The Enforcement of IP Rights in Turkey
The Turkish legal system has greatly improved and extended the enforcement of the IP rights especially after the enactment of an entirely new series of Decree-Laws for the protection of patents, utility models, trade/service marks, industrial designs and geographical indications, as of June 27, 1995 for modernizing its IP legislation. In 2004, Turkey has also enacted the Act pertaining to The Protection of Breeder's Rights for Plant Varieties as well as the Act for The Protection of Integrated Circuit (chip) Topographies. Turkey has harmonized its legislation not only with the European Community legislation but also with the international conventions as the Paris Convention, the GATT/TRIPS Agreement, of which Turkey is signatory.
With said Decree-Laws and the Acts, Turkey has enacted a fully integrated and coherent body of industrial property legislation with acts having parallel structures and provisions particularly as to enforcement matters, such as litigation procedure, jurisdiction, compensation, injunctive relief, border measures.
In compliance with the provisions of the above referred Decree-Laws and Acts, specialized Criminal and Civil Courts of Intellectual and Industrial Property Rights have been established in the cities of Istanbul, Ankara and Izmir for hearing cases in all IP matters including enforcement. In the remaining cities of Turkey the third Civil and Criminal Courts in each city have been appointed to serve as the specialized court in all IP matters including enforcement.
Legal Remedies Against the IP Infringements
Criminal Proceedings: The Turkish IP legislation contains various criminal sanctions such as imprisonment, pecuniary fines, the ban of exercising the professional activity and the closure of the infringer’s premises in case of violation of the protected IP rights.
The Criminal proceedings are initiated upon the filing of a complaint with the Public Prosecutor by the IP right holder. On the basis of a complaint filed before the Public Prosecutor, it is possible to request the seizure of the counterfeit goods through a police raid and the institution of the criminal action due to the unauthorized use of the IP right. The criminal action is usually instituted on the condition that counterfeits are found and seized in the premises seized during the police raid organized upon Public Prosecutor’s order.
As of 2009, the criminal proceedings are only available in the infringement of trademark, copyright, plant variety, integrated circuit (chip) topographies rights infringements whereas it is not possible to use the criminal route in respect of the patent, industrial design, geographical indications upon the Constitutional Court decisions which stated that the criminal provisions cannot be regulated through the Decree Laws but a Parliament Act.
Action in determination of evidences/facts: Prior to the institution of the main civil action a specific action for determination of evidence/facts before the “Specialized Court of Intellectual and Industrial Property Rights” for the determination of the act of infringement and/or the evidences therefore can be instituted, which is a non-adversarial action which can be conducted ex-parte.
Civil Action: It is possible to directly institute a civil action (main action) before the specialized Court of Intellectual and Industrial Property Rights wherein it is possible to claim the stopping of the infringing acts, compensation for damages and request for interlocutory injunction within the context of this action.
The Interlocutory Injunctions in the Turkish IP Enforcement: Turkey, likewise most legal systems have empowered the civil courts to order preliminary/interlocutory injunctions within the civil proceedings.
As a general provision The Turkish Civil Procedural Law provides that the right holder is entitled to ask for interlocutory injunction order where there is an imminent threat of serious/irreparable damage.
However, due to the importance of the interlocutory injunctions in providing an effective and quick tool for stopping the IP infringements, the Decree Laws for the protection of patents, utility models, trade/service marks, industrial designs and geographical indications contain a more detailed provision which provides that:
Interlocutory Injunctions shall be in nature to enable of securing fully the effectiveness of the judgment and particularly provide the following measures:
a) stopping of the acts of infringement of the trademark rights of the plaintiff;
b) injunction to seize within the borders of Turkey wherever they are seen/found, including the customs, free ports or free trade areas and keep in custody the goods produced or imported trademark rights,
c) ordering the placement of security/guarantee for damages to be compensated.
This provision enables the right holder to ask for an interlocutory injunction even for securing the effectiveness of the judgment so as to render verdict fully enforceable at the end of the proceedings. Based on the above referred provision the right holder can ask for a permanent injunction for stopping the unauthorized use of the IP rights in the advertisement or in any other promotional material, or the sale, offer for sale, use, keeping in hand and importation/exportations of the counterfeits for such purposes.
The right holder is also entitled to ask the court to order the defendant to pay an amount of guaranty during the proceedings for securing its compensation claim. This request of injunction is specific only to the IP rights infringements in the Turkish practice. However, despite the existence of such a legal provision the courts are reluctant to order this type of injunction.
In this regard, one important point to mention is that the courts refuse outright the requests for injunctive relief when the defendant is holder of trademark / industrial design/ patent registration in its own name since according to the Supreme Court case law, the use of such registration is not deemed to be an infringement unless and until the cancellation of such registration is finalized upon court’s decision. However, the plaintiff can ask the court to order the prevention of the assignment of the defendant’s registration in the cancellation action for preserving the status quo until the action is finalized. The courts usually grant the injunction for the prevention of the assignment to third parties, so as to avoid that the action remains without subject due to assignment of the subject registration in the course of the proceedings.
Procedure: The interlocutory injunctions can be requested at the outset of the main civil action or at any time during the civil proceedings. The plaintiff shall first evidence the existence of its protected IP right and shall submit documents for evidencing that the risk is imminent and that a possible delay can cause to an irreparable damage.
The injunction orders can also be requested within the scope of the ex-parte action in determination of evidences/facts which if favourably received the right holder shall institute the main civil action shall be instituted within two weeks as of the issuance of the interlocutory injunction decision. Failure to institute the action within two weeks days shall result in the release of the interlocutory injunction.
The Courts are known to be quite conservative in ordering the injunctions even when all legal requirements seems to be met, as the courts dispose a discretionary competence in the matter. However, where the court rejects the request for injunctive relief, such request can be renewed during the proceedings until the finalization of the decision.
Guaranty: The courts do also have discretion any competence in ordering a guaranty amount for meeting the possible damages of the defendant which can be sustained due an unjustified interlocutory injunction. The guaranty amount does depend on the specific circumstances of each action.
Interlocutory injunction orders against transit moving counterfeits or the counterfeits at the Free Trade Zones: The IP legislation in Turkey clearly provides the possibility to request injunctive measures against the counterfeit goods in customs, free ports and free trade areas, bound for importation or exportation. However, the case law with respect to the implementation this provision had not been settled until 2004 due to the debate as to whether the interlocutory injunctions would be applicable to transiting counterfeits or the counterfeits at the Free Trade Zones.
The case law has therefore evolved to enable the right holder to extend the protection against the transiting counterfeits or the counterfeits, which are kept in the free zones area even if the infringer does not intend to distribute the goods in the Turkish local trade channels.
An administrative injunction for the suspension of the release of the goods before the Customs: The suspension of release procedure has been one of the effective measures to combat the counterfeits both during their importation and/or exportation.
Although Turkey has not enacted a specific act for the border measures, the above referred IP legislation as well as the Customs Act No.4458 (Article 57) include specific and parallel provisions for border measures, according to which, the right holder may ask the relevant Customs Authorities to suspend the release of counterfeit or pirated goods bound for importation or exportation. The Customs are also empowered to ex-officio suspend the formalities for the release of the goods, which are found/thought to be counterfeit/pirated during the routine custom clearance formalities. In both situations where the customs suspends the release of the goods whether upon the application of the rights holder or ex-officio it is mandatory for the rights holder to institute an infringement action and/or obtain from the Court an order for interlocutory injunction. It is important to note that failure to institute the court action or obtaining the judicial injunctive measure within 10 days as from the notification of the customs decision will result in the release of the goods from the customs’ custody as the suspension of release decision shall cease to have effect thereafter.
To sum up, the interlocutory injunction orders have so far been one of the most effective legal means for the right holders in the civil proceedings, which can also have a compelling effect on the infringer to approach to a settlement. However, at the same it is without doubt challenging as the Courts have a wide discretion and that plaintiff will need to convince the Court with substantial evidences that he is the right holder and is facing an imminent risk and/or irreparable harm.