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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

The Civil and Criminal Courts of Intellectual and Industrial Property Rights are empowered to hear trademark disputes. If a Civil and Criminal Court of Intellectual and Industrial Property Rights has not been established in a specific locality, the Civil and Criminal Courts of First Instance are empowered to hear trademark disputes.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Civil and criminal actions can be taken against trademark infringement. In order to take such an action, the complainant should have a trademark registration or at least a trademark application. If the action is based on a trademark application, publication of the registration will be awaited before rendering a decision. If the criminal action is taken, the complaint must be filed before the public prosecutor within six months starting from the date when the trademark holder became aware of the act. The civil action must be filed within five years, starting from the date on which the trademark holder became aware of the infringing use. If these deadlines are not met, both the IP Courts and the Court of Appeals will decide that the holder has lost its rights by remaining silent, unless the counterparty acted in bad faith.

Who can file a trademark infringement action?

The following parties can file a trademark infringement action:

  • a trademark registration holder;
  • a trademark application holder, but the courts await publication of the registration for granting a decision on the merits; and
  • an exclusive licensee, unless otherwise agreed in the licence agreement. 

What is the statute of limitations for filing infringement actions?

The statute of limitations for filing infringement actions is:

  • two years from the date on which the trademark owner became aware of the damage and the party that caused the damage; and
  • 10 years from the date on which the act was committed.

If the infringing action continues, the statute of limitations does not commence. If the infringing action constitutes a crime, the longer criminal statute of limitations applies.

What is the usual timeframe for infringement actions?

The usual timeframe for infringement actions is one-and-a-half to two years before the first-instance court and a further one-and-a-half to two years before the regional courts of justice and the Court of Appeal.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

A trademark owner can request the prevention of imminent or further infringement. To prevent further infringement, it can be decided to change the shape of the devices and machines being used for the production of the infringing goods, to remove the brand and destroy the infringing goods.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The owner of a registered trademark can take legal and criminal action against infringing actions and demand:

  • a determination of infringement;
  • the prevention of the imminent infringing use;
  • the termination of the infringing use;
  • the abolishment of the infringing use;
  • the seizure of the infringing goods and the devices and machines being used for production of the infringing goods to prevent the production of other goods;
  • ownership rights to the seized devices and machines;
  • precautions to prevent further use and, in particular, appropriate changes to the seized devices and machines;
  • the removal of the mark from the infringing goods; and 
  • the publication of the final decision in the Trademark Gazette.

The trademark owner can demand pecuniary and non-pecuniary damages arising from the infringing use. If ownership rights of the seized devices and machines are granted to the trademark owner, their value may be deducted from the compensation amount. If this value is higher than the compensation amount, the excess may be paid to the infringer. The owner may also demand reputational damage if the infringer uses or produces the infringing goods in a way that damages the infringed trademark’s reputation. 

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

A customs application can be filed with the Customs Directorate on the basis of a trademark registration. Once the trademark has been registered, violable infringing goods are kept in Customs for three working days and other infringing goods are kept for 10 working days. Within these periods, the trademark owner must submit a precautionary injunction decision granted by a court to the Customs Directorate. The injunction may be demanded ex parte or with the main action. If the injunction is demanded ex parte, the main action must be filed within 10 days from the decision. In the precautionary injunction, the court will order the Customs Directorate to keep the goods in Customs until completion of the trial process. In order to obtain a precautionary injunction, a security must be deposited, which will be returned to the plaintiff at the end of the action. The amount of such security is determined at the courts’ discretion. 

Defence

What defences are available to infringers?

Infringers may claim the following defences:

  • exhaustion of a trademark right;
  • fair use of a trademark;
  • genuine right ownership arising from prior use;
  • joint ownership of a trademark arising from a commercial partnership or legacy;
  • use of a secondary or generic element within a trademark;
  • decorative use;
  • use of a registered trade name;
  • non-trademark use;
  • bad faith of the owner when registering a trademark with the intention of importing original products into Turkey;
  • becoming a generic mark of an earlier trademark; and
  • parallel import.

The non-use defence was introduced by IP Law 6769. If an earlier trademark has been registered for five years at the date of the action, the non-use of the earlier trademark can be used as a defence.

Before the new law came into effect, a trademark registration could be used as a defence against infringing claims. However, according to Article 155 of the new law, a trademark owner cannot present the trademark registration as a ground of defence in a lawsuit filed by a rights holder holding an earlier date of application or priority.

Appeal

What is the appeal procedure for infringement decisions?

On July 20 2016 a new phase commenced in the Turkish legal system, as the regional courts of justice started to function. Unlike the previous system, the regional courts of justice not only issue first-instance decisions, they also conduct new trials on the merits of a case if it is deemed necessary. Accordingly, parties of an action have a right to file an appeal before a regional court of justice within two weeks from the notification date of the decision. Decisions can also be appealed before the Court of Appeals within one month from the notification date.

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