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.