Trademark Disputes Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern trademark litigation in your jurisdiction?

In Türkiye, trademark litigation is mainly governed by the IP Law (6769). However, in the case of unregistered trademarks, rights holders can also rely on the unfair competition provisions of the Commercial Law.

1.2 Which bilateral and multilateral agreements with relevance to trademark litigation have effect in your jurisdiction?

The main multilateral agreements with relevance to trademark litigation to which Türkiye is a party are:

• the Paris Convention for the Protection of Industrial Property; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the trademark laws? What is the framework for doing so?

At first instance, the specialised civil and criminal courts of intellectual and industrial property rights are responsible for interpreting and enforcing the trademark laws in Türkiye. In places where no specialised IP courts have been established, the local civil or criminal courts are responsible for interpreting and enforcing the trademark laws at first instance.

Decisions of the first-instance courts can be appealed before the regional courts of justice; and decisions of the regional courts of justice can be appealed before the Court of Cassation.

2 Forum

2.1 In what forum(s) is trademark litigation heard in your jurisdiction? Are trademark infringement and validity decided in the same forum or separate forums?

Article 156 of the IP Law provides as follows:

• The Ankara Civil Court of Intellectual and Industrial Property Rights is competent to hear legal proceedings:
• • instituted against decisions of the Turkish Patent and Trademark Office (TURKPATENT) according to the provisions of the IP Law; and
  • instituted against TURKPATENT by third parties which are adversely affected by one of its decisions.
• In case of trademark infringement, the competent court is the court at the place where:
• • the plaintiff is domiciled;
  • the action violating the law took place; or
  • the effects of the violation were observed.
• If the plaintiff is not domiciled in Türkiye, the competent court is:
• • the court at the place where, on the instituting date of the legal proceedings, the business premises of the attorney registered in the registry is located; or
  • if the record of the attorney has been deleted, the court with jurisdiction will be the one located in Ankara, where TURKPATENT is headquartered. .
• Where legal proceedings are instituted against the owner of a registered trademark by third parties (eg, invalidity actions), the competent court is the court at the place where the defendant is domiciled. If the owner of the registered trademark is not domiciled in Türkiye, the provisions set out in the bullet point above will apply.

2.2 Who hears and decides trademark disputes (eg, a judge, a panel and/or a jury)?

In general, at first instance, trademark disputes are heard and decided by a single judge. On appeal before the regional courts of justice, trademark disputes are decided by a panel of judges consisting of at least three judges.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

In Türkiye, there are no opportunities for forum shopping; the competent courts are designated by the relevant legislation.

3 Parties

3.1 Who has standing to file suit for trademark infringement? What requirements and restrictions apply in this regard?

• Trademark owner: The primary party with standing to file a lawsuit for trademark infringement is the owner of the registered trademark.
• Exclusive licensee: If a trademark owner has granted an exclusive licence to another party, the exclusive licensee also has the right to file a lawsuit, provided that:
• • the licence agreement includes a clause granting this right; or
  • the trademark owner does not object to the licensee filing the suit.
• Non-exclusive licensee: A non-exclusive licensee generally does not have the right to file a lawsuit for infringement unless:
• • it is explicitly granted this right in the licence agreement; and
  • the trademark owner consents to it.

The key points regarding the relevant requirements and restrictions are as follows:

• Registration: The trademark must be registered with the Turkish Patent and Trademark Office (TURKPATENT) in order for the owner to have standing to sue for infringement.
• Proof of infringement: The plaintiff must provide evidence of the infringement, showing that the defendant's use of the mark is likely to cause confusion or deception regarding the source of the goods or services.
• Statute of limitations: Trademark infringement claims are subject to the statute of limitation. In Türkiye, the period for filing such a lawsuit is typically:
• • two years from the date on which the trademark owner becomes aware of the infringement; and
  • in any case, 10 years from the date of the infringement.
• Mandatory mediation: As of 1 January 2019, mandatory mediation is required before certain types of IP lawsuits – including trademark infringement disputes – can be initiated. Parties must attempt to resolve their dispute through mediation before proceeding to court.

3.2 Can a trademark infringement suit be brought against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction?

Yes, a trademark infringement suit can be brought against a foreign entity with its residence or place of business outside the Turkish jurisdiction. If the infringing activities have effect in Türkiye, the Turkish courts may have jurisdiction.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Yes, a single infringement action can be brought against multiple defendants under Turkish trademark law.

Multiple defendants can be joined in a single lawsuit if the claims against them arise from the same:

• transaction;
• occurrence; or
• series of transactions or occurrences.

Essentially, there must be a logical connection between the claims against each defendant – the alleged infringing activities by the defendants must be related in a way that justifies their inclusion in a single lawsuit. For example, if multiple parties are involved in different stages of producing, distributing and selling the infringing goods, they can be sued together.

3.4 Can a third party seek cancellation of a national or international trademark in your jurisdiction? If so, how and on what grounds?

Yes, in Türkiye, a third party can seek the cancellation of a national or international trademark.

There are two types of trademark cancellation proceedings: a registered trademark can be either revoked or declared invalid.

• Grounds for invalidation: If one of the conditions mentioned under the absolute and relative grounds for refusal of a trademark exists, a registered trademark may be declared invalid. A trademark may only be declared invalid by court decision.
• Grounds for revocation: These include:
• • non-use of the trademark for a continuous period of five years;
  • the trademark becoming generic for the registered goods or services;
  • the trademark misleading the public concerning the nature, quality or geographic origin of the goods or services for which it is registered; and
  • the use of a guarantee or collective mark in a way which is contrary to the technical specifications.

As from 10 January 2024, TURKPATENT is authorised to hear trademark revocation requests.

In case of trademark invalidation proceedings, the invalidity applicant must submit the request for invalidation to the authorised courts.

However, as from 10 January 2024, a trademark revocation request must be submitted to TURKPATENT, whose decision on the revocation request may be appealed to the Specialised IP Court of Ankara.

3.5 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

A third party – usually a business or individual accused of infringing a trademark – can seek a court declaration that its use of a sign does not infringe a registered trademark.

The third party must file a lawsuit before the specialised IP courts. If there are no specialised IP courts in the relevant jurisdiction, the case may be filed in the general civil courts that are authorised to handle IP matters. The third party (plaintiff) must provide evidence that its use of a sign, product or service does not infringe the trademark in question. The trademark owner (defendant) may argue that the use indeed constitutes trademark infringement. The court will then assess the evidence on both sides.

A third party can also challenge the validity of a registered trademark by seeking a declaration of invalidity. This may be pursued if the third party believes that the trademark:

• was registered improperly; or
• conflicts with earlier rights.

If one of the absolute or relative grounds for refusal of a trademark exists, a registered trademark may be declared invalid by court decision.

4 Trademark infringement

4.1 What constitutes trademark infringement in your jurisdiction?

Trademark infringement in Türkiye involves the unauthorised use of a registered trademark in a way that is likely to cause confusion among consumers regarding the source of the goods or services.

This involves using a mark that is identical or confusingly similar to a registered trademark without the consent of the trademark owner. This unauthorised use must relate to goods or services that are identical or similar to those for which the trademark is registered.

There must also be a likelihood of confusion among the relevant consumers as to the source of the goods or services. This includes confusion about the origin, quality or affiliation of the goods or services.

According to Article 29 of the IP Law, the following acts are specifically considered to constitute trademark infringement:

• using a registered trademark without the consent of the trademark owner;
• counterfeiting the trademark by using the trademark or a confusingly similar trademark without the consent of the trademark owner;
• where a party is aware (or should be aware) that the trademark has been counterfeited through use of the trademark or a confusingly similar trademark, selling, distributing, putting on the market in a different form, possessing for commercial purpose, importing or exporting the infringing products, or offering to enter into a contract relating to those products; or
• extending or transferring to third parties, without consent, the rights given by the trademark owner under a licence.

4.2 How is infringement determined?

In Türkiye, a determination of trademark infringement involves a comprehensive assessment based on legal criteria established by the IP Law.

The assessment involves an evaluation of the visual appearance, sound and meaning of the marks in question. Marks need not be identical – even similar trademarks can lead to infringement if they cause confusion. The comparison focuses on the overall impression created by the marks rather than on specific elements. Among other things, this involves a consideration of:

• the distinctiveness and dominant components of the marks; and
• the classification of goods and services for which the trademarks have been registered.

The key criterion is whether the average consumer, with an imperfect recollection of the trademarks, is likely to be confused about the origin of the goods or services. This includes confusion as to whether the goods or services come from the same source or related sources. The distinctiveness and reputation of the earlier mark also play a significant role. Well-known or highly distinctive marks are given broader protection.

Both parties present evidence to support their claims, including:

• market surveys;
• sales data; and
• instances of actual confusion among consumers.

During the litigation, expert opinions may be sought to analyse the similarities between the marks and the likelihood of confusion.

The court:

• examines the evidence;
• hears testimonies; and
• evaluates the arguments presented by both parties.

The court's decision is based on the comprehensive assessment of all factors.

4.3 Is wilful infringement recognised? If so, what is the applicable standard?

Wilful infringement is not directly recognised under Turkish trademark law. However, the intentional and knowing violation of a trademark owner's rights can generally be considered to constitute bad faith where the infringer knowingly exploits the trademark for its own gain, attempting to deceive consumers or take advantage of the trademark's reputation.

The Turkish courts may award higher damages in cases of infringement with bad faith compared to cases where the infringement was unintentional. This can include both:

• actual damages (eg, lost profits); and
• moral damages (eg, harm to reputation).

In certain cases, infringement with bad faith can lead to criminal liability under Turkish law, – especially in cases involving counterfeit goods or significant economic harm to the trademark owner.

5 Bringing a claim

5.1 What measures can a trademark owner take to enforce its rights in your jurisdiction?

Trademark owners in Türkiye have multiple measures available to enforce their rights, including:

• administrative actions;
• civil lawsuits; and
• criminal complaints.

These mechanisms allow trademark owners to:

• have the infringing activities stopped;
• seek compensation; and
• deter future infringements.

Effective enforcement often involves a combination of these measures, supported by strong legal representation and evidence collection.

5.2 What is the limitation period for bringing a trademark infringement claim in your jurisdiction?

No specific limitation period is specified in the IP Law for civil trademark infringement lawsuits to be filed.

According to the Code of Obligations (6098), a trademark owner can file suit:

• within two years of the date of learning of:
• • the trademark infringement; and
  • the identity of the person or persons that committed these acts; and
• in any case, within 10 years.

However, if the act of trademark infringement is also defined as a crime in law and a longer statute of limitations is prescribed for this crime in the penal codes, that longer period will be taken into account in the lawsuits to be filed. If a lawsuit is not filed within the period specified by law, the statute of limitations will expire.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

In Türkiye, there is no mandatory requirement to notify the alleged infringer in advance before bringing a trademark infringement claim. However, sending a cease-and-desist letter is common practice and is often advisable, for several strategic and legal reasons.

5.4 What are the procedural and substantive requirements for bringing a claim for trademark infringement? How much detail must be presented in the complaint?

According to Article 4/1-d of the Commercial Law, regardless of whether the parties are merchants or not, the cases included in the legislation on IP law are considered absolute commercial cases. Mediation is mandatory in absolute commercial cases. Apart from compulsory mediation, there is nothing to prevent the parties from applying for voluntary mediation in disputes other than those involving trademark law-related receivables and compensation claims.

The procedure may vary depending on:

• the nature of the claim; and
• the act that caused the infringement.

The available legal protections are regulated in Articles 149, 150 and 151 of the IP Law.

The complaint must be comprehensive and precise, providing sufficient detail to support the claims of infringement and justify the relief sought. The court relies on the information provided in the complaint to understand:

• the nature of the dispute; and
• the basis for the legal claims.

To determine whether the existing act constitutes an infringement of the trademark right, a lawsuit for the determination of infringement of the trademark right can be filed, as well as a lawsuit for the prevention of possible infringement, cessation and removal of infringement.

In case of the infringement of a trademark right, the trademark owner may file a lawsuit for monetary damages against the persons that committed the act to compensate for the damages suffered. If the conditions are met, a lawsuit for moral damages and reputational damages can also be filed.

The trademark owner may additionally file a criminal complaint with the Public Prosecutor's Office based on Article 30 of the IP Law.

5.5 Are interim remedies available in trademark litigation in your jurisdiction? If so, how are they obtained and what form do they take?

Yes, interim remedies are available in trademark litigation in Türkiye and they play a crucial role in protecting the trademark owner's rights during the pendency of a lawsuit.

Under Article 159 of the IP Law, ‘evidentiary determination' and ‘interim injunction' are temporary legal protection options that a trademark owner may avail of in case of infringement when faced with the risk of loss of its rights or an increase in the damage.

In order to immediately halt the alleged infringing activities and prevent ongoing or imminent harm to the trademark owner, interim injunctions are usually preferred. Interim injunctions can include orders to:

• cease the use of the infringing mark;
• withdraw infringing products from the market; and
• prohibit the sale, distribution or advertising of the infringing goods.

To secure evidence of the infringement and prevent the distribution of infringing goods, a trademark owner can request that they be seized, which involves the physical seizure of:

• products, packaging and promotional materials; and
• any equipment used in the production of the infringing goods.

Also, the import or export of goods bearing the mark are regulated under Article 7(3)c of the IP Law, including the right to prevent "others from bringing goods bearing the mark into the customs territory or subjecting them to a customs-approved process".

The rights holder can obtain injunctions or criminal seizure orders if suspected counterfeit goods are discovered at Customs. Trademark owners can register their trademarks with Customs to intercept and detain suspected infringing goods at the border.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

In Turkish trademark litigation, the court may require the plaintiff (trademark owner) to provide security for costs and/or damages that may be incurred by the defendant as a result of interim measures, such as a preliminary injunction. This requirement is intended to protect the defendant from potential losses if it is subsequently determined that the interim measures were unwarranted.

Where the plaintiff requests a preliminary injunction to stop the alleged infringing activities, the court may order the plaintiff to provide security. This is to ensure that any damages that the defendant might suffer due to the injunction can be compensated if the plaintiff's claim is ultimately unsuccessful. If the plaintiff seeks the seizure of alleged infringing goods, the court might require security to cover potential damages to the defendant resulting from the seizure.

If the court grants an ex parte interim order (without notifying the defendant) due to the urgency and potential risk of evidence destruction, security is often required to protect the defendant's interests.

The amount of security is at the court's discretion and is based on an assessment of the potential harm or damages that the defendant might incur due to the interim measures. Factors include:

• the value of the alleged infringing goods;
• the impact on the defendant's business; and
• any other relevant economic considerations.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

Under Turkish law, the submission of information and documents is primarily governed by:

• the Code of Civil Procedure; and
• the Code of Criminal Procedure.

These laws outline how parties should obtain and submit necessary documents and information during litigation. In civil cases, parties must present evidence to support their claims. In other words, the parties must submit information and documents related to the case to the court.

Furthermore, a party can request the court to order the production of a document held by the other party and the court will determine its relevance to the case. Additionally, the court can request documents from parties or third parties as needed. In criminal cases, on the other hand, the prosecution gathers information and documents to support the indictment, while the defence can request necessary information and documents for the defence. The defence counsel can also request case-related information and documents from the Public Prosecutor's Office or other institutions.

There are some exceptions to disclosure requirements. Confidentiality and the protection of private life may restrict disclosure, considering the regulations on personal data protection. Additionally, professional secrets – such as attorney-client privilege – exempt lawyers from disclosing clients' secrets. Documents relating to state security and public order are also exempt in certain cases; state secrets can only be disclosed by authorised authorities following specific procedures. Also, documents that are protected by confidentiality agreements or legal privileges, such as trade secrets, may be exempt from disclosure. Additionally, the disclosure of documents containing personal data must comply with the rules of the Personal Data Protection Authority.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

Third parties may be required to produce documents or provide evidence if it is deemed necessary to resolve a case. The court can issue orders compelling third parties to disclose relevant information. Third parties must comply with the court's request. The court may impose coercive measures on third parties that refuse to produce documents. This is typically done if the information is critical to the case and cannot be obtained otherwise. Disclosure requests must not impose an unreasonable burden on third parties. The court will consider the proportionality of the request before compelling disclosure.

There are exceptions to third-party disclosure. Confidentiality and privacy regulations impose limits on third parties regarding the submission of information and documents. Under the Law on the Protection of Personal Data, the sharing of documents containing personal data may be restricted to safeguard privacy. Third parties bound by confidentiality agreements can refuse to disclose certain documents to protect interests covered by these agreements. Additionally, information protected by legal privilege, such as attorney-client confidentiality, is exempt from third-party disclosure. Documents related to state security and public order are also typically excluded from production by third parties; such state secrets can only be disclosed by authorised authorities following specific procedures.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

In Türkiye, while legal privilege is not explicitly defined, the Attorneyship Law provides that lawyers must keep confidential any information shared by clients in the course of providing legal services. This protection covers all types of communications between lawyers and their client and pertains to information exchanged during legal advice and representation.

Communications between lawyers and their clients are privileged and cannot be disclosed without the client's consent.

Similarly, other professional secrets – such as those held by doctors, financial advisers and journalists – are protected to maintain confidentiality and trust within these professional relationships. However, such protections may be overridden:

• when required by law; or
• where necessary to prevent significant harm or address major criminal activities.

Furthermore, confidentiality may be breached in matters of public interest or national security, where documents or communications related to state security or serious crimes could be subject to mandatory disclosure following specific legal procedures.

Nevertheless, privilege does not extend to communications intended to further a crime or fraud. Courts may also compel the release of privileged information in exceptional situations where it is crucial for justice and cannot be obtained through other means.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in trademark infringement litigation?

Under Turkish law, the process for collecting and presenting evidence in trademark infringement cases involves several key steps. Initially, the plaintiff can seek preliminary measures from the court before initiating the lawsuit. This may include actions such as:

• seizing suspect products; or
• preserving evidence to prevent its loss or alteration.

Once the lawsuit has been filed, both parties can request specific evidence from each other, establishing the date on which the evidence was obtained.

Collection of evidence: Plaintiffs can request a preliminary injunction to prevent ongoing infringement and secure evidence at risk of being destroyed or altered. This urgent measure protects the plaintiff's rights and ensures that crucial evidence is preserved. The court can appoint experts to evaluate technical aspects, such as assessing the likelihood of confusion between trademarks. Expert reports provide objective analysis which is critical to the court's understanding. Evidence collection before filing a lawsuit helps to ensure legal admissibility and prevents disputes over legality. Additionally, invoices, catalogues, brochures, newsletters, dated notices, correspondence and documents containing product images and descriptions can be gathered to demonstrate whether the contested trademark products were available to the public before or after the opposing party's registration dates.

Presentation of evidence: The evidence collected is initially presented through written pleadings and responses, including all relevant documents, witness statements and expert reports. Written submissions form the basis of the case, outlining allegations and supporting evidence. Oral hearings follow, allowing the parties to:

• present evidence in person;
• examine their own witnesses; and
• cross-examine each other's witnesses.

This provides firsthand accounts and clarifications directly from the individuals involved. The court may also order on-site inspections or the examination of goods and documents – particularly useful measures in disputes over the physical characteristics of goods or their use circumstances.

7.2 What types of evidence are permissible in your jurisdiction? Are (a) expert evidence and (b) survey evidence accepted in trademark infringement suits? Are they commonly used?

Various types of evidence are permissible in trademark infringement suits, including the following:

• Documents: Contracts, correspondence, invoices and other business records can be presented as evidence.
• Witness statements: Testimonies from individuals who have relevant knowledge of the facts can be submitted.
• Expert evidence: Expert witnesses can provide opinions on technical matters, such as the likelihood of confusion between trademarks. Expert reports are commonly used and often play a crucial role in trademark litigation.
• Survey evidence: Surveys that measure consumer perception and the likelihood of confusion can be submitted as evidence. While not as common as expert evidence, survey evidence is accepted and can be influential in court decisions.

Furthermore, various forms of evidence are accepted, including:

• invoices;
• catalogues;
• brochures;
• newsletters;
• notices with dates;
• correspondence; and
• documents featuring product images and sales or public offering descriptions.

Websites such as https://web.archive.org/, https://who.is/, and https://e-hizmet.tnb.org.tr/tespit/ (Electronic Data Detection Service) are also considered reliable sources. These platforms provide dated and trustworthy evidence that can be crucial for proving claims.

7.3 Can evidence from criminal proceedings be used in civil proceedings and vice versa?

In Türkiye, evidence obtained from criminal proceedings can generally be used in civil proceedings. The acceptability of evidence in different proceedings relies on:

• how the evidence was obtained; and
• whether it adheres to applicable laws.

Generally, if evidence is presented in one case, it can also be utilised in another, provided that it meets the legal requirements.

However, the following points should be noted:

• Relevance and admissibility: The evidence must be pertinent to the civil case and meet the admissibility requirements.
• Lawfulness: If the evidence was obtained unlawfully (eg, violating privacy rights), it may be excluded from use in civil proceedings.

Evidence from civil proceedings can also be used in criminal proceedings if it:

• is relevant; and
• satisfies the standards of evidence in criminal cases.

In cases where there is a significant relationship between the civil and criminal proceedings, the civil court may stay the proceedings until the criminal case is resolved, in order to:

• prevent conflicting decisions; and
• ensure the integrity of the legal process.

7.4 What are the applicable standards of proof?

The standard of proof in civil cases – including trademark infringement litigation – is generally based on the ‘balance of probabilities' or ‘preponderance of evidence' standard. This standard requires that the evidence presented by a party be more convincing and likely to be true than not. In other words, the judge must believe that there is a greater than 50% chance that the claim is true.

Article 189 of the Civil Procedure Code (6100) explains the applicable standards of proof as follows:

• Paragraph 2: "Evidence obtained unlawfully cannot be taken into consideration by the court in proving a fact."
• Paragraph 3: "Matters that the law mandates to be proven with specific evidence cannot be proven with other evidence."
• Paragraph 4: "The admissibility of evidence presented to prove a fact is determined by the court."

In civil cases, the burden of proof is typically based on the ‘preponderance of evidence' standard. This means that the evidence presented must be convincing enough to support the party's claims, demonstrating that its version of events is more likely true than not.

Essentially, all evidence must collectively establish that the claims made are credible and supported by adequate proof.

7.5 On whom does the burden of proof rest?

In Türkiye, the burden of proof generally rests on the party making the claim in civil litigation, including trademark infringement cases. However, the standards for evidence differ between civil and criminal proceedings:

• Civil cases: The plaintiff bears the burden of proof and must provide sufficient and relevant evidence to substantiate its allegations. The standard is the ‘preponderance of evidence', meaning that the evidence must be more convincing than the opposing party's evidence. The goal is to show that the plaintiff's claims are supported by a stronger weight of evidence.
• Criminal cases: The standard of proof is ‘beyond a reasonable doubt', requiring clear, convincing evidence that leaves no reasonable doubt about the accused's guilt. The prosecution must establish the accused's culpability to eliminate any reasonable doubt.

The distinction between these proceedings highlights the different proof levels: civil cases require a balance of probabilities, while criminal cases demand certainty beyond a reasonable doubt.

Exceptions: In some cases, the burden of proof may be reversed. Examples include the following:

• Consumer law: In consumer protection cases, the burden often shifts in favour of the consumer. For instance, in defective goods claims, the seller must prove that the goods are not defective.
• Labour law: In workplace accident cases, the burden rests on the employer to prove that it fulfilled its obligations.
• Unfair competition: The defendant must prove that it has not engaged in unfair competition.

These exceptions:

• facilitate justice; and
• help the aggrieved party to seek redress.

Trademark infringement cases:

• Plaintiff's burden: The plaintiff must prove:
• • ownership of the trademark;
  • the defendant's use of the trademark; and
  • the likelihood of confusion or damage caused by the infringement.
• Defendant's burden: If the defendant raises defences such as trademark invalidity or exceptions, the burden shifts to the defendant to prove these defences.

8 Defences and counterclaims

8.1 What defences are typically available in trademark litigation?

In trademark litigation, several defences can be raised by a defendant to counter a trademark infringement claim:

• Non-use: Under Article 19/2 of the IP Law, an opposition can be made if the applied-for trademark is identical or similar to a previously registered or applied-for trademark, leading to a likelihood of confusion. If the opposed trademark has been registered in Türkiye for at least five years, the applicant can request evidence of genuine use. If the claimant does not provide the required evidence, its claims will be dismissed. Claims will be evaluated solely concerning the goods or services actually used, as failure to demonstrate use implies no substantial legal interest or protection for the trademark.
• No likelihood of confusion: The defendant can argue that there is no likelihood of confusion between the marks in question – a key requirement for trademark infringement.
• Acquiescence: This occurs when a trademark owner, aware of the infringement, remains silent for a significant period, potentially losing certain rights. This defence allows the infringing party to claim the right to continue using the trademark due to the owner's prolonged inaction.
• Prior use: This refers to rights established by the first party to use a trademark in commerce before another party registers or uses a similar mark. The prior user can claim superior rights and defend against infringement claims, even without registration.
• Invalidity of the trademark: The defendant can challenge the validity of the plaintiff's trademark on grounds such as:
• • lack of descriptiveness;
  • distinctiveness; or
  • the mark being deceptive or contrary to public order.
• Fair use: This allows a trademark to be used to describe the type, nature, quality or purpose of a product or service. It also covers:
• • the use of one's own name or trade name; and
  • use of the mark as an indication of the intended purpose of products or services.
• Such uses are lawful as long as they adhere to principles of commercial honesty.

8.2 Can the defendant counterclaim for revocation or invalidation of the trademark? If so, on what grounds and what is the process for doing so?

Yes – in Türkiye, the defendant in a trademark infringement case can counterclaim for revocation or invalidation of the plaintiff's trademark. The grounds for revocation include:

• non-use;
• misleading use regarding the nature, quality or geographical origin of the goods or services;
• the trademark becoming the common name for the product or services it covers;
• lack of distinctiveness;
• deceptiveness if the trademark is deceptive or contrary to public order or morality;
• prior rights of the defendant; and
• bad faith if the trademark was registered in bad faith.

To initiate this process, the defendant must file a counterclaim during the infringement litigation, presenting evidence to support the grounds for revocation or invalidation. Thus, the defendant has the option to challenge the legal validity of the trademark by filing a counterclaim for its cancellation or invalidation.

The process for filing a counterclaim requires some conditions according to Article 132 of the Civil Procedure Code (6100). In order to file a counterclaim:

• the main case must have been filed and be pending; and
• there must be:
• • a connection between the claim to be made in the counterclaim and the claim made in the main case, through set-off or offsetting; or
  • a connection between the two cases.

If the specified conditions are not met and a counterclaim is filed, the court, upon request or ex officio, will decide to separate the counterclaim from the main case; if necessary, it will send the file to the competent court.

No lawsuits can be filed against the counterclaim.

8.3 Are there any grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant?

In Türkiye, there are several grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant, including the following:

• Non-use: If the trademark has not been used for five consecutive years, it may be subject to cancellation, in which case the burden of proving use falls on the trademark holder.
• Genericness: In Turkish trademark law, ‘genericness' occurs when a trademark becomes so commonly used that it starts to represent a general category of goods or services rather than identifying a specific source. If a trademark becomes generic and is widely used to describe a category of goods or services, it may lose its protection and enforceability because it no longer serves its primary function of distinguishing the goods or services of one enterprise from those of others.
• Deceptive or misleading nature: A trademark that is considered deceptive or misleading regarding the nature, quality or origin of the goods/services can be challenged.
• Bad-faith registration: A trademark is considered to have been registered in bad faith if it was done with the intent to obstruct a competitor's market entry or to gain an unfair advantage.
• Lack of distinctiveness: If the trademark lacks distinctiveness or is descriptive of the goods/services, it may not be enforceable.

9 Settlement

9.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

Mediation and other forms of settlement discussions are generally encouraged but are not mandatory in all cases. However, for commercial disputes involving monetary issues, mediation is a prerequisite before filing a lawsuit.

9.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

Yes, court proceedings can be stayed or discontinued if the parties are engaged in settlement discussions. If the parties inform the court that they are negotiating a settlement, the court may grant a stay of proceedings to allow the parties time to reach an agreement. If a settlement is reached, the parties can request the court to discontinue the proceedings based on the terms of the settlement.

9.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

Yes, if a settlement is reached during the discussions, it is necessary to report the results to the court. The parties must submit a written agreement outlining the terms of the settlement to the court. The court will then review the agreement and, if it meets all legal requirements, approve it. Once approved, the settlement agreement becomes binding and enforceable as a court order.

10 Court proceedings for infringement and validity

10.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

As a rule, proceedings in the Turkish jurisdiction are public. However, in certain situations, the court may issue a confidentiality order on its own initiative or at the request of the parties. Additionally, parties can request the court to issue special orders to keep certain documents or information confidential. Such requests are assessed based on the justifications and evidence provided.

Within the trademark law litigation context, for instance, such action may be taken in case of confidentiality with respect to the trade secrets of either party. In that scenario, the litigation process may be run privately in order to protect them.

10.2 Can a trademark owner sue for infringement and passing off in the same action?

Yes, in Turkish litigation proceedings, a trademark owner has the opportunity to file a lawsuit for both infringement and passing off in the same action, resulting in considerable cost and time savings for the parties. The condition for this is that both of the legal grounds must have been caused by the same action.

10.3 Procedurally, what are the main steps in trademark infringement proceedings in your jurisdiction? Is validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

There are multiple steps in Turkish trademark infringement proceedings. The process begins when one party files a petition with claims and demands. The court then conducts a preliminary examination to decide whether the petition is acceptable. The defendant responds with another petition, which triggers the start of the evidence production phase, followed by court hearings. The judge makes a ruling based on the evidence presented. Trademark proceedings occur before the specialised IP courts.

A trademark infringement lawsuit and a lawsuit for the invalidation of a trademark are based on different legal grounds. A trademark infringement lawsuit aims to:

• stop an action that infringes the trademark owner's rights; and
• address the resulting damages.

An invalidation lawsuit examines the invalidity (eg, lack of distinctiveness, bad faith) of a previously registered trademark. Turkish law allows these cases to be heard simultaneously, but it is not necessary for this to happen in the same proceeding. For instance, if there is no trademark registration, only an infringement lawsuit will be necessary and an invalidation lawsuit is not required. Therefore, separate evaluation of these cases is often most appropriate.

10.4 What is the typical timeframe for trademark infringement proceedings? Is a fast-track procedure available? If separate trademark validity proceedings are available, what is the typical timeframe for those proceedings?

The typical timeframe for trademark infringement proceedings is between one and six years until a final decision is reached.

The duration depends on two aspects:

• the complexity of the case the legal remedies sought by the parties – if the case continues before the regional court and the Supreme Court, this could extend the duration of the litigation to up to six years in total.

Although a fast-track procedure is available in different areas of law, it is not common in trademark law proceedings. However, there are a few exceptions to this rule. One of the most well-known exceptions is the customs fast destruction procedure, which is carried out by the customs authorities during customs inspections to prevent counterfeit or imitation products and trademark infringements.

The process kicks off when the trademark owner applies to Customs in relation to an infringement. Based on this notification, Customs temporarily confiscates the relevant products. Subsequently, customs officers notify the trademark owner about the situation. The trademark owner or an authorised individual makes an assessment as to whether the claims regarding the relevant products are indeed valid.

10.5 Can the court issue extraterritorial injunctions, whether interim or permanent?

Under the IP Law, courts primarily operate within the domestic jurisdiction and cannot directly issue orders affecting matters outside Türkiye. However, through international agreements and cooperation, it is possible to achieve international recognition and enforcement of Turkish court judgments.

The IP Law has a regional basis and the Turkish courts thus cannot issue extraterritorial injunctions. However, international enforcement of Turkish court decisions can be sought by approaching the courts in relevant foreign countries. For example, if a trademark infringement occurs outside Türkiye, the Turkish courts can be asked to recognise and enforce the judgments of foreign courts regarding the infringement.

Through international agreements, foreign court judgments can sometimes be recognised and enforced in Türkiye. This requires adherence to specific jurisdictional rules and treaties. For instance, the cancellation of a trademark in a foreign country due to infringement does not affect the Turkish jurisdiction – cancellation in a foreign state does not lead to cancellation in the Turkish trademark system. Such matters are exclusively within the Turkish jurisdiction, where an independent substantive examination will be conducted. Thanks to enforcement, decisions on the award damages may be enforced against natural or legal persons that own assets in Türkiye as if they were made by a Turkish court.

10.6 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

The Turkish legal system is based on continental European principles. Therefore, decisions issued by other national courts do not explicitly influence Turkish court decisions. However, while landmark decisions of the Turkish courts are not binding, referencing them in litigation can be advantageous.

The exception is the Turkish Supreme Court's case law unification decisions, which are binding on all Turkish courts. Rulings of the European Court of Human Rights are binding in Türkiye based on international conventions and the Turkish courts must apply them. Judgments of other international courts are not directly binding but can be referenced.

Bodies such as the World Intellectual Property Organization (WIPO) and the EU Intellectual Property Office (EUIPO) play a significant role in alternative dispute resolution, such as mediation or arbitration; but their decisions do not have the same influence as those of the Turkish Supreme Court. Their practices are not binding on Turkish trademark courts but offer support and guidance only. WIPO manages international agreements to which Türkiye is a party and decisions of WIPO and EUIPO can serve as precedents in Turkish trademark litigation.

Decisions of the Turkish Patent and Trademark Office (TURKPATENT) are also not binding on the Turkish courts, but they are reviewed and considered – especially in cases challenging TURKPATENT's decisions.

Thus, while external bodies and international rulings provide guidance, the Turkish legal system primarily relies on its own jurisprudence and Supreme Court decisions.

11 Remedies

11.1 What remedies for infringement are available to a trademark owner in your jurisdiction?

Under Article 159 of the IP Law, ‘evidentiary determination' and ‘interim injunction' are temporary legal protection options that a trademark owner may avail of in case of infringement when faced with the risk of loss of its rights or an increase in the damage.

Article 149 of the IP Law sets forth the claims that a trademark owner may assert through litigation. These include:

• the determination, cessation, prevention and elimination of infringement;
• compensation; and
• other claims that the trademark owner may assert.

In addition, the IP Law includes a number of criminal sanctions that may be imposed in case of trademark infringement.

A trademark owner may file a criminal complaint with the Public Prosecutor's Office based on Article 30 of the IP Law against those that infringe its trademark.

Also, the import and export of trademarked goods are regulated under Article 7(3)c of the IP Law, which recognises the right to prevent "others from bringing goods bearing the mark into the customs territory or subjecting them to a customs-approved process". The trademark owner can obtain injunctions or criminal seizure orders if suspected counterfeit goods are discovered at Customs.

11.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

The concept of punitive or enhanced damages is not recognised within the Turkish legal framework.

However, the Turkish courts may award higher damages in cases of infringement in bad faith compared to cases where the infringement was unintentional. These can include both:

• actual damages (eg, lost profits); and
• moral damages (eg, harm to reputation).

11.3 What factors will the courts consider when deciding on the quantum of damages?

The Turkish courts consider a range of factors when deciding on the quantum of damages in trademark infringement cases, including:

• the actual loss suffered by the trademark owner;
• the unjust enrichment of the infringer;
• market conditions;
• the nature of the infringement;
• wilfulness; and
• moral damages.

In deciding on the quantum of damages, the court may appoint an expert to provide technical expertise. Specialist expertise is very common in Turkish court practice, especially in relation to the calculation of damages.

Article 149 of the IP Law provides the legal basis for claiming damages in trademark infringement cases, including both material and moral damages.

12 Appeals

12.1 Can the decision of a first-instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

Türkiye has a three-tiered judicial system that is followed until a case is resolved, comprised of:

• the first-instance courts
• the regional courts of justice; and
• the Supreme Court.

Parties that are adversely affected by a first-instance decision have the right to file an appeal before the regional courts, whose decision can be appealed before the Supreme Court. The Supreme Court's decision is final and cannot be appealed.

Typically, a party intending to appeal a trial court decision must file an appeal within two weeks of the date of the judgment.

The appellate courts primarily assess whether the lower-instance court correctly interpreted and applied the law, examining whether it accords with legal principles and procedural rules.

The appellate courts do not typically re-examine or reconsider the factual evidence presented during the trial phase. The appeal process focuses more on examining legal errors or incorrect application of legal principles by the lower court rather than re-evaluating the facts of the case.

12.2 What is the average time for each level of appeal in your jurisdiction?

The duration of appeals can vary significantly. Appeals proceedings usually take a year or more, depending on:

• the complexity of the case;
• the workload of the appellate court; and
• other procedural factors.

13 Costs, fees and funding

13.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

There are several costs and fees involved in litigation, including:

• the fee charged for filing a lawsuit;
• attorneys' fees;
• expert witness fees;
• evidence collection expenses; and
• notification costs.

These fees and expenses are updated every year in accordance with inflation.

The court costs incurred during litigation can also include:

• expenses for expert reports;
• expert witness fees;
• witness fees; and
• other related court costs.

If the court's judgment must be enforced, additional enforcement costs will apply for actions carried out by bailiffs. In certain special cases, the court may require guarantees or deposits.

In the Turkish litigation system, the winning party can recover certain costs under Article 326 of the Code of Civil Procedure. These includes not only general litigation costs, but also fees initially paid by the plaintiff, such as:

• attorneys' fees;
• expert witness fees; and
• evidence collection expenses.

The attorneys' fees awarded by the court differ from the service fees between the attorney and the client and are determined on the basis of a tariff issued each year. If there are multiple defendants, they are jointly and severally liable for these costs. The court may allocate costs proportionally if the case is partially won by both parties.

13.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

Under Turkish law, attorneys' fees:

• are typically set according to market conditions; and
• must comply with the minimum fee schedule recommended by the Turkish Bar Association.

Contingency fees are prohibited. According to the Law on Attorneyship, attorneys' fees may be freely agreed between the attorney and the client. However, the attorneys' fee payable by the client cannot exceed 25% of the value of the subject matter of the lawsuit or proceeding. This percentage:

• applies only to the attorneys' fee awarded at the end of the lawsuit; and
• cannot be increased by special agreements between the attorney and the client.

Alternative fee arrangements are permissible as long as they adhere to ethical and legal standards. Attorneys and clients may agree on various fee structures, including:

• hourly rates;
• fixed fees; or
• a combination of both.

Hourly rates are based on the time spent on the case, while fixed fees are predetermined amounts that do not depend on hours worked. The combination method involves both a fixed fee and an hourly rate, allowing for flexibility in payment arrangements.

13.3 Is third-party litigation funding permitted in your jurisdiction?

In Türkiye, there are no specific laws or regulations on third-party litigation funding, making its legality ambiguous and open to interpretation. These funding methods are not explicitly addressed in the Attorneyship Law or other related legal provisions. In Türkiye, attorneys are prohibited from receiving contingency fees whose payment is based on the outcome of the case. This type of fee arrangement is considered unethical and contrary to the professional rules of conduct. Third-party litigation funding may indirectly conflict with these ethical and professional constraints.

14 Protection of unregistered marks

14.1 Is any protection available for unregistered marks in your jurisdiction?

The IP Law provides rights for unregistered trademarks based on prior use. According to Article 6 of the IP Law, if rights to a non-registered trademark or another sign used in the course of trade were acquired prior to the filing date or claimed priority date of a trademark application, the application will be refused upon opposition by the owner of the earlier-used sign. This opposition is based on the rights established from prior use. Unregistered trademark owners may also rely on the unfair competition provisions of the Commercial Law.

14.2 Under what circumstances may foreign trademarks not registered in your jurisdiction be enforced?

According to Article 6 of the IP Law, trademarks that are well known in Türkiye in accordance with Article 6bis of the Paris Convention can be protected even if they are not registered in Türkiye.

If a foreign trademark has been used in Türkiye and has acquired a significant reputation among the relevant public, it might be protected under the related provisions and unfair competition.

15 Trends and predictions

15.1 How would you describe the current trademark litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

Concrete steps have been taken in relation to artificial intelligence (AI) and trademark litigation, including a proposed legislative reform in the Turkish Grand National Assembly. This proposal, inspired by the EU AI regime, defines concepts such as ‘provider', ‘distributor', ‘importer' and ‘AI operator; but excludes AI activities related to the public. Although the proposal tasks supervisory authorities with detecting violations, it does not specify which institutions these will be. While this proposal is a positive step, it is still at an early stage.

Looking forward, key developments are anticipated in Turkish trademark law. Expected legislative reforms may align the IP Law more closely with EU standards and international best practices. These changes could:

• enhance procedural efficiency;
• strengthen protection for well-known trademarks; and
• address challenges related to digital branding.

Reforms could include:

• strengthened enforcement mechanisms;
• heightened penalties for infringement; and
• improved strategies for combating counterfeit goods.

The digital transformation is likely to spur new regulations on online trademark issues, including domain name disputes and protection of digital brand assets. Additionally, specialised IP courts may be established to handle complex IP disputes with greater expertise. Strengthening international cooperation in IP matters, particularly with neighbouring countries and key trading partners, is also anticipated to improve the management of cross-border trademark issues.

16 Tips and traps

16.1 What would be your recommendations to parties facing trademark litigation in your jurisdiction and what potential pitfalls would you highlight?

Our first recommendation is to consult an attorney. Monitoring the litigation process along with an attorney will benefit clients at all stages of the litigation. One pitfall worth highlighting is that trademark litigants frequently face a counterclaim. Clients and attorneys should thus adjust their strategies accordingly.

An unfortunate consequence of the abundance of registered trademarks in Türkiye is the number of bad-faith registrations. Swift and decisive action should be taken against infringers, counterfeiters and unauthorised users of trademarks, to protect them and discourage other potential infringers.

Registered trademarks are at risk of cancellation if they are not used for a period of five years following registration. Additionally, non-use of a registered trademark will weaken its protective power, as legal action against similar trademarks cannot be pursued based on trademarks which are not in use. Therefore, the genuine use of trademarks is crucial.

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.