Although the registration of the trademark by TÜRKPATENT is the most important and mandatory step in the protection of the trademark, it is not enough on its own for the protection of the trademark rights. After the trademark is registered, some measures need to be taken to fight against counterfeiting and to exercise the rights arising from the registration.
With the development of technology, it has become easier for a product that is in use in the domestic market to be seen and produced by manufacturers in other countries, or for someone who sees a product in the domestic market to get this product manufactured abroad and supply it to the domestic market. Since import and export operations have significantly increased, one of the most important measures that can be taken to protect trademark rights is to track the counterfeit products at customs by registering the trademark with the customs.
Regulations regarding the protection of intellectual and industrial property rights at customs are included in Article 57 of the Customs Law No. 4458, and articles 100 and 111 of the Customs Regulation dated 7/10/2009 and published in the Official Gazette No. 27369 (repeated). In accordance with these regulations, the owner of a registered trademark can more easily identify a possible counterfeit product or a trade that takes place without their knowledge by registering their trademark with the customs.
Registration of trademarks with the customs can be done online via the website of the Ministry of Customs and Trade of the Republic of Turkey. After the application is registered, the registration of the trademark simultaneously takes place at all customs within Turkey. With this registration, import and export operations that take place both in free zones and at all customs are monitored. If there is nothing lacking in the application, the registration of the applications is usually concluded within 1-2 months and no fees are paid. If the documents submitted in the application are found to be incomplete, the right holder or their representative is given time to complete the documents, and after the documents are completed, an official letter stating that the trademark has been registered with the customs is notified to the right holder. Registration of the trademark with the customs is valid for a period of 1 year and must be renewed at the end of one year if there is a request for the registration to continue.
The following documents are mandatory for registering trademarks with the customs offices;
- A copy of the trademark registration certificate issued by TÜRKPATENT
- If the application is made through an agent, a notarized power of attorney
- If the right holder is a legal entity, signature circulars indicating the authority of the signatory
Furthermore, other information and documents that are defined in the "E-Application Guide on the Protection of Intellectual and Industrial Property Rights at Customs" published by the Ministry of Customs and Trade of the Republic of Turkey and requested, although not mandatory, are as follows;
- Information about the Original Goods: All distinctive information about the original goods produced by the right holder subject to the application or about the goods the right holder has someone produced.
- Product Group: The product group of the goods should be specified. More than one product group can be selected so long as the selections are limited to the product groups specified as "GOODS" in the trademark registration certificate issued by TÜRKPATENT.
- Country of Manufacture: The country of manufacture of the goods must be added. In the case of goods that are possible to be produced in more than one country, all countries of production should be indicated in relation to the goods.
- HS: Information should be provided regarding the harmonized system that indicates the place of the goods in the Turkish Harmonized Tariff Schedule.
- Type: A full and detailed technical description should be provided so that the goods can be identified, and the full name of the original goods should be written. (Shoes, X cartoon character, etc.)
- Licensed Companies for Production: Information should be provided about the company that has the right to produce the original goods.
In addition, it is important that all information about counterfeiting, if known, is submitted to customs so that the customs officers can more easily identify the imitation/counterfeit product. For example, the countries where counterfeit products are likely to arrive, the companies suspected of counterfeiting, or, if any counterfeiting has already been detected, all documents, photographs, samples, other evidence, etc. related to the counterfeiting should be provided during the application for registering the trademark with the customs.
It should be kept in mind that even if a registered trademark is recorded at the customs, this does not guarantee that all counterfeit products passing through customs can be detected. Except for exceptional cases, customs officers cannot determine whether each product that passes through customs violates trademark rights. Therefore, in situations where there is a suspicion of counterfeiting, the owner of the trademark can facilitate the detection of said counterfeiting by sharing all the information within their knowledge with the Customs Office. In the event that counterfeiting is detected at customs, the customs office gives the right holder or their legal representative a period of 3 days for perishable goods and 10 days for other goods. Although this period can be extended for another 10 days if a valid excuse is provided, the extension also depends on the customs office.
The customs office has the authority to detect the counterfeiting without any application, in which case it can notify the right holder or their legal representative and request them to take action within 3 days. If no action is initiated, the goods are released.
If it is determined that the goods stopped at customs are counterfeit products, it is necessary for the right holder to file a lawsuit applying for an injunction about the matter in the authorized court or request an injunction from the authorized court. If the parties agree, the destruction of the goods is possible without the need for a court decision.
To conclude, even if trademark rights are protected under the relevant articles of the Industrial Property Law No. 6769 and Customs Law No. 4458, it is important for the right holders to know their rights regarding trademarks and to take the necessary actions within the set period in the event of an imitation/counterfeiting so as to combat imitation and counterfeiting and to prevent pecuniary damages and loss of rights.
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.