1. Who may apply?
The persons entitled to protection of their trade and service marks and thereby qualified to obtain trademark registration are natural or legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Republic of Turkey, or the persons entitled to apply according to the provisions of the Paris Convention or the TRIPS Agreement.
On the other hand, the persons, other than those mentioned above, who are nationals of the states, which provide legal or de facto protection to the nationals of Turkey shall enjoy, according to the principle of reciprocity, trademark protection in Turkey.
2. What may and may not be protected and registered as a trademark ?
According to Article 5 of the Decree Law no.556 on the protection of Trade & Service Marks any kind of signs such as words (including person names) design, letters, numbers as well as product shapes and packages are registrable provided that they are distinctive and are capable of being represented graphically.
The definition of the trademark in the Decree Law no. 556 is quite large – the formulation of which is almost identical to the Article 2 of the EC Trademark Directive – and there is no numerus clausus as to the kind of sign, which may be registered as a trademark. Therefore, theoretically at least, the law does not restrain the registrability of – non-conventional marks such as – 2D/3D designs, colors, sound, scents, holograms and animations / motions.
However in practice, though the 3D or slogan marks can be registered, a single color whether in abstract or represented over the picture of a 2D/3D object is not registrable according to the established jurisprudence of the Supreme Court, unless it has obtained acquired distinctiveness via use.
Signs, which cannot be registered on absolute grounds, are listed on the Article 7 of the Decree Law no. 556;
- Signs that are devoid of distinctive character
- Signs that are identical or indistinguishably similar to prior trademark application and/or registration covering identical or indistinguishably similar goods/services (Please refer to the Question 5)
- Signs which serve in trade to indicate the kind, characteristics quality, quantity, intended purpose, value, geographical origin, or designate the time of production of the goods or of rendering of the service or other characteristics of goods or services (descriptive signs)
- Signs used to distinguish specific groups of craftsmen, professions or tradesmen or have become customary in the current and established practices of the trade. (descriptive signs)
- Signs giving substantial value or its shape to the product which shape is a result of the nature of the concerned product or is conditioned by the necessity of obtaining a given technical result.
- Signs which are of such a nature as to deceive the public, such as to the nature, quality, place of production or geographical origin of the goods and services,
- Signs which refer to religious symbols and values,
- Signs which are contrary to public order and to accepted principles of morality.
Signs in the sense of points 1, 2 and 4 can be eligible to trademark protection provided that they have acquired distinctive character in respect of the goods/services for which they are to be registered as of the use made thereof prior to the date of application. According to the practice the prior use should rather be a local use.
On the other hand, apart from ordinary trade and service marks, the trademark law allows registration of the guarantee (certification) marks and collective marks for goods and/or services.
3. How long does it typically take, and how much does it typically cost to obtain a trademark registration?
The registration of a straightforward trademark application - provided there is no (ex-officio) rejection / (third party's) opposition - may take on average 10 - 15 months.
Upon application, the trademark application is firstly examined by the Turkish Patent Institute (T.P.I) approximately for 3 - 6 months within the framework of the absolute grounds for refusal.
In the absence of an ex-officio rejection, the trademark will be deemed as qualified for the registration and will then be published in the Official Trademark Bulletin for opposition purposes by third parties. The opposition period of 3 months runs from the date of the publication of the Official Bulletin.
After the opposition period, the T.P.I. will require the completion of the registration formalities such as the payment of the registration fees and submission of outstanding documents, if any, within 2 months. The registration certificate is issued within 3 months following the completion of the registration formalities.
Attorney and official fees of the application and the registration of a problem free trademark covering one class amounts to €950.- and approximately € 160.- is to be expected for each additional class in excess of one.
4. What classification system is followed, and what goods or services may be claimed?
The International Nice Classification System is applied in Turkey as from 1995. Currently the 10th edition of Nice Classification is applied in respect of the goods and services for trade/service mark registration purposes.
Upon the ratification of the Nice Classification system, the T.P.I. has prepared a national sub-classification system on the basis of the International Nice Classification. According to the sub-classification system each International Nice Class is divided into several sub-classes each of which are composed of the list of “indistinguishably” (please refer to the next question) similar goods or services.
On the other hand, even though an application can be filed for the Nice Class headings, the T.P.I. may request that the general headings be specified as of the national sub-class headings, the use of which is strongly recommended for this very reason.
5. Are the applications examined for conflicts with other trademarks? What is the procedure followed in the Trademark Office?
During the ex-officio examination phase on absolute grounds, T.P.I. examines whether the trademark applied for is in conflict with identical / nearly identical prior application(s) and registration(s) in identical / similar classes.
In this regard, according to the provisions of Article 7/1 letter (b) of the Decree-Law no. 556, trademarks will be rejected if they are “identical or indistinguishably similar to a trademark that has been registered or for which a registration application has been made in connection with goods or services that are identical or indistinguishable.”
In order to be able to determine “indistinguishably” similar goods/services, T.P.I. uses the national sub-classification system whereby only the goods/services listed in the same sub-class are considered as being identical or indistinguishable in the sense of the absolute grounds for rejection.
The Examiner in charge of the file will undertake a search through the database of the T.P.I. and will determine the prior trademarks that are identical or almost identical and covering the same goods / services. Once these marks are determined, the Examiner rejects the application only for the goods/services falling within the same sub-class with those of the prior trademarks.
6. Does use of a trademark or service mark have to be claimed before a registration is granted? Does the proof of use have to be submitted? If the registration is granted without the use, is there is a time by which use must begin to maintain the registration?
According to the trademark law and practice in Turkey, there is no obligation to claim the use of the mark before a registration is granted. Furthermore, the submission of proof of use at the end of the grace period (of five years) or during the renewal is not requested by the Turkish Patent Institute.
According to the Decree-Law No. 556, if, within a period of five years following the registration, the trademark has not been put to use without a justifiable/legitimate reason or if the use has been suspended during an uninterrupted period of five years, the trademark shall be repealed.
However, the trademark registration is not automatically invalidated in case the mark is not used at the end of the grace period but will be vulnerable to cancellation through a court action on the ground of non-use within the statutory period. The cancellation due to non-use is not within the remit of the Turkish Patent Institute and therefore cannot be requested from it.
7. Is there an appeal process if the application is denied?
In case the application is not held registrable and is refused on absolute grounds during the ex-officio examination phase it is possible to lodge an objection against the decision of refusal before the Higher Council of Examination and Evaluation (appeal body of the T.P.I) within 2 months (this period cannot be extended) as from the notification of that decision.
The Higher Council will re-examine the application and issue its final decision on the objection approximately 10 to 14 months after objection is lodged. In the event that the Higher Council accepts the objection, the application will be published for opposition purposes. Where the objection is denied and the decision of refusal upheld, a cancellation action against the final decision of refusal may be instituted before the Specialized Ankara Court of Intellectual and Industrial Property Rights.
8. May a third party oppose registration or seek cancellation of a trademark or service mark? What are the procedures?
Third parties may oppose a trademark application during the 3 months following the publication in the Official Trademark Bulletin.
An opposition may be filed on the basis of absolute grounds for refusal (Please refer to the Question 2) and or relative grounds for refusal that are set forth in the Article 8 of the Decree Law no. 556:
- trademark applied for registration is identical to a prior trademark covering identical goods/services,
- the trademark applied for is similar to a prior trademark covering similar goods/services and there is likelihood of confusion resulting from these similarities.
- the trademark is filed by an agent or a representative of the proprietor of the trademark in his own name without the proprietor's consent and without a valid justification.
- A trademark applied for is identical or similar to a prior trademark covering different goods/services but the prior mark has a reputation and due to this reputation the use without due cause of trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the prior trademark.
- the right to sign, whether non-registered trademark or another sign used in trade, is acquired prior to the date of filing of the trademark applied for.
- the trademark applied contains the personal name, photograph, copyright, or any industrial property rights of third parties.
- the trademark applied for which is identical or similar to a collective or a guarantee mark and where three years from the date of expiry of the collective or of the guarantee mark have not passed
- the trademark applied for is identical similar to a prior trademark covering identical or similar goods/services and where two years from the date of expiry registration due to non-renewal have not passed and in case of active use
The opposition should be in writing and must indicate the grounds on which it is based.
Upon admission of the opposition, the T.P.I. may notify the applicant of the opposition by inviting him to submit its observation. The applicant is not required to file a counter-statement and failure to do so will not adversely affect its rights to object to the decision of the T.P.I.
The T.P.I will then decide within approximately 6 – 8 months period whether to refuse or accept the opposition. The decision on the opposition may be appealed by the applicant and/or by the opponent through administrative appeal procedure before the Higher Council within 2 months.
The Higher Council will re-examine the opposition and issue its definitive decision on the opposition approximately 6 to 8 months after appeal is filed.
The parties who are not satisfied by the final decision of the Higher Council may institute an action against it within 2 months as from the notification of the decision before the Specialized Ankara Court of Intellectual and Industrial Property Rights. However, in case where the Higher Council rejects the opposition, the application will mature into registration despite an eventual ongoing court action against the T.P.I.
9. How long does a registration last and what is required to maintain a registration.
A Turkish trademark registration is valid for 10 years as from the application date and may be indefinitely renewed for consecutive 10-year periods. The renewals can be filed within the 6 months prior to the expiration of the 10-year period or during 6 months following the expiration of the registration by the payment of surtax, covering all classes registered.
It is not required to submit proof of use upon renewal.
10. What are the benefits of registration?
According to the Article 6 of the Decree Law no. 556, the trademark protection is obtained through registration only - that is to say that the registration is constitutive of the right. Therefore in general, it is necessary to obtain a registration in order to benefit from the Trademark Law in Turkey.
However the law provides two exceptions to this principle whereby it is possible to oppose or institute a cancellation action without registration against an identical or similar registered trademark on the basis of the Article 42 of the Decree Law no. 556 which provides that:
By virtue of the Article 8 paragraph 3 of the Decree Law no. 556, the proprietor of a non-registered trademark may ask to the Court the invalidation of a registration provided that the rights to the sign were acquired prior to the date of the registration and/or,
In practice, the T.P.I. and/or the Courts require that longstanding prior use in Turkey or notoriety to the Turkish consumer together with worldwide use and reputation be evidenced substantially on a documentary basis.
11. What can be assigned – trademark with goodwill, without goodwill, all of the goods and services, some of the goods or services ? Must other business assets be assigned to make it a valid transaction ?
In accordance with Article 16 of Decree Law No. 556, a trademark may be assigned with or without goodwill. The law is silent on the assignment with goodwill or the assignment of the whole business to which it belongs. Accordingly, it is also not mandatory to assign other business assets simultaneously with the trademark and a trademark may be independently assigned to another legal entity.
A trademark may be assigned totally or for a specific group of goods and / or services.
There is no time period to be respected for the recordal of the assignment before the Turkish Patent Institute.
12. What documents are required ?
A Deed of Assignment, containing at least the trademark and the application/registration number of the trademark(s) to be assigned, executed by both the assignor and assignee is required. Said Deed needs also to be notarially certified in terms of the authority of the person(s) executing the Deed in capacity of the assignee or assignor party. In the event of an partial assignment, the Deed needs also to comprise the specification of goods/services of the trademark(s) to be assigned.
A Power of Attorney, simply signed in the name of the assignee company is also required.
The assignment is completed with the issuance of an administrative letter by the administration.
13. Must the assignment be recorded for validity ?
The recordal of an assignment is not a condition for the validity of the assignment, which carries legal effect between the parties even it is not recorded.
However, the recordal of the assignment will ensure the legal effect of the agreement against third parties in good faith as in such case the recordal of assignment is published on the Official Trademark Gazette.
In the event of any infringement of the trademark after the assignment, the court action may only be instituted in the name of registered owner. Also any opposition procedure against a similar trademark may be lodged in the name of the registered owner of the trademark.
14. Are security interests recognised ?
It is possible to record security interests on a trademark - independently of the undertaking - with the Turkish Patent Institute. On request of one of the parties, the placing of security shall be entered in the register and published whereas the levy of execution is ex-officio published in the Official Trademark Bulletin.
15. What words or symbols can be used to indicate trademark use or registration ? Do these words or symbols have to be used ? What are the benefits of using them and the risk of not using them ?
The marking of the articles and/or the packaging in that the concerned trademark is registered is not mandatory since the Decree Law no.556 on Trade/Service does not contain any provisions pertaining to the marking requirements. It is however still highly advisable to do so as in case of litigation, the situation resulting from the marking could constitute the basis of a further claim in terms of unfair competition since the marking of goods/services to refer to signs, trademarks or other rights and titles not owned by the third parties using them on their products is an act of unfair competition according to the general unfair competition provisions of the Turkish Code of Commerce.
It is to be noted that the ® sign is widely used in Turkey to indicate a trademark registered in this country. Accordingly, this sign can certainly be used to indicate that a trademark is registered in this country and under protection as a registered trademark. Please further note that the sign “T.M.” standing for “TESCÝLLÝ MARKA” (meaning registered trademark) is also extensively used in Turkey to designate a registered trademark.
However, the acronym “T.M.” is used also for designating the term “TÜRK MALI” (meaning Made in Turkey). For these reasons we believe it is totally improper to use the acronym “T.M.” for designating in Turkey the unregistered trademarks with the belief that the consumers in Turkey will understand it as indicating a trademark owned but not registered.
16. What types of legal or administrative proceedings are available for enforcing trademark rights against an infringer, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark enforcement?
It is possible to enforce trademark rights against an infringer through civil and criminal proceedings and the suspension of release proceedings before the Customs.
The civil actions for trademark infringement are to be filed before the Specialized Civil Courts for Intellectual and Industrial Rights in the cities where they are established namely in Istanbul, Ankara, Ýzmir. In other cities of Turkey the 3rd Criminal or Civil Court will operate as the Specialized Court for IP matters. In the scope of this action, it is possible to request an interlocutory injunction for stopping the infringing acts and seizing the counterfeit products
There is no provision regarding trademark infringement in the Turkish Criminal Code. However, according to the new article 61A of the Turkish Decree Law no.556 on Trade/Service Marks set by the Law no.5194 dated 26.06.2004, trademark infringement also consist of a criminal offence to be prosecuted upon complaint of the right holder before the Public Prosecutor.
The customs authorities can also act ex-officio in the prevention of the probable trademark infringement by importation or exportation of the counterfeit goods or upon request of the right holder. However, failure in instituting a court action and obtaining a Preliminary injuction decision from the Court before the Specialized Court for Intellectual and Industrial Rights within ten work days as of the notification of the suspension decision of customs authorities, will result in the release of the goods from the customs custody.
It is possible to file a centralized application through the Head of Customs online database for the monitoring of the counterfeit products. Such applications for the good infringing IP rights shall be filed through the database as a central application. The right holder will be able to activate all the Customs for up to one year.
17. What is the format of the infringement proceeding? Is discovery allowed? Live testimony? Experts? Who decides the case? How long does the proceeding typically last? If there is a criminal enforcement mechanism, what is that procedure?
The proceedings are initiated by filing the writ of summons including all the claims of the plaintiff to the Court, which is notified to the defendant. According to the Turkish Civil Procedural Law the period set for replying to the action and for instituting any counteraction is 2 weeks as of the notification date of the action to the defendant unless an extension is requested within the same period. The Courts regularly accept such requests and extend the deadline.
Upon two exchanges of writs by the parties the Court sets a date for the preliminary examination hearing, where the parties declares the merits of their cases and the Court determines the merits of dispute between the parties.
Within 2 weeks as of the preliminary examination hearing, the parties should submit the evidences supporting their claims to the court. Although the parties may request from the Court to refer to live testimony of a witness, it is the court’s discretionary power to accept such request.
One particular characteristic of the civil and criminal proceedings, so far, despite the establishment of the Specialized Courts on IP matter, is the over reliance by the Courts on expert opinions rendered by the (Panel of) Expert(s) appointed by the court to report on matters such as determination of infringement, similarity, dilution, bad faith, damages / compensation etc.
Neither the Decree-Law no. 556 nor the procedural legislation provide and organizes discovery as such. Instead, before instituting the infringement court actions, the determination of evidences relating to the infringing acts of the adverse party may be requested by filing a non-adversarial action in determination of evidence/facts as to the existence of a situation on the basis of the elements of proof submitted by the plaintiff to the court. Within this context it is possible to file an action for the declaration of non-infringement for determining that a given act/situation does not constitute an act of trademark infringement.
Still, although it is not a common practice, the Court has the right to decide to have a discovery and visit the premises where the infringement takes place.
A trademark infringement action would typically last 12-18 months up to the decision of 1st Instance where the appeal phase before the Supreme Court would take approximately 1 year.
However, the time length of an enforcement action may be conditioned by the following factors:
-the workload of the competent court of jurisdiction and the intervals between the hearings
-the domicile of the defendant-where the defendant is not domiciled in Turkey, the notification of the action through diplomatic channels may take at least 6 months
-the referral of the case to the experts-the parties are entitled to file their objections to the conclusions of the experts and it is the court’s discretionary decision to refer back to the experts for the establishment of an additional report which will obviously lengthen the proceedings.
Criminal proceedings are triggered by a complaint filed before the Public Prosecutor who, if convinced of the infringement, would refer the complaint to the competent criminal court, which will order the police raid for the seizure of the counterfeits. Provided that the police raid results in the seizure of counterfeits, the Public Prosecutor institutes directly the criminal action before the Criminal Court. It should be stressed that, the criminal action is a public action and the trademark owner can only be joining to such an action.
18. What is the burden of proof to establish infringement or dilution?
Article 61 of the Decree-Law no.556 determines the different acts, which are considered as trademark infringement including the dilution of the trademark. Accordingly, the burden of proof, which as the general rule rests with the plaintiff, varies depending on the nature of the infringing act and the elements of the tort forming each infringing act.
In case of an infringement action, it is generally necessary to provide the court with documentation evidencing the existence of the trademark right and of the infringing acts of the defendant. Where the infringing act consists of counterfeiting, samples of fake products and the documents attesting their link with the defendant as well as a sample of the genuine product is to be submitted to the Court.
In case of dilution where according to the relevant article 8 Paragraph 4 of the Decree Law no.556 the elements of tort consist of "reputation", "unfair advantage", "harm to distinctive character" and "harm to reputation" , in the practice, it is mainly required to evidence the notoriety of the infringed trademark. The notoriety of a trademark is to be evidenced on the basis of the list of criteria established by the Turkish Patent Institute. The registration of the trademark as a well known trademark before the Turkish Patent Institute may be of determining importance.
There is no established jurisprudence as to how the other element of tort are to be evidenced in case of dilution. The courts usually consider these elements upon evidencing the notoriety of a trademark and on the basis of the particularities of each concrete case.
However, the bad faith of the applicant constitutes valuable evidence in attesting the intention to take unfair advantage of the reputation. According to the settled case law, the Supreme Court considers that a merchant shall act with professional diligence/care in accordance with the provisions of the Turkish Code of Commerce and states that a merchant should have to be aware of a well known trademark and all development in his business area and that a merchant cannot justify the filing of a well known trademark by putting forward that he/she was not aware of the of the existence of such trademark.
It is important to further note that article 65 of the Decree Law provides an exception to the general principle according to which the burden of proof rests with by the plaintiff in that "the proprietor of a trademark can request from the infringing party the documents related with the use without his consent of the trademark, for the evaluation of the damage suffered resulting from the infringement of the trademark".
19. Who is entitled to seek a remedy (trademark owner, licensee, etc) and under what conditions? Who has standing to bring a criminal complaint?
According to the Article 9 of the Decree-Law, the proprietor of a trademark shall be entitled to prevent all third parties not having his consent from using the trademark.
Additionally, according to the Article 21, unless provided otherwise by the contract, the holder of an exclusive license may, in the case of an infringement of the trademark rights, institute in his own name all legal proceedings that have been made available to the proprietor of the trademark by this Decree-Law.
Holders of non-exclusive licenses do not have the right to institute legal proceedings. In the case of an infringement, the holder of a (non-exclusive) license, not having the right to institute proceedings according to paragraph six, may give notice, through a notary public, requesting the proprietor of the trademark to institute such proceedings as required. In the event that the proprietor of the trademark refuses to initiate or within three months of the reception of the notice fails to institute proceedings, the (non-exclusive) license holder shall have the right to institute proceedings in his own name, by enclosing thereto his notice (to the proprietor) in this regard. The licensee may, in the face of likelihood of serious damage (where elapsing of time cannot be remedied), request the court to issue an injunction for precautionary measures without waiting until the elapsing of said (3 months) period. The licensee who has instituted proceedings shall notify the proprietor of the trademark that the proceedings have been instituted.
Accordingly the right to institute the civil and criminal action belongs to the person whose trademark right has been infringed and to the holder of an exclusive license who is entitled to institute all legal proceedings available under the Turkish Trademark Act and the holder of a non-exclusive license under special circumstances referred above.
Additionally the criminal action may be initiated upon complaint filed by the Institute and/or by the Consumer Associations and other bodies such as the Chamber of Commerce and Industry, Chamber of Commerce, the Union of Chambers and Commodity Exchange of Turkey, the Tradesman and Artisans Association under specific conditions such as false declaration with respect to true identity of the trademark right holder, or of using to the same effect writings, signs or expressions in the advertisements and commercials at the published and visual media without being the rightful proprietor of the trademark or after the expiry of the protection term or after the invalidation of the trademark right or after the termination of the trademark right.
20. Can activities that take place outside the country support a charge of infringement or dilution?
Activities that take place outside the country can not constitute the basis of the infringement or dilution action but can certainly support such action whether in view of the determination of the notoriety and/or the bad faith of the infringer.
21. What, if any, discovery devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
As already mentioned under point 17 parag. 4 the Turkish trademark and procedural legislation does not provide and organize discovery procedures and devices as such.
Considering that the Turkish legislation does not also provide and remedy along the lines of “saisie description” as exists in France, for determining and evidencing the infringement in situ, the only remedy available is the action in determination of evidence/fact (action en constatation, Feststellungsklage) or negatively, the action for the declaration of non-infringement.
Before instituting the above referred main infringement action, the determination of evidences relating to the infringing acts of the adverse party may be requested by filing a specific action in determination of evidence. Within the context of the action in determination of evidences, the Court would refer the case to the experts for the establishment of a report if affirmative will serve as evidence within the context of the trademark infringement caused by the adverse party. The court may ask the experts to visit the premises of the infringing party for determining the infringement on site.
Moreover, the police raid, which is ordered in the scope to the criminal proceeding, provides the possibility to collect evidences confirming the infringement.
22. What is the typical time frame for an infringement or dilution action, including trial preparation, trial and appeal?
The time frame for the preparation of a trial for infringement including the gathering of the necessary information and documentary evidences and the preparation of the initial petition may vary from a few days to a few months depending on the circumstances and complexity of the case and the availability of the evidences proving the infringement.
The preparation of a dilution action where the information and documents on the notoriety are to be examined and evaluated in advance to determine the chances of success of an action shall consist at least of a month.
Where interlocutory injunctions are required and therefore the supporting documents shall be submitted with the initial petition along with their notarized translations, the time frame for the preparation of the trial may be extended.
The decision of the Specialized Civil Court is not to be issued before 18-24 months as of the institution of the action depending on the number of petitions exchanged, the number of experts report issued etc. whereby in case of an appeal before the Supreme Court, another year is to be considered.
Likewise, the criminal action instituted by the Public Prosecutor is to be judged within 2 years as of its institution but contrary to the civil proceedings, our previous experiences have shown that the appeals before the Criminal Chamber of the Supreme Court are not finalized in less than 2 years.
23. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
The typical official costs to be associated with an infringement (civil) action are:
-The official fees to be paid to the court. The level of these fees depends on the level of the compensation claimed. Please note that ‰ 13,5 of the compensation claimed is to be paid to the court as official fee with the filing of the action.
-The expert’s fees; these fees is directly paid to the court and depend on the number of expert’s nominated by the court. Typically the Judge will appoint 3 experts and the costs would be around 500-700 TRY.- (US$ 180-250.-) per expert.
-The guarantee payment- the injunctive measures are obtained against a guarantee payment determined by the Court as of its discretionary power. It is unfortunately not possible to provide even a rough estimation as the level of the guarantee is directly linked with the possible damages that the defendant may be confronted with. Should the action finalize in favor of the plaintiff, the guarantee will be released/reimbursed.
-The translation and legalization costs- the supporting documents which are in foreign language shall be submitted to the Court together with the notarially legalized Turkish translations.
-Attorney fees: According to the general practice, the attorney fees in relation to trademark enforcement matters are usually quoted on time-spent basis. Therefore, the attorney fees of a trademark infringement action would greatly depend on the complexity of the subject matter. The attorney cost in a straightforward infringement case would vary between €10.000.- to €15.000 up to the decision of 1st instance and €3.000.- to €5.000.- for the appeal phase.
24. What avenues of appeal are available?
The first instance decisions of the civil courts concerning the trademark infringement/unfair competition, the cancellation of a trademark, the withdrawal of a Turkish Patent Institute’s decision can be appealed before the Supreme Court within 15 days as of the notification of the court decision to the parties. Upon the Supreme Court’s decision, the party which is not satisfied with the decision may further ask for reconsideration of the decision before the Supreme Court within 15 days as of the notification of the decision.
Likewise the decisions of the criminal courts concerning the trademark infringement can be appealed before the Supreme Court within 7 days as of the last hearing wherein the judgment is finalized.
25. What defences are available to a charge of infringement or dilution?
In the actions, concerning the similarity the defendants can argue the dissimilarity of the trademarks or the dissimilarity of the goods covered by the trademarks. In the actions based on the notoriety and dilution where the plaintiff’s trademark has not been previously recognized as a well known trademark either by the Turkish Patent Institute or a Turkish court, the defendant can argue that the plaintiff’s trademark does not enjoy protection as a well known protection and may request that this fact be evidenced before the court.
In the infringement actions, should the defendant owns a registration for the conflicting trademark he can ask the court to reject the claims for infringement or compensation in the view of his existing trademark registration since the court as a settled practice does not rule to the infringement or compensation unless the defendant’s registration is duly invalidated through a court action and decision.
If the plaintiff’s trademark on which the action is based has not been used within the statutory period of 5 years, the defendant may ask the court to rule to the invalidation of the plaintiff’s trademark by filing a counter invalidation action.
In the actions where the plaintiff institutes the action after a long silence period the defendant can claim that the plaintiff has instituted the action after the acquiescence period. The acquiescence period for the cancellation actions based on dilution is 5 year whereas this term is not applied if the defendant’s registration has been obtained in bad faith. Neither the Decree Law nor the case law have specified an acquiescence period for the actions instituted on the grounds remaining other than dilution however this term is to be determined according to the circumstances of each action.
26. What remedies are available to a successful party in an action for infringement or dilution? How is monetary relief apportioned? Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions? What criminal remedies exist?
The proprietor of a trademark whose rights are infringed may request the following remedies from the Court:
- the stopping of the acts of infringement,
- request compensation for material and moral damages incurred and for damages to the reputation of the trademark,
- request the confiscation of products and the equipment and machinery used to produce these products,
- ask for injunctive measures for preventing the continued infringement of rights, request the erasing of the trademark from the products and means/vehicles, or, where inevitable for the preclusion of acts of infringement, the destruction of the products,
- request the disclosure of the verdict by means of publication.
The plaintiff can ask for the following types of compensation;
- The moral damages can be requested if the infringer commits a heavy fault in the infringement. The court has a discretionary power in the assessment o such damages, it may either rule or not to such damages or it may lessen the amount requested by the plaintiff.
The material damages can also be requested. The material damages can be requested in accordance of one of the following three criteria cited in the Decree Law no. 556 on the trademarks:
- According to the income that the proprietor of the trademark might have possibly generated if the competition of the infringing party did not exist;
- According to the income generated by the infringing party from the use of the trademark;
- According to a license fee that would have been paid if the party infringing the trademark right would have lawfully utilized the trademark under a licensing contract.
- The plaintiff may request extra damages where the reputation of the trademark is harmed due to the bad or improper use of the trademark by the infringing party
It is possible to request injunctive measures within the scope of the civil proceedings by evidencing the danger of (imminent) trademark infringement, which may cause substantial damages and convincing the court in that such infringement will materialize with a high probability. The courts are conservative and have the discretion to refuse the claims of injunctive measures and can request the deposition of a guaranty amount for ordering such injunctions.
The injunction should be executed within 1 week as of the issuance of the decision by the Court. As the beginning of the 1 week period is not depending on the notification of the injunction decision but the issuance thereof, the destiny of the request should be followed up with the clerks office very closely.
The injunctive measures can be requested before or simultaneously with the civil action. Should the injunctive measures be requested before the institution of the civil action and the court favorably receives such request, the main civil action shall be instituted within 2 weeks days as of the date of the request of the plaintiff for the execution of the injunctive order. Otherwise, the order for injunctive measures will remain without effect.
Please note that Article 77 of the Decree Law No.556 provides that;
Injunctive measures shall be in nature to enable of securing fully the effectiveness of the judgment and particularly provide the following measures:
- stopping of the acts of infringement of the trademark rights of the plaintiff;
- injunction to seize within the borders of Turkey wherever they are seen/found, including the customs, free ports or free trade areas and to keep in judicial custody the goods produced or imported in infringement of trademark rights,
- ordering the placement of security/guarantee for damages as of the compensation claimed
The injunctive measures can be ordered ab initio with the filing of the action or of the action in determination of evidences/facts and should the defendants objection is not accepted, the injunctive measures will have a permanent effect until the finalization of the court action.
The trademark infringement being a criminal offence, in case of a legal prosecution the infringer can be convicted with imprisonment from 1 to 4 years, pecuniary fines from TRY 14,000 to TRY 46,000, ban of exercise from professional trade activity for one year, the closure of the infringer’s premises for one year. The seized counterfeits can be confiscated or destructed by the Court at the end of the criminal proceedings.
27. Are ADR techniques available and commonly used? What are the benefits and risks?
According to the Civil Procedural Law as well as Criminal Procedural Law, Courts have to to invite the parties for a settlement at the beginning of the trial. In fact, the civil Court has to encourage the parties to solve the matter through mediation and even the IP Court of Istanbul have been selected as pilot Courts for mediation and a Mediation Center has been established within the Court House. As the mediation allow both parties to put forward their real needs and intentions, it is more likely to settle the matter with the satisfaction of both parties through mediation.
As a general rule, the parties can reach to a settlement at any stage of the criminal or civil proceeding on their own discretion. As the offences concerning the trademark infringement being subject to the complaint of the right holder; the right holder can withdraw the complaint at any stage of the proceedings.
Article 36 Decree Law No. 556 provides the right to the Turkish Patent Institute to invite the parties for a settlement during the opposition procedure by stating that the “Institute, if it finds appropriate may invite the parties to make a settlement.” Likewise Article 213 of the Civil Procedural Law does also provide a right to the Judge to invite the parties for an amicable settlement. However, both Articles are not effectively applied in practice.
In this regard, it is important to also stress that Article 35/A of the Attorneys Act, provides the right to the attorneys of the parties to reach to a settlement before the institution of a civil action or before the first hearing in case of an instituted action wherein such case the articles of the settlement agreement can be registered with the court and be enforceable as a court decision.
UPDATE AND TRENDS
In May 2003, the Act No. 5000 concerning the duties of the Turkish Patent Institute has come into force wherein the Turkish Patent Institute has been appointed as the legal authority in charge of examining the application for the well-known status. The Turkish Patent Institute has started to evaluate the applications for well-known status and has already issued decisions in respect of the initially filed applications. The current decisions indicates that the Turkish Patent Institute grants a well known status for all goods and services or a well known status limited with the goods and services covered within the related business area. It is now expected that the Turkish Patent Institute will issue a regulation, which will indicate the implementation of the provisions concerning the granting of a well-known status.