TURKEY - BORDER MEASURES, THE SO-CALLED “SUSPENSION OF RELEASE PROCEDURE”, AGAINST THE CIRCULATION OF COUNTERFEIT AND PIRATED GOODS IN AND OUT OF THE COUNTRY
Acknowledging the vital role of the customs in preventing, deterring and stopping the circulation of counterfeit and pirated goods in infringement and violation of the Intellectual and Industrial Property Rights, the GATT Agreement on Trade-Related Aspects of Intellectual Property Rights, (“TRIPs”) provides under Section 4 of Part III specific provisions for their effective enforcement at the borders with a view to block the entry in free circulation of the counterfeit/pirated goods in the local trade channels.
1/- The Turkish Legislation And Practice Related To Border Measures
Turkey has acceded to GATT and to the TRIPs with effect as from January 1, 1995. In harmonizing its legislation with TRIPs and European Union due to its European Union Candidacy, Turkey has also enacted on June 27, 2004 an entirely a set of Decree-Laws for the protection of Patents, Utility Models, Industrial Designs, Trade and Service Marks and Geographical Indications.
Although Turkey has not enacted a specific act for border measures, the Decree Law No. 554 for the protection Industrial Designs (Art. 66), the Decree Law No. 555 for the protection of Geographical Indications (Art. 37), the Decree Law No. 556 for the protection of Trade and Service Marks (Art 79), the Copyright Act No. 5846 (Art. 77) as well as the Customs Act No. 4458 of October 27, 1999 (amended) include specific and parallel provisions for border measures according to which the rights holder may ask the relevant Customs Authorities to suspend the release of Counterfeit and pirated goods destined for importation or exportation.
Article 57 of the Turkish Customs Act No. 4458 (as last amended by Law No. 5911) which is in line with Article 51 of the TRIPS Agreement states that the Customs Authorities are entitled to detain or suspend the goods infringing the IP holder rights, upon the request of the right holder or its representative. The Customs authorities are also empowered to suspend the release of the infringing products ex-officio where there are clear indications attesting that those products are counterfeit or pirated goods. The release of the counterfeit or pirated products which infringe the trademark, industrial design, patent, utility model, integrated circuit, plant variety, geographical indication and copyrights can be suspended as per the Customs Act.
The requirements set out in the Model Law of the WCO as well as in the related Council Regulation (EC) No. 3295/94 have been comprehensively taken into account in the Implementing Regulation dated 27 October 1999 of Customs Act No. 4458.
2/- Implementing the Suspension of Release Procedure upon the application of the Rights Holder
According to the current IP legislation, the Customs Acts and the practice in Turkey, it is possible to file a centralized application before the Customs for the monitoring of the counterfeit products. Such applications can be filed online before the Customs Head Office Department of Customs Ministry in Ankara as a central application.
The period for monitoring the said goods should be clearly mentioned in the applications, however the longest period has been set as “one year” by the law. Unlike to the previous practice which required the period to be not longer than 30 days, the new amendment enables the right holder or its representative to activate the Customs for a longer period.
In addition to the amendments concerning new customs prosecutions, the application and certification procedures have become more effective as well. Thanks to the online application method which is applied after 1st April 2010, the paper work of the customs administrations has been reduced importantly. In the event that the right holder operates abroad, the procedure can be conducted by the representative-attorney domiciled in Turkey.
The following conditions have to be met to initiate border measures and the following information should be provided to customs authorities together with the centralized application form:
1-The documents evidencing that the applicant is the real right holder, i.e. registration certificate of the trademark, a Notarized and Apostille legalized Power of Attorney,
2-Information regarding the goods bearing the trademark (a CD-Rom shall be submitted before the Department including the visuals of the trademark,
3-The country/countries where the genuine products are manufactured,
4-Suspected differences between the genuine and counterfeit products and any other information on the counterfeiting product,
5-The itinerary of the genuine products,
6-the Harmonized System Codes (Hs Codes) of the genuine products: these codes consist of international codes defining the products for the international trade,
7-The licensees: This is very important information enabling the Customs to prevent any action against the licensees and the exact tradename(s) of the licensee firm(s) it should to be provided.
Upon filing the application, the Customs Head Office Department issues a decision within 30 days in which the applicant is informed whether the request has been accepted and if accepted with regard to the length of monitoring period. This period can be renewed upon request at the end of the period.
3/- The ex-Officio Implementation of the Suspension of Release Procedure
The Customs are also empowered to ex-officio suspend the formalities for the release of the goods which are found/thought to be counterfeit or pirated during the routine customs clearance formalities. However, it should be noted that since Customs are authorized to hold the suspected goods for a maximum of 3 working days in order to notify the rights holder, the application for the suspension of release shall be filed with the customs within said time period. Regarding the goods suspended of release the rights holder is entitled to obtain from the customs the information about their owner’s or consignee’s name and address to the exception of any information which is confidential and in the nature of trade secret.
MANDATORY to institute within 10 days an infringement action and/or to secure judicial injunctive relief
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 file a civil action and obtain an order for injunctive relief within a deadline of ten (10) days (and three (3) days for perishable goods) as from the notification of the suspension.
The deadline can be extended for maximum period of 10 days whereas for the perishable goods, no extension of time is possible. Failure to institute an action and obtain an injunctive relief will result in the release of the counterfeit goods. In practice, the Customs do also stop the release of the suspended products where the right holder initiate the criminal proceedings and obtain an injunctive relief upon the complaint to be filed before the Public Prosecutor.
4/- Simplified Destruction Procedure:
Another mechanism that have been implemented with the latest amendment is the “simplified procedure” for the destruction of the goods by the Customs which is parallel to the procedure regulated in the Council Regulation (EC) Reg No. 1383/2003. According to the simplified procedure, the customs authorities can apply a "simplified destruction procedure" in case the right holder informs the customs authorities within 10 working days (or 3 working days for perishable goods) that the goods concerned infringe an intellectual property right and also provide those authorities with the written agreement of the declarant or owner of the goods to abandon the goods for destruction without any necessity of a declaratory judgment of the court. The cost for the destruction of the goods will be borne by the right holder where as the cost for the destruction of the goods upon a finalized court decision will be borne by the owner or declarant of the goods.
5/- Border Measures For The Goods in Transit or Free Zone Areas:
According to the Implementing Regulations, the release of the infringing goods that have entered into the Turkish customs territory, goods in free circulation, goods being exported, goods being re-exported goods put in a free zone can be suspended. Therefore, an IPR holder may oppose to exportation of infringing goods, infringing goods in transit or goods in a free trade zone or a free trade warehouse. Although the issue of infringement of goods in transit and goods in a free trade zone has been controversial for a while in Turkey, the Supreme Court case law - in parallel with the Implementing Regulations – established that even such goods will constitute an IPR infringement and can be suspended.