Civil litigationi Forums
Under Turkish law, it is possible to enforce trademark rights before the criminal law courts and civil law courts.
In terms of civil law protection, trademark infringement actions are filed before the specialised Civil Courts of Industrial and Intellectual Property Rights in Istanbul, Ankara and Izmir. In other cities, one of the regular civil courts (if there are more than two courts, the third civil court, otherwise the first civil court) is assigned as a specialised IP court.
Turkish courts have jurisdiction in trademark infringement cases if the trademark right is registered in Turkey, if the defendant resides in Turkey or if the tortious act is committed in Turkey. According to Turkish law, if the place in which the tortious act is committed is not the place where the damage has occurred, the law of the state where the damage has occurred shall govern.
Turkey is the applicable jurisdiction if the country is:
- the regular domicile of the trademark right holder;
- the place where the infringement was committed; or
- the place where the act of infringement produced consequences.
As of 1 January 2019, mediation is mandatory for trademark disputes brought by legal entities or natural persons regarding receivables and compensation claims. However, there is no restriction on applying mediation for other disputes as well.
Trademark-related disputes can also be resolved by arbitration. Under the Turkish Civil Procedure Law, arbitral decisions are executable without the need for any judicial approval or decision.
Alternative dispute resolution methods have significant advantages, such as the arbitrator’s expertise, confidentiality of proceedings and the flexibility to adapt the proceedings to different situations.
In Turkey, although not required by law, a cease-and-desist letter is usually sent to the counterparty prior to the filing of a lawsuit, with the exception of lawsuits requesting injunction or seizure. The aim of sending a letter is to find an immediate solution without the need for a court process, which would take a significant amount of time.iii Causes of action
Trademark infringement is the most common cause of action, and the following situations are considered as infringement:
- use of the trademark without the permission of the owner;
- use of an identical or confusingly similar trademark without the consent of the trademark owner;
- intention to form a contract for, or sale, distribution, commercial use, import, export or possession for commercial purposes of, goods bearing an identical or confusingly similar trademark that is known or should be known to be an unlawful imitation; and
- transfer to third parties or extension of rights acquired under a licensing contract.
In these cases, the similarities must be sufficient to create confusion or at least the likelihood of confusion to the average consumer.
Further, the invalidation and revocation of a registered trademark may only result from a judicial decision. Therefore, invalidation and revocation lawsuits are also commonly filed in Turkey. These actions are mainly based on relative or absolute grounds for invalidation of a registered trademark, and based on non-use of a registered trademark for revocation of a registered trademark.
Additionally, unfair competition, which is regulated by civil liability provisions, is often used as an additional claim in action related to trademarks. Unfair competition provisions prohibit generating confusion between companies or their products. The actions related to domain names or company names are mostly based on unfair competition provisions.iv Conduct of proceedings
The procedure of civil cases in Turkey is mainly based on writing. Therefore, the briefs of the parties and the written expert report are the most significant documents. The language of proceedings is Turkish. Documents in another language must be translated by the parties, and it is open to the judge to order a retranslation.
Before the trial, the claimant provides his or her claim petition to the court and the defendant responds to such with a response petition. Afterwards, secondary petitions are provided to the court by the claimant and defendant in that order. All evidence, claims and defences of parties must be submitted to the court at this stage with their respective petitions. In principle, admission of additional evidence or bringing new claims or defences is not allowed in line with the procedural law after the completion of this stage.
During the hearings, the judge will listen to the parties; however, the trial is based on the written documents submitted to the court. Therefore, the hearing may be used as a tool to point out some of the critical issues for the judge to concentrate on.
Trademark litigation relies on documentary evidence, which is evidence provided by the parties or the expert report obtained by the court. While it is possible to take witness statements, it is not the usual practice in trademark litigation, and the witness statements rarely preclude documentary evidence.
There are certain minimum requirements for a document to be accepted as proof before the court (e.g., all agreements related to transfer of copyright must be made in writing).
In most cases, it is possible to obtain a first-level decision in a trademark infringement case or other trademark dispute within 12 to 18 months. This term also includes expert examination.v Remedies
In civil proceedings, the remedies available in Turkey include:
- cessation of the infringing acts;
- confiscation or destruction, or both, of the infringing products or the equipment and machinery used to produce the products;
- compensation for material and moral damages; and
- publication of the court’s decision.
Preliminary injunction is also possible in Turkey before or during the substantive proceedings. The claimant must prove that:
- it is the rights holder;
- its rights are being infringed or there is a high likelihood of infringement; and
- it may suffer irreparable harm or damages.
Rights owners may apply for a preliminary injunction for cessation or prevention of the infringing activities, as well as for seizure of the infringing goods.
Other enforcement proceedings
In Turkey, it is also possible to enforce trademark rights before specific criminal courts. Before initiating a criminal action, the plaintiff first files a criminal complaint before the Prosecution Office. The criminal action then starts before the Criminal Courts of Industrial and Intellectual Property Rights in Istanbul, Ankara and Izmir for cases where the legislation stipulates imprisonment or judicial monetary penalty for infringement of a trademark right. In other cities, one of the regular criminal courts (if there are more than two courts, the third criminal court, otherwise the first criminal court) is assigned as a specialised IP court. In criminal proceedings, penalties including imprisonment and fines are available for trademark infringement cases.
Additionally, it is possible that any goods or products infringing trademark rights may be confiscated by the Customs Authority during import, export or transit. The Customs Authority, without the need for a court or public prosecutor order, may confiscate any goods that breach trademark rights. They must then notify the trademark right owner, who will follow the subsequent standard procedure, such as initiation of a civil case or obtaining an injunction.