The Turkish Court of Appeal recently considered a case involving
issues about calculating material damages for trademark
infringement. The Court of Appeal held that if a plaintiff chooses
to calculate damages as if a licensing contract existed between the
parties (under Article 66(c) of Decree Law number 556 Pertaining to
Protection of Trademarks; "Decree Law"),
the relevant court must consider the plaintiff's activities, as
well as the defendant's revenue and production capacity.
In the dispute at hand, the plaintiff is the registered owner of
a trademark and had used it for over ten years. The defendant made
a trademark application for the same word and the application was
rejected. The defendant continued to use the word in his commercial
name, businesses, and signboards. The plaintiff asked the court to
determine that the defendant's actions constitute an
infringement and unfair competition against his trademark rights,
as well as to prevent further violations. The plaintiff also sought
compensation for material and immaterial damages.
The plaintiff based his request for material damages on Article
66(c) of the Decree Law. Under this basis, a trademark's owner
is entitled to choose a range of methods to calculate loss of
Possible income that the trademark
owner would have generated if the infringing competition had not
Income generated by the infringing
party from use of the trademark.
According to a license fee that would
have been paid if the infringing party had legally used the
trademark under a licensing contract.
No license agreement existed between the parties or between the
plaintiff and third parties. Regardless, the plaintiff asked for
loss of profit to be calculated in these circumstances on the basis
of a license fee, as if the parties had signed a license
The parties both operated in similar commercial fields.
Therefore, the court of first instance ruled that the
defendant's actions constitute infringement and should be
prevented. The lower court also held that the defendant should pay
immaterial compensation (based on Article 62(1)(b) of the Decree
The lower court also held that the defendant should pay material
compensation (under Article 62(c) of the Decree Law) based on a
hypothetical license fee, determined via examination of the
plaintiff's turnover. Accordingly, the first instance court
ruled for material compensation amounting to the lower limit of the
estimated license fee for one year, determined by the expert body,
taking into account the plaintiff's turnover, scope of business
and profit share.
Both parties appealed the first instance court's decision.
The Court of Appeal partially reversed the judgment in favor of the
plaintiff, changing the method for calculating compensation.
The Court of Appeal held that when calculating compensation
under Article 66(c) of the Decree Law, it is inaccurate and unjust
to only consider the plaintiff's activities. Rather, the court
stated that the license fee must be calculated by also taking into
consideration the defendant's revenue, production and sale
capacity, saleable product amounts.
(Case reference: Yarg. 11. HD. 2.12.2013, 2013/6117 E.,
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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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