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Updated: Jun 14

Under Turkish trademark law, the trademark proprietor has several legal remedies in case of infringement of the trade mark right by third parties. Pursuant to the Industrial Property Code No. 6769 (hereinafter referred to as IPC), the claims arising from the trademark right can be asserted through litigation as well as out-of-court procedures. In this article, we will provide information related to the various sorts of lawsuits stipulated in the afore-mentioned Code, where the trademark infringement occurs.

1- The Detection of Evidence or Action For Determination of Infringement

The person who is entitled to assert infringement of the trademark right may also request the court to determine the events that may be considered as infringement of the trademark right. For this purpose, the plaintiff must have a legal interest worthy of protection in the determination of the legal relationship as soon as possible. The actions for determination specified in the Code are the request for the detection of evidence and the action for the determination of the existence of infringement of the trademark right1 .

Article 149/1-a of the IPC regulates the claims of the right holders whose industrial property rights are infringed. The purpose of the request for detection of evidence to be filed pursuant to the said article is for the court to collect and evaluate the evidence. Accordingly, the court shall evaluate whether there is infringement in accordance with article 29 and article 7 of the IPC.

2- Action For Prevention of Possible Infringement

This claim is issued just before the infringement occurs or with a view to preventing the infringement that is likely to be repeated. With this action under article 149/1-b of the IPC, it is aimed to minimise the possible loss of rights and damages arising from infringement of the trademark right. While the acts of infringement are still in the preparatory phase, it is important to be granted this right of claim to avert the infringement of the trademark.

Firstly, there must be a peril or possibility of infringement, or provided that there is a high probability of recurrence, it may be said that there is a peril of infringement2 . For instance, this is the case if the registered trademark is imitated and the production of goods in which the imitation trademark will be printed has commenced.

The filing of this lawsuit is not subject to the fault of the infringer or the existence of peril to the right holder3 .

As long as the infringement continues, the statute of limitations for the claim in question does not expire.

3- Action For Stopping the Infringing Acts

The trademark proprietor may request the court to cease the infringement if the infringing acts have started and are continuing. For example, it is intended to stop the present infringement by acts, such as deleting the counterfeit trademark from the goods, halting the production that constitutes unlawfully use. In order for this lawsuit to be filed, the fault of the infringer and the damage of the trademark proprietor are not sought4 .

This action, which may be filed pursuant to article 149/1-c of the IPC, stops the infringement act that is in progress or for which preparations have been seriously undertaken. However, as long as the infringement continues, the statute of limitations shall not expire.

4- Action For Remedying The Infringement

The person whose trademark right has been infringed may request from the court to remedy the infringement; to eliminate the contradictions to law caused by the infringement, and to restore. In cases where this lawsuit is filed, the acts constituting infringement of the trademark right bear legal consequences. In other words, the trademarked goods constituting infringement of the trademark are sold in the market or exhibited at a fair, or the identical or similar trademark of a registered trademark is registered in the trade registry as a enterprise name or business name. In such circumstances, the purpose of this action is to eliminate this unlawfulness. To exemplify, the goods are recalled or the counterfeit trademarks thereon are deleted or removed, or the trade registry record is deleted or amended5 .

The difference between this action and the action for stopping the infringing acts is that this action aims at removing the effects of the consequences that have already occurred. Thus, the infringement can be prevented even in the peril phase before it exists. Preventing the exhibition of goods bearing the same sign of the trademark in a store is the prevention of infringement; removing the goods from the exhibition, stopping to exhibit and removing the sign in the catalogue of the goods exhibited or covering the sign therein is the remedy of infringement6 .

In order for this claim to be issued, either the infringement must continue or its effects must still continue, although the infringement has ended. Hence, even if the infringement has ended, it cannot be said that the lawsuit has no subject matter in this case, as its effects shall still continue, for this lawsuit may include the recall or destruction of the products from the market.

5- Negative Declaratory Action

As a requirement of commercial life, it may be a matter of dispute to whom a trademark belongs, whether a third party has a personal right or real right on the trademark; whether it is inherited or not, and it is also possible to claim that the trademark is infringed in bad faith

In such cases, the person who will take action or initiative regarding a trademark may request a declaratory judgement that his/her acts do not constitute infringement in order not to be sued in the future. In this action, the court holds whether there is a legal relationship between the parties. The claim as to whether the act constitutes infringement is based on article 154 of the IPC7 .

Whoever has an interest may bring this action against the trademark proprietor and request a decision that his/her acts do not constitute infringement of the trademark right, e.g. a person who intends to use or register the trademark in the goods or services produced as a result of the industrial activity he/she has undertaken or will undertake in Turkey, or a person who has a claim on the trade mark are the persons who have an interest. Nonetheless, this action cannot be brought by a person against whom an action has been brought for infringement of the trademark right. It cannot be asserted as a counterclaim. As the existence of infringement shall already be addressed in the lawsuit filed due to the infringement, there is no legal interest in bringing a negative declaratory action

6- Action For Damages

The trademark proprietor may request compensation for both pecuniary and non-pecuniary damages owing to infringement of the trademark right. Furthermore, according to the IPC, the trademark proprietor may also claim reputational damages in addition to pecuniary and non-pecuniary damages, provided that the reputation of the trademark is damaged as a result of the bad or improper use of the trademark by the infringer.

A) Pecuniary Damages

aa) Scope

If the damage suffered by the trademark proprietor in consequence of the infringement acts causes a change in his personal property, then pecuniary damages is in question. This pecuniary damages may be in the form of actual damage or loss of revenue8 .

Actual damage emerges in the form of a decrease in assets or an increase in liabilities due to a net decrease in assets, whereas loss of revenue occurs when the increase in the assets of the trademark proprietor is prevented by virtue of the infringement.

Examples of actual damages are the expenses incurred by the trademark proprietor to prevent acts of infringement or the advertising, image renewal, etc. expenses incurred by the trademark right holder for its product in order to eliminate confusion in the eyes of the consumer. The right holder claiming compensation must submit to the court the damages suffered as well as the acts of infringement, together with the documents.

Under Turkish law, the main purpose of damages is to compensate for the damage to property. Therefore, the amount of compensation is limited to this damage9 .

The act of infringement of the trademark right is actually a special sort of the tort. Therefore, the elements of wrongful act, fault, damage and adequate causal connection sought for torts shall also be considered in terms of damages for infringement of the trademark right. The burden of proof is on the plaintiff.

It is also possible to request the interest in claims for pecuniary compensation, and the Court of Cassation considers that it is appropriate to charge interest from the date of the damage or loss, if the plaintiff requests such interest, as well.

bb) Mediation

Lawsuits arising from trademark legislation are absolute commercial lawsuits pursuant to article 4 of the Commercial Code, and article 5/A thereof stipulates that it is a prerequisite that a mediator is applied before filing a commercial clawsuit. In this respect, the lawsuit must be a commercial case and the subject thereof must be credit and compensation requiring the payment of a sum of money10. Lawsuits involving claims that are interconnected and, whether subject to quantum or not, will not be subject to mediation and a lawsuit can directly be filed. Pursuant to the IPC, if the owner of trademark right merely claims compensation for the damages resulting from the infringement, it is mandatory to apply to the mediator before filing a lawsuit. If there are claims such as cessation or removal of the infringement together with the compensation, then a lawsuit can directly be filed, as the claims other than compensation do not fall within the scope of mandatory mediation11 .

The parties may voluntarily apply to the mediator prior to filing a lawsuit or during the pendency thereof. The settlement agreement document jointly signed on the part of the lawyers and the mediator shall be deemed to have the nature of a court decree without the need for a certificate of enforceability. In this case, the signature of the parties is not required12 .

cc) Fault

Notwithstanding fault is a prerequisite for the liability for damages in trademark law, the degree of fault is particularly effective in determining the compensation. According to the characteristics of the incident, the degree of fault shall be determined by taking the factors into account, such as the perpetrator's profession. Indeed, in accordance the Turkish Commercial Code, every merchant must act as a prudent businessperson in his commercial undertakings. In this case, e.g. the plea of a merchant who unknowingly sells the counterfeit goods shall be disregarded. Similarly, the licensee shall be deemed to be at fault for the branded goods that it manufactures, sells or offers for sale in violation of the limits in the license agreement13 .

dd) Proof of Damage and Adequate Causal Connection

The infringee of the trademark right shall select one of the three methods specified in IPC concerning the calculation of the deprived income and may need the sales data and financial information of the infringer while exercising this right of choice. For this reasoon, as per the article 150/3 of the IPC, the plaintiff may request the court to detect the evidence in order to determine the amount of damage suffered prior to filing a lawsuit for compensation, or to order the documents related to the use of the industrial property right to be submitted to the court by the liable party in order to determine the amount of damage suffered in the lawsuit for compensation. If there is no such need, i.e. if there is no need for the other party's documents, this provision is not applicable14 .

The primary documents to be submitted are commercial books, written text and all kinds of data carriers in electronic media. If it is claimed that the requested documents fall within the scope of trade secrets, the court shall appoint an expert, such as a certified public accountant, who is legally obliged to keep secrets. If the requested documents are not furnished, pursuant to article 220 of the Code of Civil Procedure, the court may accept the other party's statement on the content of the document, depending on the circumstances15 .

Provided that the act of the infringer is appropriate for the trademark proprietor to suffer damage in the ordinary course of life, there exists an adequate causal link16 ..

ee) Loss of Revenue

This is the loss incurred as a result of the partial or full prevention of the increase in the assets that is foreseen to occur in the ordinary course of life due to the damaging act. In accordance with the IPC, the damage suffered by the trademark proprietor comprises the actual damage and the loss of revenue17.

In case of trademark infringement, most of the pecuniary damage is the loss of revenue rather than the actual damage. In this sense, the deprived income is of great importance in the calculation of compensation. While making the calculation, pursuant to article 151/2 of the IPC, the choice of the calculation method determined by the infringee is considered.

The trademark proprietor who has suffered damage as a consequence of infringement may opt for one of the three methods listed in article 151/2 of the IPC for the calculation of the loss of revenue. These are; the possible income that the right holder could have obtained if it were not for this wrongful act of the infringer, the net profit obtained by the infringer, and the license fee that the infringer should pay if the infringer has used this right in accordance with the law through a license agreement.

The trademark proprietor cannot choose any other method apart from those of calculations stipulated in the IPC. The plaintiff must explicitly inform the court which method he/she has selected in his/her claim for damages. Or else, the compensation claim of the plaintiff shall be rejected by the court.

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