, keeps, transports or stores goods for commercial purposes by infringing on trademarks of third parties by means of adaptation and confusion shall be sentenced to up to three years’ imprisonment and fined up to 20,000 days’ wages;
- a person who removes the mark indicating that the trademark is under protection without authorisation from the goods or packaging shall be sentenced to imprisonment for one to three years and fined up to 5,000 days’ wages;
- a person who disposes of a third-party trademark by means of transferring trademark rights, issuing a licence or pledging without authorisation shall be sentenced to imprisonment for two to four years and shall be fined up to 5,000 days’ wages; and
- all confiscated goods shall be destroyed.
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
ADR techniques are not applicable in Turkish practice.
Update and trendsKey developments of the past year
Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?