The rights arising from a registered trademark belong exclusively to the trademark owner. Therefore, the use of an identical or similar trademark without the consent of the trademark owner constitutes trademark infringement. The trademark owner whose registered trademark is infringed may file lawsuits and claim damages amongst other remedies from the court.
In this article, we will be explaining acts that are considered an infringement of trademark rights and the claims that can be filed against the infringer before the civil courts in Turkey.
Infringement of a Trademark
Acts considered trademark infringement are listed in Article 29/1 of the Industrial Property Code numbered 6769 (“Code”). Accordingly, the following acts are considered trademark infringement:
To use any sign identical to a registered trademark for goods or services that are in the scope of the registration without the consent of the trademark owner.
To use any sign identical or similar to a registered trademark and covering identical or similar goods or services with the registered trademark and is, therefore, liable to create a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trademark without consent of the trademark owner.
To use any sign identical or similar to a registered trademark, irrespective of being for identical, similar, or different goods or services, where the use of that sign takes unfair advantage of or is detrimental to the distinctive character or the repute of the trademark due to the reputation it has in Turkey.
To counterfeit a trademark by using the trademark or a confusingly similar trademark without the consent of the trademark owner.
To sell, distribute, put on the market in a different form, possess for commercial purpose, import, export products carrying an infringed trademark or to offer to make a contract related to this product while being aware or should be aware that the trademark is counterfeited by the use of the trademark or a confusingly similar trademark.
To broaden or to transfer the rights given by the trademark owner through a license to third parties without consent.
Claims That Can Be Filed Against Trademark Infringement
According to Article 149 of the Code, a trademark owner whose trademark is infringed may file a civil lawsuit at the competent court and claim one or more of the following:
Determination of infringement: A trademark owner may request the court to determine whether the acts of third parties constitute an infringement of the trademark. In practice, this lawsuit is not usually filed alone, but with other claims.
Prevention of possible infringement: A trademark owner may request the court to prevent possible acts that may constitute trademark infringement by a third party. This lawsuit may be filed to prevent the continuation of infringement that is at risk of starting or has already begun.
Prohibition of infringing acts: A trademark owner may request the court to ensure the cessation of ongoing acts of trademark infringement.
Compensation: A trademark owner may request compensation for material, moral, and reputational damages from the infringer.
Seizure, deletion, and destruction of infringing goods and relevant instruments: A trademark owner may request the seizure of the goods causing infringement, as well as instruments, such as devices and machines used exclusively in the manufacture of the infringing goods (without preventing the manufacture of goods other than the infringing goods); and the deletion of the signs on infringing goods and the destruction (when necessary for the prevention of infringement) of the respective goods and instruments at the expense of the infringer. The trademark owner may also request the title to the respective infringing goods and the instruments used in the manufacture of the infringing goods.
Announcement of the judgment: A trademark owner can request the publication of the final decision of the court through daily newspapers or other means and can request the notification of the final decision to relevant third parties at the expense of the infringer.
Please note that the infringed trademark must be registered in Turkey for the respective remedies to be applied. The infringer may also be subject to criminal sanctions of which investigation and prosecution are subject to a criminal complaint.
Competent Court for Trademark Infringement Lawsuits
Trademark infringement lawsuits are handled by specialized IP Courts, namely the Civil Court of Intellectual and Industrial Property Rights where the plaintiff is domiciled or where the infringement has taken place or the effects of the acts are observed.
Statute of Limitation for Trademark Infringement Lawsuits
With reference to the general provisions of Article 157 of the Code (i.e., the Turkish Code of Obligations), the statute of limitation for claims for trademark infringement expires after two years from the date of learning the act of infringement and infringer, and in any case, ten years from the date on which the infringement act is committed. As long as the infringement continues, the statute of limitation does not expire. Further, if the infringement act also constitutes a crime, the extended penalty statute of limitations stipulated in the Turkish Criminal Code is applied.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
Elif Koturoglu
Attorney at Law | Trademark Attorney
Evren Firat Goklu
Attorney at Law | Trademark Attorney