Major changes to IP rights protection at borders introduced
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Law 5911, which amended the Customs Law 4458, entered into force on October 7 2009. On the same day, the Customs Regulation was published in the Official Gazette. These pieces of legislation introduce major changes to the protection of IP rights at the borders.
Law 5911 allows rights holders to file a single (online) application for the protection of their IP rights by all Turkish customs administrations. Previously, rights holders had to file an application with each customs administration. The General Directorate of Customs, which is located in Ankara, will accept applications on behalf of the local customs administrations. The information contained in the applications will be made available to all customs officers via the General Directorate’s official website.
In addition, it is now possible to file an application for customs protection for a set period of time, the maximum being one year. However, the General Directorate has discretion to decide the period of time during which protection will be granted. Therefore, if the applicant does not obtain protection for the required period of time, it will have to renew its application at the end of each period.
The new legislation maintains the temporary suspension procedure. However, the law now clearly states that customs transactions will be suspended for only three days if the goods at issue are perishable. If the goods are not perishable, the rights owner has 10 days to start proceedings. Applicants are also entitled to request an additional period of 10 days, provided there is a justified reason.
Once a temporary suspension order has been granted, the applicant must obtain a preliminary injunction within 10 days, as was the case under the former legislation. However, Law 5911 introduces a new simplified destruction procedure, which allows the destruction of counterfeit goods without first obtaining a court order, provided that the rights holder and the owner of the goods manage to reach a settlement. This will undoubtedly shorten the proceedings and reduce costs significantly for both parties, since there is no litigation involved.
However, many provisions of Law 5911 and the Customs Regulations are too vague or unclear. For example, the new legislation does not provide for an administrative fee for filing applications for customs protection or for the new simplified destruction procedure. Consequently, rights holders cannot foresee whether they will have to pay a fee for filing such applications. Moreover, it remains unclear whether rights holders will be able to apply for the protection of all their IP rights in a single application, or whether they will have to file a separate application for each IP right.
The implementation regulation, which is expected to be published in the near future, should clarify these issues. It is hoped that once the new procedures are in place, the protection of IP rights at the Turkish borders will become more effective.
Baris Kalayci and Zeynep Seda Aksoy, Mehmet Gün & Partners, Istanbul
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