In today's world where distances are no longer far away, and international relations are conducted as smoothly as with nationals, to limit the scope of intellectual property ("IP") matters within countries' borders is impossible. However, to create a unique system that protects IP, internationally, seems equally impossible, as there are mental, cultural, and jurisdictional differences to take into consideration. Therefore, reference points that aim to determine necessary qualifications for the protection of IPs are established. These reference points are established by international conventions.
This article sheds light on the international conventions regarding the protection of IP rights being ratified by Turkey, and the precaution of confiscation by customs, which is one of the protection proceedings.
The Convention Establishing the World Intellectual Property Organization ("WIPO"), The Convention Establishing the World Trade Organization ("WTO") - Agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPS"), The Bern and The Rome Conventions regarding copyrights; the Paris Convention, The European Patent Convention ("EPC"), The International Patent System ("PCT") regarding industrial rights; the Madrid Protocol, the Trademark Law Treaty ("TLT") regarding trademarks, the Hague Agreement regarding designs may be counted as examples to the above-mentioned references points (herein after the "Conventions").
The contracting parties of these conventions create a connection that protects IPs internationally by adapting their own legislation to the necessary qualifications counted in the Conventions. Turkey has ratified all of the above-mentioned Conventions and, despite being a slower-developing country, she is surrounded by a wire as thick as developed countries. In addition, pursuant to Turkish Constitutional Law Art. 90, the provisions of international conventions entered into force, legally, have priority over the national law.
One of the points that can be deemed as a guarantee for investors is the "National Treatment Principle" counted in the Conventions (Paris Convention Art 2 and 3, Bern Convention Art 3 and 5, TRIPS Art 3). According to this principle, the same rights concerning material law issues of IPs granted to Turkish citizens must be granted to foreigners, as well. Procedural matters are not included in this principle since the Conventions grant exceptions regarding civil and administrative procedures.
Nevertheless, foreigners shall register their rights with the Turkish Patent Institute to be able to benefit from the provisions of Turkish legislation.
Infringements regarding intellectual property and related sanctions are counted in the relevant legislation1. In this article, we emphasize the confiscation of pirated goods by administration of customs.
Confiscation by Customs
Confiscation by customs is regulated under the Law on Customs ("LC"), Art. 57, and the Regulation on Customs ("RC"), Art. 101, and the articles that follow. This is a precaution that covers all kinds of IPs (Paris Convention Art. 9, TRIPS Art. 69).
Pursuant to RC Art. 101, the precautions include goods that are subject to an approved transaction or use by customs, which are considered to breach, or in fact breach, IP rights. This precaution is applicable not only during the export and import of goods, but also during transit. Various Court of Cassation decisions establish that this precaution shall be enforced upon goods that are subject to transit2. Actually, confiscation by customs may prevent the entire trade of pirated goods.
The customs administration, without the necessity of any kind of court decision or jurisdictional process, and, most importantly, without losing time, may confiscate goods that are considered to breach, or in fact breach, IP rights, and will notify the right holder to realize the necessary below-stated process.
There are two methods used under which goods that breach the rights of the right holder may be confiscated. The first method is through an application by the right holder or its representative, the license holder or its representative. The protection time requested in this application may be a maximum of one year. The right holder applies to the customs administration with the technical and detailed definition of the goods, all kinds of information that may shed light on the piracy, the contact details, and the documents proving the rights of the applicant, and its Turkish registration, and demands that the goods, which pass through customs without the knowledge of the right holder, be confiscated.
The customs administration controls the goods according to the accepted applications, confiscates the goods that are in breach, notifies the right holder the following work day, and keeps the goods for 3 work days, if the goods are subject to fast deterioration; otherwise, for 10 work days.
The second method is that the customs administration, in the absence of an application, by its own initiative, may confiscate goods if there is clear evidence that shows that the goods are pirated, and that they breach IP rights. The administration keeps the goods for 3 work days to grant the necessary time to the right holder to be able to make the below-stated applications.
The Following Process
The right holder, within 10 work days (if the goods are subject to fast deterioration, within 3 work days) after the custom's notification, shall initiate a lawsuit with the competent court, and obtain an injunction, or apply to a non-competent court to obtain an injunction, and initiate a lawsuit within 10 days after obtaining the injunction, and provide to the customs a document which shows that the lawsuit has been initiated. If the customs administration has not been informed that legal proceedings leading to a decision on the merits of the case have been initiated, customs procedures shall be carried out in accordance with the request of the owner of the goods. For goods that have been confiscated in the absence of an application, the time period begins to run from the application of the right holder to the customs administration. The periods may be extended upon the existence of just cause, except the periods for fast deteriorating goods.
After the confiscation by customs, the right holder should act immediately; otherwise, the precaution taken by customs expires. The right holder who is domiciled abroad should note that these necessary actions can be taken only by their agents who are domiciled in Turkey.
WTO completed the necessary examinations related to Turkey in the term of 2000-2001. With this examination, it has been determined that performances intending to achieve the compliance of our legislation with TRIPS are sufficient3. Besides the protection wire created within this scope, in the event that the application of the precaution of the confiscation by customs applies adequately, the infringements of the IP rights of local and foreign right holders will be prevented during the export, import and transit of the pirated goods.
1 For more information: http://www.erdem-erdem.com/en/articles/rights-of-owners-in-their-intellectual-and-artistic-works-2/ (accessed on 22.12.2014) , http://www.erdem-erdem.com/en/articles/infringement-of-trademark-rights// (accessed on 22.12.2014).
2 Decisions of the 11th Civil Chamber of the Court of Cassation, dated 13.6.2013 and numbered 2011/9321 E. 2013/12394 K.; dated 13.2.2004 and numbered 2003/13968 E. 2004/1201 K.; dated 1.4.2004 and numbered 2003/8321E. 2004/3406 K. may be given as example in the relevant matter.
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.