Legislative framework and causes of action
At a national level, the Industrial Property Code 6769 (10 January 2017) governs the principles, rules and conditions relating to the protection of trademarks, patents, utility models, designs and geographical indications.
Turkey is a member of the World Trade Organisation and a party to several international treaties relating to intellectual property, including the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Paris Convention for the Protection of Industrial Property.
According to Article 29 of the IP Code, the following acts constitute trademark infringement:
- unauthorised use of a sign that is identical or confusingly similar to a registered trademark for identical or similar goods or services;
- unauthorised use of a sign that is identical or confusingly similar to a well-known trademark for different goods or services (eg, dilution by blurring, tarnishment or free riding – that is, taking unfair advantage of the mark’s well-known reputation);
- sale, distribution, commercial use, import, export, holding for commercial purposes or offering goods bearing a trademark that is known or should be known to be an unlawful imitation; and
- unauthorised broadening or transfer of licence rights by a licensee.
Unregistered trademarks are protected under the general provisions relating to unfair competition regulated by Articles 54 to 56 of the Commercial Code. ‘Unfair competition’ is defined as: “behaviour or commercial practices that are deceptive or infringe in other ways on the honesty rule and that affect relations between competitors or between suppliers and their customers are unfair and illegal”. Among examples of unfair competition, Article 55(a)(4) mentions “taking measures to create confusion with the products, business products, operations or business of another party”.
Registered trademarks are also protected under the unfair competition regulations and registered brand owners can pursue trademark infringement and unfair competition claims simultaneously in the same court action to strengthen their hand.
Nullification and revocation actions
Trademark registrations may be subject to nullification claims based on absolute and relative grounds for refusal under Articles 5 and 6 of IP Code:
- incapability of being a trademark according to Article 4;
- indistinctiveness of a mark;
- deceptiveness of the mark in the public eye (eg, regarding the nature, quality or geographical origin of the goods or services);
- confusing similarity;
- unauthorised application by a trade agent;
- prior and genuine rights obtained via prior and extensive use of the sign;
- copyrights or other industrial rights (eg, trade names);
- personal rights (eg, the unauthorised use of a personal name or photograph);
- well-known trademarks (eg, dilution by blurring, tarnishment or free riding);
- bad faith;
- consisting of signs refused pursuant to Article 6ter of the Paris Convention;
- containing historical, cultural values and emblems, badges or escutcheons for which the consent of the competent authority has not been given;
- containing religious values or symbols; and
- being contrary to public policy or accepted principles of morality.
According to Article 9, if there is no justifiable reason why a trademark has not been put into use in Turkey since its registration or if the use has been suspended for an uninterrupted period of five years, the trademark will be revoked.
Other causes of revocation include:
- where the trademark has become generic;
- where the trademark misleads the public concerning the nature, quality or geographic origin of the goods or services for which it is registered, as a result of use by the trademark owner or with the owner’s consent; and
- use of a trademark contrary to Article 32: “In case of application of relevant persons, public prosecutors or the relevant public institutions on the grounds that the owner does not take necessary measures in order to prevent the continuous use of the collective mark or the guarantee mark contrary to the technical specification, the mark shall be revoked unless the said contrary use is corrected within the prescribed period.”
Nullification actions can be filed before the courts within five years of the registration date of the disputed mark. Bad-faith filings are subject to invalidation claims with no time limit.
Trademark infringement actions must be filed within a two-year period from the day that the infringing act is known of. In any case, such civil action must be filed within 10 years of the date that the infringing act occurred. If an action is also defined as a crime, the time limit applicable for that crime would be applied (ie, eight years for trademark infringement). However, if the infringement is ongoing, there is no time limit.
Alternative dispute resolution
Mediation and arbitration
As of 1 January 2019, and according to the Turkish Commercial Code, a mandatory mediation process is applied in commercial cases, including IP matters, where monetary debt and compensation are requested.
For IP disputes without any compensation or monetary debt claims, mediation is not mandatory, but the courts encourage parties to a dispute to mediate during the initial examination on the file and invite the parties to consider solving the matter amicably. However, non-mandatory mediation is rarely used in IP disputes in practice.
In mediation, a third-party mediator acting impartially can be appointed upon agreement between the parties. In a mandatory mediation process, the mediator can be appointed by the mediation centre, where the parties can agree on a mutual mediator. The trial is suspended for three months during mediation, which can be extended a further three months upon the parties’ mutual consent. If the parties reach an agreement, it is possible to obtain approval from the court, giving the agreement the enforceability of a court decision.
Turkey has no arbitral institutions that specialise in IP disputes, but parties can decide to go to arbitration. Trademark arbitration is usually preferred to solve conflicts arising from contractual rights and obligations, breaches and infringements under licensing agreements. Like mediation, arbitration is not often used for IP disputes.
Litigation venue and formats
Court system and litigation venues explained
Specialised IP courts exist in Istanbul, Ankara and İzmir. In other cities, the third chamber of the first-instance civil courts (or, if there are fewer than three chambers, the first chamber) handles IP litigation cases.
In legal proceedings initiated by third parties against the owner of an IP right (eg, nullification and revocation actions), the competent court is the court where the defendant is domiciled. Where the rights holder (defendant) is not domiciled in Turkey, the competent court is the court where, at the instituting date of the legal proceedings, the business place of the registered attorney is located. If the record of the attorney has been deleted, the competent court is in Ankara, where TURKPATENT’s headquarters are located. Revocation actions will be heard by TURKPATENT from 2024, as ordered in the IP Code.
In legal proceedings to be initiated against third parties by a rights holder, the competent court is located where the plaintiff is domiciled, where the illegal action has taken place or where its effects can be observed.
A written procedure is applied in IP litigation. The burden of proof is on the plaintiffs, except in non-use cancellation actions, where it switches to the defendant. Each party has the right to submit two petitions. After the parties submit their petitions, or in any case after the two-week response deadline has passed, the court determines a preliminary hearing date.
At the preliminary hearing, the court examines the causes of action and preliminary objections, detects the matter in dispute and invites the parties to settle the matter amicably. If at least one of the parties says that an amicable settlement is not possible, the judge will give two weeks to the parties to submit evidence that has been previously indicated but not submitted. If the parties say that there is a possibility of settling the matter, the judge will give them time to negotiate and postpone the process.
During the trial stage of IP disputes, an expert examination is usually conducted. The first-instance trial usually takes 12 to 24 months, depending on the complexity of the file.
Forum shopping is not possible in Turkey.
Jury versus bench
Jury trials are not available in the Turkish Judicial system.
Damages and remedies
The IP Code provides the following remedies in case of trademark infringement:
- determination and a cease of the infringement actions;
- prevention of possible infringements and taking the necessary measures;
- remedy of infringement and compensation for material, immaterial and reputational damage;
- seizure and granting property rights on the infringing products and the machines and tools, among other things, used in their production; and
- an announcement of the final court decision in the newspapers, where the expenses fall to the infringer.
A rights holder may also demand compensation for damages caused by the infringing acts in a civil court action. The court calculates damages considering the effective loss together with the rights holder’s lost profits that can be calculated based on one of the options below, depending on the rights holder’s preference:
- the profit that the trademark owner could have earned without competition from the infringer;
- the net profit made by the infringer; or
- the royalty that the infringer would have paid for a licence.
It is possible to request an interim injunction from the courts with a separate action before filing the main lawsuit (ex parte) or it may be requested with the main lawsuit (inter partes). In either case, the court can:
- decide to hear the adverse party, set a hearing date, then decide whether to grant an injunction;
- send the file to an expert before making a decision about the injunction request;
- grant the injunction immediately without notifying the case to the defendant; or
refuse the injunction immediately.
The purpose of an interim injunction is to protect the effectiveness of the final decision; its basis therefore can be different in each case if it is compatible with Articles 389 to 399 of the Code of Civil Procedure and Article 159 of the IP Code.
The injunction decision granted by the trial court can be objected to. The trial court’s decision, on objection, can be appealed before the regional appeal court and this appeal court’s decision is definitive.
The defendants may also request the trial court to lift preliminary injunctions in return for guarantees; however, the courts mostly refuse such requests in practice.
If an interim injunction request is refused, that decision can be appealed before the regional appeal court as well, whose decision is definitive.
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 according to 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 and proves any losses or harm.
Evidencing the case
Investigations and first steps
Determination of the scope of infringing activities through online and on-site investigations is essential to build the best cause of action against infringing acts.
The biggest problem blocking investigations against infringing online use is the anonymity of the online platforms that infringers hide behind.
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 sample 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.
In the case of any risk for spoilation of evidence of infringing use, determination of conflicting online or on-site use may be requested by filing a civil determination court action before the Civil IP Courts or the Civil Courts of Peace. In this action, the court only determines conflicting use and secure evidence without making any examination on the claimant’s rights or infringement claims. This court action is notified to the defendant only after completion of all examination and when evidence has been secured. A conclusion of this kind takes around two to four weeks. The act of filing such court action, starts the claimant’s one-year time limit to file the main court action against the conflicting use. A new one-year term starts for every possible future use by the counterparty. Regardless of whether the counterparty maintains the infringing use despite being notified of the court action, it is advisable to pursue action with the main court immediately to create a more favourable approach, especially for preliminary injunction claims in the main action.
Where there is only online use or determination of online use suffices, evidence can be secured via a notary public determination immediately without notifying the counterparty before or after the determination. Therefore, the adverse party could become aware of notary public determination only on its release by the claimant. Without this release, it may not be used as a base for the possible ‘one-year time limit’ defence by the counterparty. This option is not possible for securing evidence of on-site use.
In principle, in IP disputes the evidence must be in writing. Although the court hears the witnesses’ statements on either party’s request, witness statements are not accepted as solid evidence.
Surveys are deemed as discretionary evidence and can be important, especially when it comes to proving the reputation of a trademark or its acceptance through use. To reduce the risk of potential objections against surveys, it is highly advisable to collaborate with independent and experienced market research agencies to conduct them.
Use of expert witnesses
The most important evidence in trademark disputes in Turkey is expert evidence. In almost all trademark disputes, the courts appoint an expert or expert panel for examination of the parties’ claims and defences and all evidence existing in the file. The courts have their own official database for official experts and ex officio appoint experts among those recorded. Parties may object to an expert report within two weeks (extendible for a further two weeks on request) of notification to their side. Depending on the parties’ objections, the court may appoint a new expert or expert panel for re-examination of the file, send the file to the same panel for an additional examination or reject objections without needing any further examination. In terms of expert examination, the file can be sent to a maximum of three different experts or expert panels and the courts usually issue a decision relying on expert reports.
In practice, the parties are also allowed to work with private technical experts to produce supporting evidence to their claims, but private expert reports are deemed discretionary evidence.
The non-use defence has been actively applied in trademark disputes since its entry into force in 2017. Defendants of nullification actions may invite the plaintiff to prove genuine use of its base mark in Turkey for the past five years, if the five-year use term as of registration of the plaintiff’s mark has passed by the filing date of the lawsuit. If the trademark that a court action relied on is registered earlier than five years from the contested trademark’s filing date or its priority date, the plaintiff must also prove the use of its trademark since the filing or priority date of the trademark subject to the action, retrospectively within five years. If the rights holders fail in proving their use for any goods or services within their scope, the likelihood of confusion claims based on the related registrations are refused for those goods or services without examination.
Defendants in trademark infringement actions may invite the plaintiff to prove genuine use in Turkey of its base mark for the past five years, if the five-year use term has passed by the filing date of the court action. If the plaintiff cannot prove use, the case will be dismissed. The defendants may also file a counter-action for non-use cancellation of the registrations on which the infringement claims were based. In such a case, the courts usually examine non-use cancellation claims with priority and then start examination on the infringement claims.
The other main defences in infringement actions include the following:
- exhaustion of trademark rights;
- holding or using of the goods for the purposes of personal needs;
- parallel imports;
- failure of the trademark owner to seize the infringing products where compensation for those products has already been paid by the infringer to the trademark owner;
- rightful ownership of the mark; and
- fair use of the mark.
The trial stage takes approximately one to two years. However, it may take longer depending on the court’s workload, the number of expert examinations and the level of complication of the dispute.
Once the trial court grants a decision and the parties are notified, the parties have the right to appeal before a regional appeal court within two weeks of notification of the decision.
If none of the parties appeals the trial court decision, it becomes final. In the case of any appeals, the other party is informed and is granted two weeks to submit its responses. The file is then sent to the regional appeal court for examination on both procedural grounds and the merits. On the parties’ request, the regional court may appoint another expert or expert panel to obtain a new report.
The regional appeal court stage takes around a year and the regional appeal court’s decision can be appealed before the National Appeal Court. The National Appeal Court stage may take one to two years, depending on its workload.