16 Jan
2020

Turkey tackles online sales of counterfeit goods

OFO Ventura

Online brand enforcement can be divided into two main categories:

  • use of identical or similar trademarks through online media as domain names, router codes and keywords, or use in a similar manner with a commercial impression without the brand owner’s permission; and
  • online sale and/or promotion of counterfeits through websites, online sale platforms and social media accounts.

In the past, customers visited shopping centres to purchase goods. Today, customers prefer to buy goods through online marketplaces which offer more promotions, various search options, convenient home deliveries and accessibility from across the globe. The rise of online platforms for buying and selling goods has fuelled a rapid increase in fake merchandise, forcing brand owners to re-shape their anti-counterfeiting strategies.

According to the Customs Union Report (September 2019), fake and potentially dangerous goods worth nearly €740 million were stopped by various EU customs authorities in 2018. The number of interceptions of fake goods imported into the European Union increased as a result of the large volume of small parcels sent in the post.

The boom in counterfeit goods being posted in small parcels is due to online platforms making it easier to buy and sell counterfeits globally, which in turn makes it more difficult for customs officers to search, track and seize counterfeit goods. The online sale of counterfeits is a promising option for infringers, since they can easily reach numerous potential customers through online channels with no expense for advertising, storage or rental.

Customs officials have noted that the most frequently seized imported fake goods are footwear, clothing, leather goods and IT equipment, with postal parcels the most popular shipping route. Other items seized included counterfeit jewellery, pharmaceuticals, chemicals, spare parts, luxury watches, food and drink, and medical equipment. Turkey is highlighted in the report as the top source for clothing, leather goods, beverages, perfumes and cosmetics conveyed by road to the European Union.

Identical or similar trademarks

Using an identical or similar sign on online media as a domain name, router code or keyword, or using it in similar manner with a commercial impression, is prohibited in Turkey according to Article 7/3-d of the IP Code 6769 if the user has no right or legal affiliation to that sign. Such use may also constitute unfair competition.

Domain names and websites

For domains that are subject to UDRP proceedings, the Turkish authorities cannot grant any decisions regarding ownership. However, it is possible to block access to the domain based on court decisions.

Turkey’s ccTLD is ‘.tr’ and extension domains can be registered before the Nic.tr Administration. These ccTLDs are not subject to UDRP proceedings.

While applying to Nic.tr for the registration of a ‘.tr’ domain, applicants must prove their rights in the sign used as the second-level domain (SLD) (ie, the distinctive part of a domain). Such a right may arise from a personal name, trade name or trademark and must be documented. There are some ‘.tr’ domains which can be registered according to the ‘first come, first served’ principle (eg, ‘.gen.tr’, ‘.web.tr’, ‘.tv.tr’ and ‘info.tr’) without proof of ownership.

The DNS Working Group (working under the umbrella of Nic.tr) has the authority to grant decisions regarding ccTLD disputes and has its own procedures for dispute resolution. It is possible to file an objection against a domain registration but Nic.tr is strict when it comes to proof of ownership.

In some cases, it is preferable to apply directly to the courts. For example, if the domain is registered for a trade name of the registrant but the sign used as an SLD is also another party’s trademark, the matter would be resolved by the courts.

These actions are based mostly on trademark infringement according to Article 7/3-d of the IP Code. However, it is also possible to request cancellation or assignment of a domain regarding unfair competition, nullification of a trademark or cancellation of the trade name.

Where the rightful trademark owner has a registration in Turkey, the following must be proven:

  • the SLD is identical or similar to the plaintiff’s trademark;
  • the domain is used for identical or similar goods and services with the trademark, creating commercial impact; and
  • the domain owner has no rights in or legal affiliation with the SLD.

The courts may decide to cancel the domain or, on request, may assign it to the trademark owner. The courts may also block access to the domain as a final decision or a preliminary injunction on request of the plaintiff.

If the attacked domain is registered as a trademark and the rightful owner has no earlier trademark registration in Turkey, a nullification action against the trademark and cancellation or assignment of the domain can be also claimed. In addition, the rightful owner may request cancellation or assignment of the domain in an unfair competition action.

Before taking such action in court, it is advisable to have online evidence available to avoid data loss. Determination of evidence can be made through the notary public’s online platform or a court action.

Website content may be infringing separately from the domain name. Since a domain name would not be the subject matter of a dispute, the courts would not decide to cancel or assign the domain. However, the court may decide to block access to the website or, if the infringement disappears, by removing certain content from the website.

Use of a sign

According to Article 7/3-d of IP Code, using a sign as a router code, keyword or in a similar manner is prohibited.

Such uses tend to appear as keyword advertising. Even though there is no infringing content in the website or domain name, people who wish to be seen in search results and gain advantage from a well-known mark may use keyword advertising to draw customers to a website.

It is also possible to use another’s trademark as a metatag. This will affect search results and the website’s owner may gain an advantage from a third party’s mark in this way.

Article 7/3-d does not restrict situations involving router codes or keywords and new trends like hashtags may also be within its scope. However, there is no settled appeal court practice regarding the use of hashtags or other new technologies. Evidence determination is recommended before taking legal action.

The courts have the discretion to prevent the defendant from using the mark as a keyword, metatag or any other similar use. If the content of the defendant’s website is also infringing, the courts may decide to remove the infringing content from the website or block access to that site or page.

Use on social media platforms

Today, most social media platforms are used for online shopping and product promotion. If a trademark is used unfairly on a social media platform, the trademark owner can claim trademark infringement and unfair competition. Evidence determination is preferred to avoid data loss.

Even though the courts determine unfair use on social media, related URLs cannot be blocked because most social media platforms use secure hypertext transfer protocols (https) and the authorities are not permitted to block access. In practice, the courts remove the infringing content from the social media account.

Spam

Email and other communication channels are used for advertising purposes. Spamming is a method by which unwanted commercial messages are sent. If spam messages consist of an identical or similar sign to a trademark, it may be considered trademark infringement.

According to Article 6 of the E-Commerce Law 6563, it is prohibited to send advertising commercial messages without the recipient’s prior approval.

Liability regime

Several individuals may be liable based on court decisions regarding online domain use issues. If the decision determines that the use of a domain causes trademark infringement, the infringer who owns the domain is directly responsible. According to Law 5651, after notification of violation, hosting providers and access providers are responsible for removing content. Where a court decision orders access to a website or URL to be blocked, the Union of Access Providers should block access to that website or the URL. Where use on a social media platform is deemed infringing, the platform should remove the content. If the decision orders cancellation of a ccTLD, Nic.tr should cancel the subject domain.

If the decision determines the online use of a sign to be unfair competition, service providers are responsible in accordance with the Commercial Code 6102. If the decision determines that the online use is against the E-Commerce Law 6563, the infringer – as the service provider – is responsible.

Online/offline sale and promotion of counterfeits

Due to the increase in online counterfeit sales, organising raids at premises, shops, warehouses or places of manufacture of infringers is no longer enough to deal with counterfeiting. Targeting only online sales channels will not bring satisfying results either. Brand owners must adapt brand protection strategies to cover both online and physical platforms.

Online and on-site investigation strategies

Determination of the scope of infringing activities through online and/or on-site investigations is essential to build the best cause of action against infringers.

The biggest problem blocking investigations against online sellers is the anonymity of the online marketplaces that they hide behind. In order to eliminate this problem, investigation firms purchase a suspected product online to track down the source and ascertain whether the goods are counterfeit.

For on-site investigations, it is vital to disclose information and evidence to be used during potential legal actions, such as addresses, samples, receipts and photographs of the premises and counterfeit items.

The collaboration of investigators with local councils is essential to maintain control over local investigative activities, since Turkey has no regulation establishing the rules of private investigations and privacy is protected as an absolute right under the Turkish Constitution.

Tackling online sales of counterfeits and ISP liability

Where the seller of counterfeit products can be determined, a rights holder can obtain legal remedies in the usual manner through civil and/or criminal trademark infringement and unfair competition actions. Otherwise, the rights holder can request to block access to the related websites from Turkey or remove the infringing content through legal actions.

Internet service providers (ISPs) must remove infringing content on written request of a rights holder (Law 5651). ISPs may also be held responsible for helping infringers through filing civil and/or criminal trademark infringement and unfair competition actions.

Offline enforcement actions

Customs measures

Customs monitoring plays a key role in challenging counterfeits in Turkey since Turkey is a transit country between Asia and Europe and numerous fake products are either manufactured in Turkey or travel from the Middle East or Asia through Turkey into Europe.

According to Customs Code 4458, trademarks, patents, designs, copyrights and geographical signs can be recorded within the custom’s monitoring system for the seizure of (suspected) counterfeit goods via a simple online application to the Directorate General of Customs. On acceptance of the applications, the recordal is directed to the local customs authorities’ systems. The recordal remains valid for one year and can be renewed annually, unless the IP rights expire during that period.

Customs monitors imported and exported goods, as well as goods in free trade zones and those passing through Turkey in transit.

On determining suspected counterfeit goods, Customs will temporarily seize the goods and notify the rights holder or its representative. The rights holder must then obtain and submit a preliminary injunction order from a civil IP court or a criminal raid order within 10 working days for permanent seizure of the counterfeit items. The term is extendible up to a further 10 working days on request by the rights holder if Customs accepts such request. Before deciding whether to pursue legal action, the rights holder may need to examine the seized items or their photographs to ascertain any counterfeiting nature.

Where it is possible to pursue either criminal or civil proceedings for obtaining a permanent seizure order, criminal proceedings are more advisable since claimants may be requested to pay guarantee amounts for the issuance of a preliminary injunction order by the civil courts.

According to the simplified destruction procedure established under the Customs Code, counterfeit goods may be destroyed by Customs without a court order upon a joint request of the rights holder and owner of the goods.

Customs has ex officio authority to seize suspected goods for unregistered IP rights and invite the rights holder to take any necessary action within three working days. Nevertheless, the recordal system is much more beneficial and is to be highly recommended.

Criminal proceedings

Article 30/1 of the IP Code states that: “anyone manufacturing goods or providing services with identical or confusingly similar trademarks to another’s, offering for sale or selling, importing or exporting, buying, keeping, shipping or stocking them for commercial purposes shall be liable to imprisonment for one to three years and a judicial fine of up to 20,000 days.”

Criminal proceedings against infringers start with a criminal complaint of a registered brand owner before the Prosecution Office. Where the rights holder claims a criminal raid order, this request is examined by the prosecutor with priority and then, in case of the prosecutor’s approval, the file is sent to the Criminal Courts of Peace that have a final say on raid order requests. On issuance of a raid order, the police conduct a raid, advisedly in participation of the rights holder’s representative.

The claimants must submit solid evidence for acceptance of raid order claims, which is why pre-investigations are crucial.

When the criminal complaint is found rightful, the prosecutor prepares and sends its indictment to the criminal court and action is brought on the court’s acceptance of the indictment. According to the ‘fast destruction’ process established under Article 163 of the IP Code, the prosecutor may also request a destruction order from the criminal court, if there is a risk of damage or serious value loss or if the storage incurs considerable expense, where the counterfeit nature of these goods is confirmed by an expert report.

Criminal court actions mostly result in a prison term or fine. If the indictee has no criminal record, the declaration of the verdict may be suspended under Article 231 of the Code of Criminal Procedure upon the indictee’s request. In such a case, the indictee will be under supervisory control for five years and the verdict will be declared if they commit another crime within that period.

The court can also decide for destruction of the counterfeit goods during the trial or at the end of the proceedings.

According to Articles 253 and 254 of the Code of Criminal Procedure, the court must also apply the reconciliation process and invite the parties to seek reconciliation before deciding on the complaint.

Civil court actions

The IP Code regulates civil remedies aiming to prevent infringement of IP rights even before infringement takes place. A registered rights holder may demand determination and/or cessation of the infringement, as well as compensation for damages, by filing a civil court action.

Ex parte or inter parte preliminary injunctions are also applicable according to the IP Code, which entitles the courts to issue preliminary injunctions to secure final judgments. Where the claimants prove the likelihood of infringement or ongoing infringement, the courts tend to grant a preliminary injunction.

Claimants are usually required to deposit a guarantee amount determined by the courts, depending on the merits of the case. This guarantee is kept by the court until finalisation of the verdict and is refunded to the claimant unless the defendant claims any losses.

The defendants may request the courts to lift preliminary injunctions in return for guarantees; however, in practice, the courts mostly refuse such requests.

Compensation is determined by the courts through the calculation of any losses incurred by the rights holder and any profits made by the infringer owing to the infringing acts.

OFO Ventura

Levent Mah Çilekli Cd 2

İstanbul Besiktas 34330

Turkey

Tel +90 212 219 67 33

Fax +90 212 234 17 09

Web https://www.ofoventura.com.tr

Özlem Futman

Founding partner

[email protected]

Özlem Futman is an IP litigator, Turkish trademark and patent attorney and European patent attorney, with more than 20 years’ experience.

Ms Futman effectively manages IP portfolios for national and international companies operating in Turkey. She applies her considerable experience, tenacity and creativity to handling complex matters such as oppositions, dilution claims, domain name issues, copyright matters, licences, customs seizures and anti-counterfeiting matters, as well as non-use and nullification matters.

Ms Futman is an officially appointed expert for the Istanbul IP Courts and an active member of the MARQUES GI Committee, the International Association for the Protection of Intellectual Property Regulatory Committee and the European Communities Trademark Association Copyright Committee.

Yasemin Aktas

Partner

[email protected]

Yasemin Aktas is an IP litigator and Turkish trademark and patent attorney, with 10 years’ experience in IP law in Turkey.

She advises foreign and multinational clients from various industries on a wide range of IP issues and transactions regarding trademarks, designs, domain names, trade names and copyrights. She implements IP protection, litigation and enforcement strategies and portfolio management.

Ms Aktas is experienced in building anticounterfeiting strategies, including customs monitoring, raids, seizures and settlement negotiations. She is a member of the INTA Anti-counterfeiting Committee and has been selected by the IP Experts Group to assist the International Anti-counterfeiting Coalition IP Advisory Board.

İrem Karasüleymanoğlu

Senior associate

[email protected]

İrem Karasüleymanoğlu is an attorney at law specialising in IP and IT litigation, particularly trademark, copyright, domain name and licensing disputes, as well as unfair competition, patents, utility models, and anticounterfeiting. Her practice includes litigation, IP enforcement and settlement proceedings. She offers her clients a full range of services, taking a multidisciplinary approach.

Ms Karasüleymanoğlu graduated from Istanbul University, faculty of law, in 2012 with an LLB and completed the course work for the LLM programme at Istanbul Bilgi University Information and Technology Law Institute.