23 Apr
2020

Procedures and strategies for anti-counterfeiting: Turkey

Deris Attorney-at-Law Partnership

Turkey is a party to a number of international conventions, including the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Berne Convention.

Legal framework

Turkey is a party to a number of international conventions, including the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Berne Convention. Turkey also has specific national legislation, including:

  • the Industrial Property Code 6769;
  • the Law on Turkish Intellectual and Artistic Works (5846) (known as the Copyright Act);
  • the Code of Commerce;
  • the Customs Law;
  • the Anti-smuggling Law; and
  • Law 5651 on Regulating Broadcasting in the Internet and Fighting Against Crimes Committed through Internet Broadcasting (known as the Internet Law).

Border measures

According to Turkish legislation, it is possible to register IP rights (ie, trademarks, industrial designs, patents, utility models, copyrights, geographical indications, integrated circuit topographies and plant breeders’ rights) before Customs, as the crucial first step in the fight against counterfeiting.

The IP rights registration procedure before Customs is as follows:

  • Rights holders may register their IP rights via an online central application filed before the Turkish Customs Ministry, which has effect over all Turkish borders and customs authorities.
  • Customs monitors import and export transactions and free trade zones.
  • Applications are issued and registered within a one to two-month period.
  • No official fees are required for filing such applications.
  • If Customs determines any lack of documentation in the application, the rights holders or representatives will be told to complete the missing documents within a reasonable time. Accordingly, if the documents are corrected within the time provided, an official notification regarding the acceptance of the recordal will be served by Customs in approximately 20 to 30 days.
  • Customs provides up to one year of protection from the application date for the recorded rights. The registration can be renewed periodically and will always provide a one-year period of protection.
  • The following items are required for the records:
    • documents evidencing that the applicant is the real rights holder (eg, the IP rights registration certificate);
    • a power of attorney notarised and legalised (by apostille) if the application is filed via a legal representative; and
    • a signatory circular evidencing the authorisation of the applicant if the application is filed in the name of a legal entity.
  • Although the following information is not mandatory to complete an application, it is crucial for the protection process:
    • information regarding the genuine products and their distinguishing features;
    • the country or countries where the genuine products are manufactured;
    • the suspected differences between the genuine and infringing products and any other information on the infringing product;
    • the itinerary of the genuine products;
    • the Harmonised System Codes of the genuine products (these codes consist of international codes defining the products for international trade); and
    • the details of the local legitimate dealer, importer or licensees.
  • If the suspicious goods carry a mark indicating registration by Turkish Customs, rights holders will have 10 working days to examine the goods and commence legal procedures. It is possible to request from Customs a time extension for an additional 10 working days if a solid reason for doing so is provided; however; the decision is ultimately at Customs’ discretion.
  • Customs frequently acts ex officio and notifies the trademark attorneys and trademark owners of suspicious third-party activity, even if the trademark is not registered with Customs. In such cases, Customs provides rights holders with three working days within which to complete all procedures (ie, examine the products and take action or register their trademark rights before Customs to receive an additional 10 days of seizure).
  • In case of trademark counterfeiting, a complaint can be filed before the public prosecutor to commence criminal proceedings or a preliminary injunction can be requested from the civil IP courts for civil proceedings, otherwise Customs will release the suspected goods. In case of patent or design infringement, only the civil routes can be pursued.
  • In the event that both parties agree to the destruction of the seized goods by customs officers by filing a petition within three or 10 days of the seizure of the goods, a simple destruction procedure can be applied without a court order.

Criminal prosecution

Criminal provisions are regulated for registered trademark rights and copyright protection, whereas design and patent infringement is not regulated as a criminal offence.

The procedure for filing a criminal complaint is as follows:

  • The criminal route is generally used for counterfeit products where the trademarks are identical and there is no room to evaluate similarity and confusion.
  • Trademark infringement is an offence prosecuted based on a complaint. Rights holders must file a criminal complaint before the relevant public prosecutor.
  • Search and seizure warrants are issued only by a criminal judge. According to the search and seizure warrants, seizure operations are conducted by the provincial security or the police directorate IP department.
  • To prevent loss of evidence or if the counterfeiting products are harmful to human health, seizure operations can be conducted ex officio by police officers upon order of the public prosecutor. In such cases, rights holders must file a complaint before the relevant public prosecutor for the continuation of the seizure and to commence the criminal proceedings.
  • Criminal provisions are regulated by the Industrial Property Code. According to Article 30 of the code:
    • a person who produces or provides services, puts on the market or sells, imports or exports, buys for commercial purposes, possesses, transports or stores goods, while infringing a trademark right through adaptation or likelihood of confusion, will be sentenced to between one and three years’ imprisonment and punished with a judicial fine calculated per day for up to 20,000 days;
    • a person who removes the sign indicating trademark protection from a product or its packaging without authorisation will be sentenced to between one and three years’ imprisonment or punished with a judicial fine calculated per day for up to 5,000 days;
    • a person who, without authorisation, disposes of a trademark right, which is owned by someone else, by transferring, licensing or pledging it, will be sentenced to between two and four years’ imprisonment and punished with a judicial fine calculated per day for up to 5,000 days; and
    • if the crimes indicated in Article 30 are committed by the acts of a legal entity, additional specific security measures will be taken.
  • If the counterfeiter admits the source of the counterfeit products, assisting in the determination of the producer and seizure of the counterfeits, they will not be sentenced. However, in practice, it is almost impossible to apply this procedure due to lack of cooperation of the infringer.
  • In accordance with the criminal provisions, if the accused has no criminal record, the court may decide to defer announcing the verdict. In such case, the accused should give their consent, otherwise the clause regarding the deferment of the announcement of the verdict will not be applied. Where the accused intentionally commits any crime within the five year from the date of the finalisation of the decision, the court will pronounce the judgment.
  • If the court is convinced of the counterfeit nature of the seized products, the products will be destroyed at the end of the criminal procedures. However, the IP Code now regulates a fast-destruction procedure. Pursuant to Article 163, if the seized goods cannot be preserved at the custodial office due to quantity, size or character, after taking sufficient samples from the goods, which are suitable for the collection of samples and in line with the public prosecutor’s instructions, the remaining goods will be sent to a financial organisation of the locality. In case there is a risk that the infringing goods will be damaged or fundamentally lose value, or their preservation is a significant burden, following examination, based on the public prosecutor’s request at the investigation phase, the court will decide on the destruction of the goods before the final decision.

Civil enforcement

Rights holders may follow a civil route to cease and prevent infringing acts, and to seek compensation for damages.

Key points of civil enforcement include the following:

  • Rights holders may apply to specialised IP courts, which are available only in Istanbul, Izmir and Ankara. In places where there is no specialised IP court, the first-instance civil court will undertake the legal proceedings and procedures that are within its scope. If there are more than two first-instance civil courts, the third first-instance civil court will be the competent court.
  • Turkey has a three-degree system (ie, the first-instance court, appellate court and Supreme Court), which is accepted until a case is finalised.
  • The first-instance court’s initial decision in a straightforward dispute is received within approximately 15 months, and the processes before the appellate court and Supreme Court takes approximately 18 months per appeal.
    • Rights holders may take the following route in a civil enforcement:
    • preliminary injunction action;
    • evidential action; and
    • main civil action.
  • In the absence of any registered rights, it is possible to put forward claims of unfair competition.

Preliminary measures

Persons who have the right to institute a legal proceeding under the IP Code – on condition that they prove that the action forming the subject of the legal proceeding violates their IP rights in Turkey, or serious and effective preparations are performed to that end – may ask the court to order a preliminary injunction to ensure the effectiveness of the judgment to be delivered. The court usually requires a guarantee deposit in order to prevent possible losses of the adverse parties.

Preliminary injunctions can:

  • prevent and stop actions (eg, purchasing, selling, displaying at fairs, importing and exporting) which constitute infringement of the plaintiff’s IP rights;
  • seize and store anywhere in Turkey (including Customs and free ports or zones) products infringing IP rights, imported products and instruments used exclusively in the production of infringing goods;
  • block access to the infringing content; and
  • submit a security in terms of compensation for any damage.

A rights holder may apply for a preliminary injunction by requesting without notification to the adverse party and it can be granted on an ex parte basis generally by ordering prior expert examination. Pursuant to the Civil Procedure Law, if the applicant’s right requires immediate protection or notifying the adverse party would cause serious and irrecoverable damage, the judge may grant the preliminary injunction without hearing the adverse party’s arguments.

In such cases, the adverse party is entitled to file an objection within one week of being notified of the preliminary injunction. If the court rejects the removal of the preliminary injunction, the adverse party may appeal the interim decision. The preliminary injunction will be valid until the case has been finalised, unless the court renders an interim decision to the contrary or the appellate court decides to remove the preliminary injunction.

To implement a preliminary injunction, a rights holder should apply to the relevant execution office within one week of the date of the preliminary injunction, otherwise it will ex officio be deemed invalid.

Preliminary injunctions can be requested within a civil action or solely as an immediate precaution. In case a preliminary injunction is obtained without filing a main civil action, the rights holder must file a civil action within two weeks of the date of the execution request and notify the relevant execution office.

Remedies include:

  • preliminary injunction;
  • compensation;
  • permanent injunction;
  • seizure and destruction of the infringing products and tools (eg, devices and machines) used exclusively for the production of such products; and
  • publishing the summary verdict of the court decision.

In case the rights holder files an evidential action, the court may decide to order a determination of evidence without notifying the adverse party to avoid destroying evidence. In such case, the infringing goods will be determined with the official expert present and the evidence will be properly stored and secured.

According to the IP Code, civil action for the compensation for damages can be based on an existing IP rights application after its publication in the bulletin for opposition purposes.

Material damages include actual loss and loss of revenue. According to the IP Code, loss of revenue should be calculated with three evaluation methods, depending on the choice of the rights holder:

  • the potential revenue to be gained by the rights holder if the competition brought about by the infringer had not existed;
  • the net revenue obtained by the infringer (in case the rights holder chooses either of these methods, the court may decide to add an equitable share to the calculation of revenue); and
  • the payment of the licence fee by the person who infringed the IP rights, if this person used the rights through a licence agreement in accordance with the law.

In the calculation of non-realised income, factors such as the economic value of the IP right or the number, term and type of licence related to the IP right at the time of infringement, as well as the nature and extent of infringement, should be considered. The court can decide on a fair share to be added in the calculation of the income if it concludes that the IP right is the determining factor in the generation of demand for the product.

Compensation of reputational damages can be requested within the scope of a civil action.

Mandatory mediation for compensation claims

The mediation process is a mandatory course of action for civil proceedings where compensation is claimed. Three options are available:

  • parties may mutually agree on a mediator from the official list;
  • if one party applies to a mediator, the adverse party may approve it; and
  • parties may apply to the mediation office located at the address of the competent court and the mediation centre will appoint the mediator.

The mediator is obliged the resolve the dispute within a six-week period, which can be extended for a maximum of a further two weeks. At the end of this process, if parties cannot reach an agreement, the mediator will submit their final report and the court will hold the dispute.

Anti-counterfeiting online

Unauthorised internet commerce

According to E-Commerce Law and Electronic Commerce Regulation, the intermediary service providers is not liable for monitoring the lawfulness of the content provided by third parties in line with their services. However, the intermediary service provider must remove the unlawful content after being notified of the infringement, otherwise they will be jointly liable.

Internet security

Online complaints before social media: In determining the existence of counterfeit products sold via social media accounts, or where the adverse party is using trademarks or designs in account or domain names without authorisation, an online complaint can be filed with the social media accounts on the basis of IP rights infringement and a request made to remove the infringing content or close the account.

Online notary determination: This procedure can be applied as an initial step to secure evidence and is considered as official evidence before the courts. According to the Notary Public Law, it is possible to determine infringing content through the Notaries Union of Turkey’s official website.

Cease and desist letters: Cease and desist letters can be served via a public notary to online infringers, requesting that the infringing acts, including infringing use of logos, be stopped, as well as the removal of the relevant content from their websites and marketplaces and the destruction or removal of the conflicting IP rights from their web pages and undertaking in writing never to use or register the right.

Online investigation strategies

Some private investigation companies provide services on internet monitoring. They provide detailed investigation reports and on request purchase sample products as evidence for further legal proceedings.

ISP liability

Pursuant to the Internet Law, there is no clear regulation regarding the liability of ISPs with respect to trademark infringement takedowns. In practice, ISPs are not responsible for controlling the content or searching for the presence of unlawful practice. However, under Turkish law, the ‘notify and remove’ principle is accepted. ISPs are obliged to remove the unlawful content from publication after being notified or informed of the infringement, otherwise they will be jointly liable.

Article 4 of the Copyright Act regulates the takedown process of online copyright infringement, such as reproduction, making the work available to the public, alteration, distribution and communication to the public by devices enabling the transmission of signs, sound and/or images without the authorisation or consent of the copyright owner. Copyright owners may contact the content provider for the removal of the infringing content within three days. If the content provider does not respond to the request within three days, the copyright owner may submit a request to the competent public prosecutor for granting an order against the ISP in order to block the content provider’s internet access.

Preventive measures and strategies

Use of local counsel and investigators

Although there is no regulation regarding private investigation under Turkish legislation, rights holders may collaborate with independent consulting and investigation companies. These companies provide services on internet monitoring, in-depth investigations, market checks determining the list of targeted stores selling counterfeit products and purchasing of sample products as evidence.

Licensing to third parties

The rights holders must have effective and timely control over contractual parties and cooperate with parties to keep a close eye on the market to fight existing and possible counterfeits. According to Article 29 of the IP Code, the unauthorised extension of the licence right is deemed to be trademark infringement. The licensee can access a special authentication method for auditing the products.

Effective use of technology, authentication and monitoring includes:

  • filing direct complaints before social media accounts;
  • online notary determinations;
  • sending warning letters to infringers via their websites; and
  • using new generation technologies for monitoring online counterfeiting.

Cooperation with national anti-counterfeiting agencies

The Security Directorate, IP Police Department conducts raid operations periodically. Where counterfeit products are harmful to human health, it works in cooperation with the Ministry of Health, IP Police Department to conduct ex officio operations upon the order of the public prosecutor.

The Ministry of Trade, Directorate General of Customs offers training in order to build awareness between customs officers.

Products seized as a result of the Anti-smuggling Act will be confiscated before the Customs Liquidation Directorate. The liquidation of the products is done via sale or auction. These smuggled products are mostly counterfeit. In the event of the rights holder or its representative recording its rights before the Customs General Directorate of Liquidation, before the liquidation process begins the directorate will inform ex officio the rights holder of the smuggled products which have been seized with respect to the crime of smuggling, in order to allow the rights holders to submit a complaint or obtain a preliminary injunction decision within 10 working days to prevent the sale of such goods.

During trade fairs, infringing activities can be determined through the notary public or an expert appointed by the court. For an official expert examination, an evidential action should be filed before the specialised IP courts.

Deris Attorney-at-Law Partnership

Inebolu Sokak, 5 Deris Patent Building

Kabatas/Setustu

Istanbul 34427

Turkey

Tel +90 212 252 61 22 23

Fax +90 212 293 76 76

Web http://www.deris-legal.com/

N Serra Coral

Managing partner

[email protected]

N Serra Coral is a founding and managing partner of Deriş. She leads an international patent, trademark and design filing team, focusing on foreign litigation and enforcement matters. After qualifying, Ms Coral was involved with the introduction of new decreelaws, filing trademark oppositions and the establishment and representation of Patent Cooperation Treaty applications.

Ms Coral is an international and local expert in the establishment of industrial and IP rights for companies. She has significant experience in the granting and tracking of licences. Ms Coral advises renowned brands in the food and beverage and consumer and luxury goods sectors. In addition to providing counsel on protection, enforcement and anticounterfeiting strategies, Ms Coral has been recognised as a leading IP expert by WTR 1000 and IAM 1000.

Feride Utku

Senior associate

[email protected]

Feride Utku is an experienced IP lawyer who counsels and represents international clients in all kinds of dispute before the courts and administrative authorities, including the Turkish Patent and Trademark Office and Customs. She has been part of Deris since 2008. She specialises in strategic and complex litigation matters involving trademarks, designs and copyright issues. Ms Utku works with clients active in the media, consumercare products, fashion and luxury goods, accommodation, automotive and cosmetic sectors. She has been recognised for her experience and expertise in filing strategies, litigation and anti-counterfeiting programmes and she is the head of the internal anticounterfeiting team.

F Burcum Evgin

Senior associate

[email protected]

F Burcum Evgin is a specialised IP lawyer who represents local and international clients before the Turkish courts. She has more than five years’ experience in litigation and her main focus is counterfeits and complex trademark and design infringement actions. She has been involved in numerous anticounterfeiting projects for worldwide brands, fighting counterfeits by forming strategies, organising and operating raids following private investigations and being the key contact for Customs regarding IP rights protection.