• Remedies under Decree-Law on Trademarks
  • December 11, 2015
  • Law Firm: Erdem Erdem Law Office - Istanbul Office
  • Property is a constitutional right. Intellectual property is its integral part. Turkish legislation protects the rights regarding trademarks under Decree-Law on the Protection of Trademarks numbered 556 (“Decree-Law”). Within this scope, the protection of a symbol under the Decree-Law commences at the time (the date and hour) of the application to the Turkish Patent Institute (“TPI”). In this article, the civil and penal remedies that the right holders may apply against unfair registrations and usages under the Decree-Law, such as the process of objection, actions of nullity, invalidity, repeal, infringement, compensation and penal cases, will be emphasized.

    Process of Objection

    Pursuant to Articles 7 and 8 of the Decree-Law, the entrance of other symbols may abuse the rights of the registered trademark holders in business life can be prevented[1]. Within this scope, the TPI examines the objections against its decisions regarding the registration applications, or the refusal of the applications, and accepts or reject the application. Partial rejection or acceptance is possible, as well. In this case, persons may appeal the TPI’s decision. The TPI’s related department will first examine the appeal, and may change its decision. If the appeal is found to be unacceptable by the related department, the appeal shall be forwarded to the Re-examination and Evaluation Board (“REB”) by the department without comment as to its merits. The decision of the REB is absolute. The REB may decide whether to register the trademark or reject the registration application. Partial rejection or partial acceptance is possible, as well. It should be emphasized that until this stage, these processes are fulfilled by trademark representatives on behalf of the right holders.

    Action of Nullity of the REB’s Decision

    The applicant, or the person who objects to the application, may initiate an action of nullity in response to the decision of the REB within 2 months, with the Ankara Civil Courts for Intellectual and Industrial Property Rights (“CCIIPR”). This action does not automatically prevent the usage of the rights that have arisen from the registration. Therefore, the claimant shall request a cautionary judgment to halt the usage of the trademark and the rights that have arisen from this action.

    In this action, the defendant is the TPI. Aside from the TPI, in accordance with the situation at hand, the applicant, or the person/s who object/s to the application may be the defendant, as well. The CCIIPR shall accept, reject, or partially accept or reject the case. An appeal with the Court of Cassation is possible in connection with this decision.

    The CCIIPR is not entitled to register or cancel the trademark. Therefore, the claimant shall execute the decision after it becomes absolute. For example, in the event that the trademark is registered wrongfully at the end of the proceeding, the claimant shall initiate the below-mentioned action of invalidity to cancel the trademark.

    Action of Invalidity

    This case aims to withdraw the trademarks that are registered wrongfully, and/or whose protections lose their grounds because of various events that occur after the registry. Invalidity reasons are counted conclusively under Article 42 of the Decree- Law. However, in accordance with the established case law[2], registrations that are made in bad faith became a reason for invalidity. Nevertheless, the Court of Cassation provides contradictory decisions, as well.

    Any person who has suffered, the State Prosecutor or related official authorities may initiate an action of invalidity. The defendant of this case shall be the proprietor of the wrongfully registered trademark with the trademark registry. Although an exact foreclosure period in which to initiate such an action has not been regulated under the Decree-Law, pursuant to the established case law[3], 5 years is foreseen as the foreclosure period. In the event that bad faith actions have occurred, time limits shall not apply. The competent court is the CCIIPR of the domicile of the defendant.

    The competent courts for the action of nullity and action of invalidity that completes the process of action of nullity differ. Since this situation is contrary to the principle of appropriate procedure, the Court of Cassation allows these actions to be initiated with the Ankara CCIIPR at the same time.

    A final decision of the declaration of invalidity has retroactive effect. Therefore, with the decision, the trademark shall be deemed removed from the date of the registration. However, in the event that the wrongful right holder has acted in good faith, the retroactive effects of invalidity shall not be extend to any final decision reached concerning the infringement of the trademark enforced, and contracts concluded and executed prior to the decision of invalidity.

    The claimant shall enforce the invalidity decision with the TPI after it becomes absolute. In the event of a registration that has been made in bad faith, the court may rule for the defendant to compensate within the scope of this action.

    Action of Repeal

    These actions are regulated under Article 14 of the Decree-Law. If, within a period of five years, following the registration, a trademark has not been put to use without a justifiable reason, or if the use has been suspended during an uninterrupted period of five years, the trademark shall be repealed. These cases aim to prevent the formation of protective trademarks and cautionary trademark garbage. The final decision has no retroactive effect. In the event the non-usage depends on just cause, the trademark shall not be repealed. The provisions of the action of invalidity regarding the regulations of claimants, defendants, competent courts and decision shall apply to action of repeal.

    Cases of Trademark Infringements

    Trademark infringements shall be determined as “the usage of rights arising from a registered trademarks protected in Turkey and during the time of protection without the permission and/or consent of the right holder.” The Decree-Law recounted acts of infringement under Articles 9 and 61, in detail. Within this scope, cases aiming to determine proof, cases of determination of infringement, negative declaratory actions to determine the non-existence of the infringement, and actions for performance[4] shall be initiated. In these cases, the following precautionary measures may be requested; cessation of the acts of infringement, maintaining custody of the produced or imported goods that have infringed the trademark rights, ordering the placement of security for damages to be recompensed, or other measures that are ordered by the court. In addition, confiscation by the customs authorities may be requested in the event that the infringed goods are confiscated by the customs authorities[5].

    Actions for Compensation

    The above-mentioned actions do not require the presence of negligence or damage. However, it is obvious that in the event of negligence or damage, the right holder is entitled to initiate an action for compensation. Within the scope of these actions, the burden of proof is on the claimant and compensation regarding material, moral damages and/or loss of reputation shall be requested.

    Penal Actions

    Article 61/A of the Decree-Law enumerated acts that are punishable within the scope of penal law[6]. These acts are recounted conclusively because of the principle of legality regarding crime and punishment. Prosecution of the punishment shall be subject to complaint. Conciliation is possible. An accused may benefit from the provisions of effective repentance in the event that s/he reveals where s/he purchased the goods on the condition that those persons are apprehended.

    Conclusion

    In business life, every day, the rights of trademarks or the symbols that have not been registered, but are frequently used, are infringed upon. The legislation regulates civil and penal remedies to protect the right holders. Sometimes, people are unaware that they have breached another person’s rights. Therefore, more stringent remedies are assessed towards individuals who have acted in bad faith. All of these regulations aim to create a just competitive environment where intellectual property rights are not breached. With our following article, we will comment on the provisions of unfair competition which serve to create this environment.

    [1] For more information http://www.erdem-erdem.com/en/articles/protection-of-local-and-globally-well-known-trademarks/ (accessed on: 28.10.2015)

    [2] Decision of the Assembly of Civil Chambers of the Court of Cassation, dated 16.07.2008 and numbered 2008/11-501 E. 2008/507 K. may be given as an example in the relevant matter.

    [3] Decisions of the 11th Chamber of the Court of Cassation, dated T. 11.9.2000, 2000/5607 E., 2000/6604 K. may be given as an example in the relevant matter.

    [4] For more information: http://www.erdem-erdem.com/en/articles/infringement-of-trademark-rights// (accessed on 28.10.2015).

    [5] For more information: http://www.erdem-erdem.com/en/articles/international-protection-of-intellectual-property-and-confiscation-by-customs/ (accessed on 28.10.2015).

    [6] For more information: http://www.erdem-erdem.com/en/articles/infringement-of-trademark-rights// (accessed on 28.10.2015).