The Intellectual Property Review - 2

IV. ENFORCEMENT OF RIGHTS

Turkish law provides an effective enforcement procedure for the protection of IP rights. Usually, the first step for enforcement is determining an IP infringement. Once an infringement has been determined, it is advisable to send a cease-and-desist letter from a notary public as this may lead to an easier and faster relief for the IP owner.

If infringement continues or if an IP owner wants to move forward with enforcement as the first step, it is possible to request the determination of evidence from civil courts or request search warrants from criminal courts to conduct raids and secure evidence.

i. Possible venues for enforcement or revocation

Under Turkish law, it is possible to enforce IP rights before the criminal law courts and civil law courts.

In terms of civil law protection, IP infringement actions are filed before the specialised civil courts of industrial and IP rights in Istanbul, Ankara and Izmir. In other cities, one of the regular civil courts (if there are more than two courts, the third civil court, otherwise the first civil court) is assigned as a specialised IP court.

It is also possible to enforce IP rights before specific criminal courts of industrial and IP rights in Istanbul, Ankara and Izmir for cases where the legislation stipulates imprisonment or a judicial monetary penalty for infringement of a certain IP right. In other cities, one of the regular criminal courts (if there are more than two courts, the third criminal court, otherwise the first criminal court) is assigned as a specialised IP court.

It is possible that any goods or products that infringe IP rights may be confiscated by the customs authorities during their import, export or transit. The customs authority, without the necessity of a court or public prosecutor order, may confiscate any goods that breach IP rights and notify the IP right owner afterwards to follow the next steps, such as the initiation of a civil case or the obtaining of an injunction.

It is also possible that invalidation or revocation, or both, of a registered trademark may result from a judicial decision. Any interested party may file a lawsuit before the Turkish IP courts by requesting invalidation or revocation of a registered trademark.

There is a time limit for the filing of an invalidation action. The owner of the prior trademark (registered or unregistered) cannot claim invalidity of the later trademark if they know of the use of the later trademark but have stayed silent on it for five years. However, if the later trademark use is in bad faith, the time limit is not applicable.

With respect to revocation actions based on non-use, if the trademark has not been used without a justifiable reason in Turkey or if the use has been suspended during an uninterrupted period of five years, the trademark will be revoked.

Article 9 of the Industrial Property Law defines the use as follows:

a use ‘with different elements which do not alter the distinctive character of the mark’;

b use ‘on goods or on the packaging solely for export purposes’; and

c use by third parties ‘with the consent of the trademark proprietor’.

ii. Requirements for jurisdiction and venue

Turkish courts have jurisdiction in IP infringement cases if either the IP right is registered in Turkey, the defendant resides in Turkey or the tortious act was committed in Turkey. According to Turkish law, if the place where the tortious act was committed is not the place where the damage has occurred, the law of the state where the damage has occurred shall govern.

The applicable jurisdiction in Turkey may be one of the following:

a the regular domicile of the IP rights holder;

b the place where the infringement was committed; or

c the place where the act of infringement produced consequences.

iii. Obtaining relevant evidence of infringement and discovery

Under the Turkish Civil Procedural Law, the burden of proof lies on the claimant. Therefore, it is very important to collect relevant evidence before initiating a lawsuit.

One of the methods that is widely used is the determination of evidence, where, by order of a court, an examination can be made with experts or a judge, and evidence can be collected. This examination usually entails visiting a premises to document the situation to be used as evidence.

Another method, which can be used in cases where IP infringement may result in criminal sanctions, is obtaining a search warrant and asking for an expert examination. For this method, the rights holder applies to the public prosecutor, requesting that the prosecutor ask for a search warrant from the magistrates’ court. If the magistrates’ court accepts the public prosecutor’s request, the public prosecutor appoints an expert and orders the search warrant to be executed with the police.

Other than those methods, any legally obtained evidence may be used in courts and these may include details of purchases made from the seller of counterfeit goods, relevant payment slips and opinions obtained from laboratories.

iv. Preliminary injunctions

Preliminary injunctions are available in Turkey before or during the substantive proceedings. The claimant must prove that:

a they are the rights holder;

b their rights are being infringed or there is a high likelihood of infringement; and

c they may suffer irreparable harm or damage.

The rights holder may apply for a preliminary injunction for the cessation or prevention of the infringing activities, as well as for seizure of the infringing goods.

v. Trial decision-maker

In accordance with Turkey’s provision for special IP courts, the judges for IP cases are specialists. Furthermore, technical expertise is also very important, and in almost all cases the judge asks for an expert examination from a court-appointed expert or court-appointed expert panel. As a result, the expert report is a significant element of the judicial process. There is no jury trial in Turkey.

vi. Structure of the trial

Civil procedure in Turkey is mainly based on writing. The briefs of the parties and the written expert report are the most significant documents.

Before the trial, the claimant provides the claim petition to the court and the defendant responds to it with a response petition. Afterwards, secondary petitions are provided to the court by the claimant and defendant respectively. All evidence, claims and defences of parties must be submitted to the court at this stage with their respective petitions. In principle, admitting additional evidence or bringing new claims and defences is not allowed under procedural law after this stage has been completed.

During the proceedings, the judge will hear the parties; however, because trials are based on the written documents submitted to the court, the hearing is generally used as a tool to point out some of the critical issues for the judge to concentrate on.

IP litigation relies on documentary evidence provided by the parties or the expert report obtained by the court. While it is possible to take witness statements, this is not standard practice in IP litigation, and witness statements rarely preclude documentary evidence.

There are certain minimum requirements for a document to be accepted as proof before the court. For example, all agreements related to the transfer of copyrights must be in writing.

vii. Infringement

Patent and trademark protection prevents third parties from offering or making available goods or products that are the subject matter of the patent or are branded with that trademark.

viii. Defences

Trademarks

The most common defence in Turkey is that the challenged trademark has no distinctive character or is deceptive or descriptive.

In Turkey, as a defence, the defendant can also claim to be the prior rights holder or that the trademark owner has not been using the trademark for a period of at least five years. The defendant can file a separate invalidation or revocation action on the grounds of non-use or being the prior user.

The principle that a right can be lost by remaining silent can also be used as a defence. The defendant can claim that the trademark owner is acting in bad faith by filing the infringement claim after a long period of tolerance.

Designs

In a design infringement case, the defendant may argue that the registered design should be cancelled and that the use of the design was a technical necessity or for personal use, or for an experimental, educational or repair purpose.

Patents

In Turkey, the most common defence against infringement claims is filing an invalidity action against the patent.

A defence relating to prior-user rights can also be raised as patent owners do not have the right to prevent persons from using the invention if they began to use it in good faith before the application date.

The defendants can also raise an exhaustion defence, which is essentially an exemption to patent infringement. The release of a product bearing an IP right anywhere in the world is sufficient for the exhaustion of the IP right in Turkey.

Copyright

The Law on Intellectual and Artistic Works stipulates specific situations in which use of copyrighted work without the rights holder’s permission does not constitute copyright infringement. Commonly used exceptions are:

a personal use;

b use for educational purposes in schools or other educational institutions;

c use under ‘freedom of quotation’;

d influential use to create an original and independent work;

e use for reasons of public order or in the interests of the community; and f expiry of copyright.

ix. Time to first-level decision

In most cases, it is possible to obtain a first-level decision in an IP infringement case or other dispute within 18 to 24 months. This term also includes an expert examination.

x. Remedies

The remedies available in Turkey include:

a the cessation of the infringing acts;

b the confiscation or destruction of the infringing products and the equipment and machinery used to produce the products;

c compensation for material and moral damage; and

d publication of the court’s decision.

There are no criminal remedies for design and patent infringements. However, for trademark and copyright infringements, criminal remedies, including imprisonment and fines, are regulated.

xi. Appellate review

In Turkey, final decisions of the courts of first instance can be appealed before the district courts, and the decisions of the district courts can be appealed before the courts of appeal. An appeal does not automatically stop the execution of the decision, and the suspension of the execution should be requested together with the appeal. Appeal proceedings last between 18 months and two years. With respect to preliminary injunctions, district court decisions are final and cannot be appealed before the court of appeal.

xii. Alternatives to litigation

As of 1 January 2019, mediation is mandatory for IP-related disputes regarding receivables and compensation claims. However, there is no restriction on applying mediation to other disputes as well.

IP-related disputes can also be resolved by arbitration. Under the Turkish Civil Procedure Law, arbitral decisions are executable without the need for any judicial approval or decision.

Alternative dispute resolution methods have significant advantages, such as the arbitrators’ expertise, the confidentiality of the proceedings and the flexibility to adapt the proceedings to different situations.

V. TRENDS AND OUTLOOK

In the global IP world, the topic of whether an artificial intelligence (AI) system can be the owner of a patent is being discussed. Although there have as yet been no decisions or changes in this context in Turkey, it seems that AI-related changes to legislation will be necessary.

On 21 December 2018, all authorisations regarding the management and allocation of .tr domain names were transferred from Nic.tr to BTK. On 14 September 2022, TRABIS finally became operational after BTK announced that expected legislative developments had been completed.

Fundamental changes have since been made to the dispute resolution process. During the Nic.tr period, domain name disputes were resolved by the dispute resolution mechanism within the Ministry of Transport’s DNS Working Group. However, disputes of this nature are now resolved by the dispute resolution service provider system, by arbitrators or arbitral committees within dispute resolution service provider organisations certified by TRABIS.