A. The Scope of Trademark Protection:
The purpose underlying any trademark law is twofold. The first is the public (consumer/buyer). In this way, it is ensured that the consumer buys the product he/she knows and wants to buy while he/she buys the product on which a particular trademark is used. Secondly, where the owner of a trademark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats. (Dueker, 1996, p.488)
The grant of ex officio inspection authority to the Turkish Patent and Trademark Office (TPTO) after the trademark application; presentation of opinions by anyone following the publication of trademark application as per article 17 of the 6769 numbered Industrial Property Law (except for paragraph 5/1-ç); discretion of Public Prosecutors or related official bodies in claiming for invalidation of the trademark as per paragraph 2 of article 25, and similar circumstances evidence that the public interest is protected by the Turkish Industrial Property Law no 6769 (hereinafter will be referred to as Turkish IP Law).
Similarly, the scope of rights arising from trademark registration is set out in article 7 of the Turkish IP Law, and the authorities possessed are specified in this context, and type of demands which might be raised is stated in article 149 and the successive articles, which all evidence that the proprietor of the trademark is protected at the same time.
According to paragraph 2 of article 7 of Turkish IP Law, the trademark proprietor, in case of execution without his consent, shall be entitled to prevent third parties, from:
“using of any sign identical with the trademark on goods or services that are in the scope of the registration”;
“using of any sign identical with or similar to a registered trademark and covering identical or similar goods or services with the registered trademark, and therefore create a likelihood of confusion on the part of the public; including the likelihood of association between the sign and the trademark”;
“using of any sign identical with, or similar to the registered trademark, irrespective of being for identical, similar or different goods or services, where the use of that sign without due cause takes unfair advantage of or is detrimental to the distinctive character or to the repute of the trademark due to the reputation it has in Turkey”.
In case the trademark is used in the course of trade in the aforementioned forms, the proprietor shall be entitled to prohibit the following acts, as per the third paragraph of article 7:
- affixing the sign to the goods or to the packaging thereof,
- offering the goods, placing them on the market or stocking them for those purposes under the sign, or offering or supplying services under it,
- importing or exporting the goods under the sign,
- using the sign on business papers and in advertising,
- using the identical or similar sign-on internet media as the domain name, router code, keyword or in a similar manner with a commercial impression; provided that the person using the sign has no right or legal affiliation for the use of that sign,
- using the sign as a trade or company name,
- using the sign-in comparative advertising in a manner that is against the law.
These circumstances also constitute the scope of trademark protection and are the exemplary listing of frequently encountered cases in practice, and are not of restricted nature. (Arkan, 1998, p.211)
B. Infringement of Trademark Right
To date, no multinational treaty regime or harmonization directive has established an agreed-upon standard for the infringement of intellectual property rights. Thus, in the absence of established international standards, the question of infringement is being depended exclusively upon domestic law. (D’amato – Long, 1997, p.340)
Infringement of trademark right and demands related thereto in Turkey are regulated in the Turkish IP Law under article 149 and ongoing articles titled: claims that can be made by the right owner whose industrial property right being infringed.
Infringement of trademark right is an unfair act, the existence of which requires the occurrence of any of the acts indicated in the Turkish IP Law and the nonexistence of any grounds of fair use in the present case. (Tekinalp, 2002, p.414)
Acts considered an infringement of trademark right is issued in the following 4 clauses according to the numerus clausus principle in article 29 of the Turkish IP Law:
a) Using the trademark in a manner as set out in Article 7 without the consent of the trademark proprietor,
b) Counterfeiting the trademark by using the trademark or a confusingly similar trademark without the consent of the trademark proprietor,
c) While being aware or should be aware that the trademark is counterfeited by use of the trademark or a confusingly similar trademark, to sell, distribute, put on the market in a different form, possess for commercial purpose, import, export the products carrying infringed trademark or to offer to make a contract related to this product,
ç) Broadening or transferring to third parties, without consent, the rights that are given by the trademark proprietor through the license.
C. Legal Remedies in Case of Trademark Infringement
It is argued in the doctrine that in terms of legal remedies to be applied in case of violation of intellectual property rights, there is a distinction between actions that require and which do not require the condition of fault and damages. (Kılıçoğlu, 2006, p.97-101)
According to this distinction and upon examination of article 149 and ongoing articles of the Turkish IP Law, the proprietor may apply to the court without the condition of fault and damages, for prevention of the infringing acts, cessation of the infringing acts, and confiscation of the goods; establishment of the right of possession on the confiscated goods, and destruction of the goods. In the event that there exists damage of the trademark owner, and the third person realizing the infringement also has a fault, the proprietor shall be entitled to file actions for pecuniary and moral damages, recovery of the loss of gain, and compensation for impaired credit. Again, the Turkish IP Law grants the proprietor the authority to claim for the announcement of the finalized judgment through a daily newspaper or similar means, either the condition of fault and damages be required or not. (Kılıçoğlu, 2006, p.375)
D. Conclusion
The above explanations indicate that the rights and authorities granted to the proprietor of a trademark are quite wide. Again, in the case of a possible infringement, the possibilities and options offered to eliminate the infringement are varied.
The priority should be; is to determine whether the actions deemed to be unjust shall be evaluated within the scope of infringement of the trademark right. Although the Specialized Intellectual Property Courts will render final decisions regarding each case, one should carefully and meticulously examine and evaluate each circumstance before the legal process is preceded. For example, if an act considered to constitute a trademark infringement is an act that is not in the commercial field and/or has no commercial effect, there may be no infringement of the trademark right.
Although there is an action that constitutes an infringement of trademark right there may be some special circumstances that make this action justifiable. (e.g. The circumstances for the loss of rights due to remaining silent in the context of trademark infringement might have arisen. Or, in the present case, it may be that the person alleged to have infringed, has a priority right to the trademark in question, or that the person has an acquired right in the relevant phrase, etc.) Therefore, it is important to evaluate the incident objectively within the framework of the present circumstances.
After these determinations, it is equally important to determine which steps will be taken at the beginning of the process. For instance, recovery of the loss of gain and compensation for impaired credit demands requires clear and unambiguous proof that the loss arises from the infringement of the trademark right. On the contrary, if these claims cannot be proved, there is a possibility that the claims within this scope will be rejected during the proceedings.
Again, if it is anticipated that the infringing person does not have any export transactions abroad, an attempt to prevent these acts before the trial will result in prolonged proceedings. Or again, filing a declaratory action so as to prove the trademark use on the Internet against the infringing party who does not have any actual trademark usage on the stated medium might extend the prosecution process.
Therefore, in the prevention of the trademark infringement process, proper planning of the methods to be followed will enable trademark protection to be realized more effectively. In this way, the targeted result will be achieved in a relatively short time.
N.Berkay KIRCI
Attorney at Law
Trademark & Patent Attorney
References:
Arkan Sabih, (1998), Marka Hukuku, Ankara Üniversitesi Hukuk Fakültesi Yayınları No: 533, AÜHF. Döner Sermaye Yayınları No:48, Ankara
D’amato, Anthony & Estelle long, Doris, (1997), Intellectual Property Law, Kluwer Law International
Dueker, Kenneth Sutherlin, Trademark Law Lost in Cyberspace: Trademark Protection for Internet Addresses, Harvard Journal of Law & Technology, Summer 1996, Volume 9, Number 2
Kılıçoğlu, Ahmet M., (2006), Sınai Haklarla Karşılaştırmalı Fikri Haklar, Ankara, Turhan Kitabevi