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Gün + Partners was founded in 1986 and is one of the largest law firms in Turkey with 13 partners and over 70 lawyers. The firm is based in Istanbul and provides transactional, advisory, and dispute management services to local and international companies throughout Turkey and assists clients worldwide through its established network of correspondents and contacts.The firm's core areas of expertise are corporate and commercial, dispute management, and intellectual property. It represents clients in numerous industry sectors with a particular focus on life sciences, insurance and reinsurance, energy, construction and real estate, logistics, technology, media and telecoms, automotive, FMCG, chemicals and the defence industries.

Gün + Partners

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&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">Law No. 7416, amending E-Commerce Law, came into effect on 1 January 2023, and a comprehensive change has been made to Article 9, titled "obligations of intermediary service providers", including the title of the provision. Following this change, the title of Article 9 was changed to "illegal content". According to this article, unless there is a contrary provision in other laws, the general principle is that the intermediary service provider is not responsible for the illegality of the content. Nevertheless, the intermediary service provider is obliged to remove the content and to report the illegal issue to the relevant public institutions and organisations without delay if it becomes aware of the illegality of the content.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">In the 3rd&nbsp;paragraph of Article 9, violation of IP rights is specifically regulated; the intermediary service provider is obliged to take down the product subject to the complaint upon the right owner's complaint based on information and documents regarding the violation of IP rights. If an objection is made to the contrary of the complaint, the intermediary service provider will republish the product subject to the complaint.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">If the illegal content is not removed upon complaint, or if the content is republished despite being proved illegal, the intermediary service provider will be subject to an administrative fine from 10,000TL to 100,000TL for each violation.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">A new regulation complementing Law No 7416 and explaining the takedown procedure upon receipt of a legitimate complaint by IP rights holders came into effect as of 1 January 2023 as well. According to this regulation:&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The complaints alleging IP rights infringement shall be made to the platforms through their internal communication system – which the platforms will establish- or Notary Public or Registered Electronic Mail.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The platforms shall remove the complained product within 48 hours and inform the complainant and the service provider.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The service provider is entitled to file an objection against the complaint.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">If the objection is rightfully based on the information and evidence provided, the platforms shall republish the complained product within 24 hours.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The new regulation clarifies many details of the complaint by IP rights holders to e-commerce platforms, as well as the counter-objection by e-commerce service providers to the related complaint, and aims to provide a balanced, foreseeable and fastmoving procedure to protect IP rights against infringement on e-commerce platforms. However, there are still ambiguities regarding the procedure that may create problems in practice. For instance, while the internal communication system to be established by the intermediary service provider would create a simple and functional tool to file complaints and objections, it arouses interest in whether such a system would fulfil the burden of proof.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">On the other hand, it is seen that the intermediary service providers are given a very limited period to take action upon complaints and objections. Although these limits are determined to ensure the speed of examination, it may be very challenging for the intermediary service providers and bring speculation on the depth and accuracy of the platforms’ analysis on the merits of issues. It seems that the complaint procedure to be addressed to the intermediary service provider would enable a fast-track solution and help the right holder take down the infringing products very quickly, and it is envisaged that this administrative fine will be deterrent and that the regulation of the IP rights’ violation in the law will motivate e-commerce sites to continue their activities in accordance with the law. Therefore, we consider this change in the E-Commerce Law a very positive development for IP rights holders.&lt;/span>&lt;/p>&lt;hr>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;span style="font-size: 14px;">* &lt;/span>&lt;em>This article first appeared in WTR Daily, part of the World Trademark Review, in January 2023. For further information, please go to&nbsp;www.worldtrademarkreview.com.&lt;/em>&lt;/span>&lt;/p>

Law No. 7416, amending E-Commerce Law, came into effect on 1 January 2023, and a comprehensive change has been made to Article 9, titled "obligations of intermediary service providers", including the title of the provision.

What’s New In The Amended E-Commerce Law For IP

&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">In a recent case, the General Assembly of Civil Chambers of the Turkish Court of Cassation ruled that although the defendant argued that the earlier trade mark CERAN originates from the word “ceramic”, this is not the case and CERAN functions as a trade mark for Turkish consumers.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">Therefore it can block the latter trade mark CERAMO from being registered for similar goods.&lt;/span>&lt;/p>&lt;h2 style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;strong style="">History of the Dispute&lt;/strong>&lt;/span>&lt;/h2>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The dispute dates back to 2015. Schott opposed the Turkish trade mark application CERAMO based on its several trade marks with the word CERAN as a common and dominant element. The Turkish Patent and Trade Mark Office rejected Schott’s opposition and appeal at the administrative stage, and Schott brought a court action to cancel the Office’s decision and to invalidate the relevant trade mark.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">After the first instance trial in 2017, the IP Court found that Schott’s claims were legitimate and decided to invalidate the trade mark registration for similar goods. The Regional Court of Appeal also aligned with the IP Court’s decision.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">However, upon further appeal, the 11th&nbsp;Civil Chamber of the Court of Cassation reversed the decision in 2019, based on the reasoning that the common letters CERA- in the parties’ trade marks refer to the fact that the goods bearing these trade marks are made of “ceramic” and thus consumers would not confuse the trade marks.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The IP Court had heard the case in the light of the reversal decision and decided to insist on its first decision in 2020, by underlining that the average Turkish consumer would not perceive the CERAN and CERAMO trade marks as referring to “ceramic”, and they may confuse the trade marks. The Turkish Trade Mark Office appealed this decision once again and brought the matter before the General Assembly of Civil Chambers of the Court of Cassation, arguing that the CERAN trade mark originates from the word “ceramic”.&lt;/span>&lt;/p>&lt;h2 style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;strong style="">Court’s Reasoning&lt;/strong>&lt;/span>&lt;/h2>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">In late 2022, the General Assembly agreed with the reasoning of the IP Court and upheld the IP Court’s ruling in favour of Schott. In summary, the General Assembly decided that although the defendant argued that the earlier trade mark CERAN originates from the word “ceramic”, this is not the case and CERAN would be perceived as a trade mark but not as a generic name. Therefore it can block the junior trade mark CERAMO registered for similar goods, due to the likelihood of confusion between these trade marks.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">This decision is remarkable considering the detailed reasoning provided by the General Assembly of Civil Chambers of the Court of Cassation. It is notable that the level of knowledge and the perception of average Turkish consumer are taken into consideration while evaluating its capability to block a junior trade mark registration in Turkey.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">It is quite rare for the IP Courts to insist against the reversal decisions of the Court of Cassation, but when they do so, the cases are referred to the General Assembly of Civil Chambers of the Court of Cassation and the General Assembly delivers detailed and accurate decisions as in the present case.&lt;/span>&lt;/p>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">The General Assembly is the highest board of the civil chambers in the Court of Cassation and its decisions are final. Thus, its precedents are taken into consideration seriously by the lower instance courts and seen as unifying the decisions.&lt;/span>&lt;/p>&lt;hr>&lt;p style="text-align: justify;">&lt;span style="font-family: Arial, Helvetica, sans-serif; font-size: 14px;">&lt;em>First published by Marques - Class 46 in 06.04.2023.&lt;/em>&lt;/span>&lt;/p>

In a recent case, the General Assembly of Civil Chambers of the Turkish Court of Cassation ruled that although the defendant argued that the earlier trade mark CERAN originates from the word “ceramic”, this is not the case and CERAN functions as a trade mark for Turkish consumers.

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What’s New In The Amended E-Commerce Law For IP

Turkish Court of Cassation Rules in CERAN v CERAMO Case