Introduction:
Today, trademarks are perhaps one of the most indispensable elements of commercial life. It is not enough to register and actively use an instrument that has such a crucial place in commerce. Another factor that is at least as important as these elements is the 'legal protection of the trademark.'
In cases where the trademark is well-known or stands out in a particular sector, the number of infringements, and malicious and unfair use of the trademark increases significantly, both quantitatively and qualitatively. Especially in these cases, the need for trademark protection makes itself felt even more intensely.
As is known, 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)
Trademark infringement in Turkey is regulated under Article 149 and following articles of the Industrial Property Law No. 6769 with the sub-heading "Claims that the right holder whose industrial property right has been infringed may assert."
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 granting of ex officio examination authority to the Turkish Patent and Trademark Office (TÜRKPATENT) after the trademark application, the right to submit opinions by anyone following the publication of the trademark application pursuant to Article 17 of the Industrial Property Law No. 6769 (except for paragraph 5/1-ç), the discretionary authority of the Public Prosecutors or relevant official institutions in requesting the invalidity of the trademark pursuant to paragraph 2 of Article 25, and similar situations show that the public interest is protected by the Turkish Industrial Property Law No. 6769. (hereinafter referred to as the Turkish IP Law.)
In the same vein, Article 7 of the Turkish Industrial Property Law defines the scope of the rights arising from trademark registration, which further specifies the authorizations within this scope, and Article 149 and the following articles regulate what kind of claims can be made, all of which are also proof that the trademark owner is protected.
In accordance with paragraph 2 of Article 7 of the Industrial Property Law, the trademark owner may, in the event of disposition of the trademark without its authorization, prevent:
"the use of any sign identical to the trademark on the goods or services covered by the registration"
"the use of any sign which is identical or similar to a registered trademark and which covers the same or similar goods or services as the registered trademark and which therefore creates a likelihood of confusion on the part of the public, including the possibility of association between the sign and the trademark";
"the use of any sign which is identical or similar to a registered trademark, regardless of whether it is for the same, similar or different goods or services, where the use of such sign without justifiable cause takes unfair advantage of or damages the distinctive character of the trademark or its reputation in Turkey."
Where the trademark is used in the course of trade in the afore-mentioned ways, the trademark owner shall be entitled to prohibit the following acts pursuant to the third paragraph of Article 7
- the affixing of the sign to goods or their packaging,
- offer goods, place them on the market or stock them under the sign for these purposes, or offer or supply services under such sign,
- import or export of goods under the sign,
- Use the sign on business papers and advertisements,
- Use the same or a similar sign on the internet as a domain name, router code, keyword, or in a similar manner with a commercial impression, provided that the person using the sign does not have any right or legal connection to the use of the sign in question,
- Use of the mark as a trade or company name,
- use the sign-in comparative advertisement in an illegitimate way.
While these situations also constitute the scope of trademark protection, they are listed as examples of frequently encountered situations in practice and are not restrictive. (Arkan, 1998, p.211)
B. Infringement of Trademark in Turkey:
Trademark infringement is a tortious act, the existence of which requires the occurrence of any of the acts specified in the Turkish Intellectual Property Code and the absence of any fair use justification in the present case. (Tekinalp, 2002, p.414)
Infringement of the trademark right in Turkey is listed as follows:
a) To use the trademark in the ways specified in Article 7 without the permission of the trademark owner;
b) Counterfeiting the trademark by using it or an indistinguishably similar trademark without the permission of the trademark owner;
c) Selling, distributing, otherwise putting into the field of commerce, importing, exporting, holding for commercial purposes, or proposing to make a contract for the products bearing the trademark used through infringement, even though he knows or should know that the trademark is counterfeited by using the trademark or its indistinguishably similar one;
ç) Expanding the legitimately granted rights through license without permission or transferring these rights to third parties.
C. Legal Remedies for Trademark Infringement
There is a distinction in the scholarly literature in terms of the legal remedies to be applied in case of infringement of intellectual property rights as cases that require and do not require the condition of fault and damage (Kılıçoğlu, 2006, pp.97-101.)
According to this distinction and when Article 149 and the following articles of Turkish IP Law are examined, it is seen that the owner may apply to the court for the prevention of infringement, cessation of infringement, seizure of the property, establishment of the right of possession over the seized property and destruction of the property, without the requirement of fault and damage.
In case of trademark infringement and the third party is at fault, the trademark owner has the right to sue for pecuniary and non-pecuniary damages, restitution of the deprived earnings, and compensation for the damaged reputation. Again, the Turkish IP Law authorizes the author to request the announcement of the finalized decision in daily newspapers or similar means, whether or not the fault and compensation condition is sought (Kılıçoğlu, 2006, p.375)
D. Conclusion
The above explanations indicate that the scope of the rights and authorizations granted to the owner of a registered trademark is quite comprehensive. Again, in the event of a possible trademark infringement in Turkey, the possibilities and options offered to eliminate the trademark infringement are also diverse. In this sense, it should be noted that, as a rule, legal remedies for trademark infringement in Turkey are effective and enforceable. However, the availability of these remedies does not mean that the judicial process will be fast.
The determination of an effective and planned method in trademark infringement cases in Turkey will shorten the duration of the proceedings in infringement cases and achieve the desired results in a shorter time.
The primary purpose of trademark infringement actions in Turkey is to 'prevent the use of trademarks.' For this reason, in trademark infringement cases, it is of great importance to prove the existence of trademark infringement within the framework of the 'approximate proof rule' in the Turkish Code of Civil Procedure No. 6100 and thus to obtain an interim injunction to prevent the use of the trademark at the beginning of the proceedings.
First of all, it is of great importance to determine whether the action considered to be unfair is within the scope of trademark infringement. Although the Specialized Intellectual Property Courts will render the final decision on this issue, this situation should be carefully and meticulously examined and evaluated before filing a lawsuit. For example, if an act that is thought to constitute trademark infringement is an act that is not in commercial life and/or has no commercial effect, there may be no infringement of the trademark right.
Despite the fact that there is an act constituting infringement of the trademark right, there may be some circumstances that justify this action. (For example, the conditions of loss of rights may have arisen due to silence in the context of trademark infringement. Or, in the concrete case, the alleged infringing person may have a priority right on the trademark in question, or the person may have a vested right in the relevant sign, etc.) It is thus crucial to assess the case objectively and in the context of the prevailing circumstances.
Determining which steps to take at the beginning of the process after these determinations is equally vital. Merely to concretize with some examples, the acceptance of claims for compensation for deprived earnings and reputational damages requires clear and unambiguous proof that the damage has been caused by the act of infringement of the trademark right. Failure to prove these allegations during the proceedings may result in claims for damages not being awarded the expected amount. Again, if it is foreseen that the infringer does not export abroad, trying to prevent these acts before the trial will prolong the process.
Therefore, due planning in preventing the trademark infringement process will ensure more effective trademark protection. 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