A legislative proposal was very recently presented to the Turkish Grand National Assembly on November 13, 2018. (Legislative proposal number: E.2/1286) Although the title of this proposal had no relation with intellectual property law, some of the proposed arrangements are directly related to Intellectual Property rights and some IP lawsuits.
The preamble of articles between 20 and 23 states that mediation is being regulated as a legal obligation prior to bringing an action for debt claim and compensation which are arranged in article 4 of 6102 numbered Turkish Commercial Code. Paragraph “d” of article 4 of 6102 numbered Turkish Commercial Code states that civil lawsuits arise from intellectual property legislation shall be regarded as a commercial case. Thus, if this legislative proposal is to be accepted, mediation is going to be the condition for litigation for IP related debt claim and compensation demands.
As a condition for litigation, the mediation institution entered our law practices for the first time under the Law on Labor Courts No.7036 in Turkey on January 2018. It is officially alleged that these developments have a positive effect on the legal system and that the number of labor lawsuits decreased significantly after these amendments.
This assumption is open to debate and it needs to be discussed and evaluated thoroughly with the participation of all interested parties via strong, supportive and objective statistical data. It is further believed that within this context, the pros and cons of the mediation should also be evaluated therein. Provided that the parties' wills in this direction are well-intentioned and constructive, the mediation institution is considered to have an extremely limited contribution only in terms of the debt claims.
The main feature of both intellectual and industrial property rights is that the owner of these rights is all vested in some exclusive rights in the event of infringement by third parties. That is to say, the proprietor of IPRs has the sole authority to take some legal actions against the infringing parties.
In particular, in cases of infringement, before a lawsuit is filed and in order to be able to relinquish responsibility to the infringer, the infringement itself is notified. Sending a warning letter or filing a declaratory action is the most common way to achieve this goal. In most cases, the infringer knows that he has used the intellectual property rights in question illegally and is aware of the consequences. In other words, infringement oriented lawsuits are often being filed against third parties who are acting in bad faith. In most of IP infringement related mediation attempts, it is a known fact that infringing party refuses even to compensate official fees made by IPRs owners up to that date.
At this point, particularly in cases of infringement involving claims for compensation, making mediation a condition for litigation, in most cases, would constitute an advantage for the person who acts in bad faith. In this respect, it will not be unfair to allege that the proposal would cause a prolongation in the process, which obviously is not advancement but a step backward from the current situation.
Intellectual property is an interdisciplinary field in which specialization is a prerequisite. In addition to legal knowledge, institutions regarding each IP asset, precedents, developments, improvements on a national and international scale need to be traced and well understood.
Whereas, according to article 20/2-b of the Law on Mediation in Civil Disputes no.6325, the mediator must be a graduate of the law school.
The Intellectual Property Courts, in general, appoint a panel of expert to submit reports about each case where the subject of the dispute requires specialization. In addition to these issues, in order to reach an equitable solution to the disputes related to intellectual and industrial rights and to reach a fair result, and if the subject requires expertise, jurists and another expert in the subject sector is also being appointed.
Currently, it is unlikely to claim that most of our esteemed colleagues appointed as mediators have this degree of expertise in the field of Intellectual Property.
With only one example, let us assume that an inventor of a patentable invention, which is pursuant to 6769 numbered Industrial Property Code, asks for charges to the person who will use the patent relating to the invention. Let's also assume that the parties cannot agree. To what extent is it possible for a mediator who does not have sufficient technical knowledge and background to this subject and who is originally a jurist to reach a conclusion within the scope of the claims and defenses of the parties? Will it be possible for the mediator to carry out this process in the sense that the law is looking for and reconciling the parties? Again, before filing the infringement case, would it be possible for a mediator to determine whether the amount of compensation requested would be fair or not and find a solution in the claims of compensation who continued the unjustified use?
For this reason, what should be done in our opinion would be to exclude all IP related lawsuits from the scope of obligatory mediation. If the law proposal would be adopted as it is, it will only become a process that must be followed which will not serve any purpose other than time and expense. Let’s wait and see what the result is going to be…
KIRCI Law Office
Attorney at Law
Trademark & Patent Attorney