Trademark rights holders often make significant investments and promotional activities to increase the awareness of their brands. In the meanwhile, well-known brands are used by malicious third parties to gain unfair advantage.

These people are infringing on the trademark right mostly by imitating the trademark or using the trademark in their own products without the consent of the trademark owner. At this point, the owner of the trademark can prevent the use of his trademark by malicious people by applying the legal protection methods provided exclusively by the law.

• Using the trademark in the ways specified in Article 7 of the Law without the consent of the trademark owner
• To imitate the trademark by using the trademark or an indistinguishable likeness without the permission of the trademark owner
• To sell, to distribute, trade, import, export, hold for commercial purposes or make a proposal to conclude a contract for this product bearing the trademark used by infringement even though they know or should know that the trademark is imitated by using the trademark or its indistinguishable likeness.
• Extending the rights granted by the trademark owner through license or transferring these rights to third parties without permission

• What claims can the owner of the infringed trademark demand from the court?

Pursuant to paragraph 1 of article 149 under the title of “Common Provisions” in the First Part of the Fifth Book of the Industrial Property Law, the right owner whose industrial property right has been infringed may make the following demands from the court:

• Determining whether the act is infringement or not.
• Prevention of possible infringement.
• Stopping the acts of infringement.
• Compensation for material and moral damage by abolishing the infringement.
• Seizing products that constitute infringement or requiring punishment, and tools such as devices and machinery used exclusively in their production, in a way that does not prevent the production of other products other than the products subject to infringement.
• Recognition of the right of ownership over the confiscated products, devices and machines pursuant to subparagraph (d)
• Taking measures to prevent the continuation of the infringement, changing the shape of the confiscated products and vehicles such as devices and machinery, erasing the brands on them or destroying them if it is unavoidable in order to prevent infringement of industrial property rights, especially at the expense of the infringer.
• In case there is a just cause or interest, the final decision shall be announced in the daily newspaper or similar means, in whole or in summary, at the expense of the other party, or communicated to the relevant parties.

In this context, Article 159/2 of the Industrial property law has ruled that the precautionary measures should include the measures specified below in particular.

✔ It may decide to prevent and stop the acts constituting infringement of the plaintiff’s industrial property right. This includes; the production, packaging, stockpiling, selling, taking orders and preparing for all these acts of goods or services bearing the subject mark.
✔ A precautionary measure may be ordered in the form of confiscation and storage of imported products produced by infringing on trademark rights. These products can be confiscated anywhere within the borders of Turkey, as well as in customs, free ports or regions.
✔ It may be decided to provide a guarantee in terms of compensation for any damage.

The seizure measure at the customs in Article 159 of the Industrial property law is stated to protect the interests of the trademark owner. In this context, for example, it is possible to seize the counterfeit branded products at the customs, and the seizure is carried out by the relevant customs directorates upon the request of the right holder or his representative.

It is obligatory to file a lawsuit or take a precautionary decision from the court within ten days from the date of notification of the seizure decision. Otherwise, the confiscation decision of the administration will be eliminated. According to the regulation in the Customs Law, this period is three working days for the confiscated goods that are perishable.

In this context, the detection cases stipulated in Industrial property law are the request for the determination of the evidence and the determination of the infringement action.

Pursuant to Article 149 of the same law, the purpose of determining the evidence is to collect and evaluate the evidence and, according to the result, to evaluate whether there is infringement according to Article 29 of the same law and Article 7 to which the same article refers.

However, it should be noted that this lawsuit cannot be filed by a person against whom a lawsuit has been filed for infringement of the trademark right. It cannot be invoked as a counterclaim. Since the existence of the infringement will already be discussed in the lawsuit filed due to infringement, this person has no interest in filing a negative declaratory action.

Antalya lawyer Ceren Topcu İncetaban and her Antalya Law Firm provide legal support and guide the clients in any negative declaratory action you are planning to take.

In order to open this case, the fault of the perpetrator or even the existence of damage is not sought. In this context, a lawsuit can be filed not only after the infringement has occurred, but also to stop an infringement that has not yet occurred but is likely to occur in the future.

Further, pursuant to Article 150/2 of the law, in case the reputation of the trademark is damaged as a result of the abuse or production of the products and services subject to the right by the infringer, the supply of products produced in this way or placing them on the market in an inappropriate manner, additional compensation may be claimed for this reason by the trademark owner.

With English speaking lawyers who are experts in intellectual property law, ALFA Law and Consultancy and Antalya Lawyer Ceren Topcu İncetaban provide comprehensive support in the formation of appropriate claims and litigation.

The Authorized Court has an optional power, and the competent court in civil lawsuits to be filed by the trademark owner against third parties is the plaintiff’s domicile or the court of the place where the unlawful act took place or the effects of this act were seen.

If the plaintiff does not have a domicile in Turkey, the competent court is the court where the registered attorney’s workplace is located at the date of the lawsuit, and if the attorney’s registration has been deleted, the court is located at the headquarters of the Institution.

Since trademark infringement is also a tort, the statute of limitations for wrongful action in the Turkish Code of Obligations will be applied in civil lawsuits. Accordingly, the owner of the trademark right will be able to file the aforementioned lawsuits within 2 years, and probably within 10 years, after learning about the cases of infringement of the trademark right and the person or persons who carried out these cases.

However, if the act of trademark infringement is also defined as a crime in the law and a longer statute of limitations is stipulated in the criminal laws, these periods will be taken into account in the lawsuits to be filed. If a lawsuit is not filed within these periods specified in the law, the statute of limitations will expire

Antalya lawyer Ceren Topcu İncetaban and her Antalya law firm provide understandable legal services of high quality in cases of trademark registration, protection and trademark infringement. Do not hesitate to contact us for your questions regarding all areas of Intellectual Property Law.