Turkey was historically an important artery of the Silk and Spice Route, and continues to be a strategic crossroads between the European Union (EU) and Middle Eastern countries. Because of its geopolitical position, Turkey has always been an important hub for international land, sea or air transportation. Considering that Turkey is the eastern neighbor of the EU and many goods pass through Turkey before entering Europe, Turkish customs carry significant importance..
Even though goods have been transported to their final destination through Turkish customs for many years, the Turkish Custom Authority's responsibility over goods in transit was highly debated until the amendment made in Decree Law Regarding the Protection of Trademarks (no: 556). As the Decree Law no: 556 did not contain any regulation regarding this subject , it was up to the judge's own discretion to determine whether the counterfeit goods confiscated in transit constituted trademark infringement or not in Turkey. While some courts required the trademark owners to prove that the goods in transit risked being illicitly diverted into the Turkish market (or counterfeiters' serious and effective efforts toward this end) before taking action, some courts accepted the idea that any suspected goods in transit can be detained and considered as trademark infringement if the requirements set in Decree Law no: 556 were met. In short, based on a legal loophole, the legal status of the goods in transit was open to interpretation and this led the courts to render many inconsistent decisions before 2009.
With the amendment made in Decree Law no: 556, apparently the legal status of goods in transit is much more clear in Turkey than in the EU, considering the European Court of Justice's decision with respect to the Phillips – Nokia case. After the amendment, the acts of infringement which were limited to the "import and export" of the goods was changed to "entrance of the infringing goods to the custom zone and being subject to a use or process which is confirmed by the Custom Authority." It is obvious that the expression "being subject to a process which is confirmed by the Custom Authority" includes any act taking place in the custom zone, including the transshipment of goods through Turkey. The expression also means that as long as the goods in transit are subject to a custom process, storing the goods in an official storage facility or private storage in a free zone does not change the nature of the trademark infringement. In other words, the Decree Law no: 556 does not require any proof that the goods in transit will be illicitly diverted into the Turkish market before a legal right owner may take action. Furthermore, based on recent decisions, it is obvious that the courts do not even need to consider the unclear information (such as address, name, destination, etc.) of the importer before they may rule ın favor of the rıghtful trademark owner. Therefore, after the 2009 amendment, the goods in transit through Turkish customs can be detained upon the right owner's request.
At this point, it should be mentioned that in order to detain the goods in transit, the goods in question should comply with the definition of a trademark infringement act under Turkish Law. Under Turkish Law, in order to constitute a trademark infringement act, the trademark should be registered in Turkey and as a general rule, only the trademark owner can prevent any third party from using its trademark. Within this scope, the trademark that the goods in transit bear should be registered in Turkey. In other words, even if the trademark is registered in its country of origin and the country of destination, as long as it is not registered in Turkey, the goods in transit cannot be detained. This is why it is vital for trademark owners to register their mark in Turkey regardless of whether or not they plan to conduct business in the country.
On the other hand, considering that trademark infringement is prosecuted upon the trademark owner's complaint, in order to have the suspected goods in transit detained, the trademark owner should file a request to the Custom Authority. Otherwise, even if it is obvious that the goods are counterfeit, the Custom Authority will not ex-officio detain the products. However, in practice, the Custom Authority tends to inform the trademark owners about the suspected products to give them a chance to take the necessary measures.
When the goods in transit are detained, the trademark owner has to file a civil or criminal action against the alleged infringer. Once this action is initiated, the case turns out to be a regular trademark infringement case where the trademark owner can also request an injunction or compensation for its monetary damages. Since detaining counterfeit goods before they enter their final destination is one of the more effective techniques in the fight against counterfeiting, registering a trademark in the Custom Authority's records is the best way for the trademark owner to be aware of the suspected goods.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
