The unique business model of Marketplaces has always been an issue for IP right owners in terms of marketplaces' lacking mechanisms that enable IP right owners to take prompt action.

In order to address the relevant problem, among others in the e-commerce sphere, Türkiye introduced a number of critical amendments to the Law on the Regulation of Electronic Commerce numbered 6563 ("Law"), which regulates the actions of the actors in the field of E-Commerce, in line with the P2B Regulation and the Digital Services Act in force in the EU, last July.

Although the focus of the relevant amendments was to prevent the existing concentration in electronic commerce marketplaces, the amendment brought modifications in more than one title to the business conduct of the marketplaces.

One of these was the issue of "the responsibility of the marketplaces in terms of infringement of intellectual and industrial rights ("IP infringement)"  which concerns IP rights holders, including trademark and patent holders.

Following the said Law amendment, the details of the obligations brought thereunder were determined with the Regulation on Electronic Commerce Intermediary Service Providers and Electronic Commerce Service Providers ("Regulation") published in the Official Gazette on 2022.29.12.

It is possible to summarize the obligations of Electronic Commerce Intermediary Service Providers ("ECISP") (in other words, "marketplaces") and Electronic Commerce Service Providers ("ECSP") (in other words "sellers") concerning intellectual and industrial property rights as follows.

Complaint Mechanism Regarding Trademark And Patent Infringements Has Been Determined

Overview of the Process

In the Regulation, ECISPs are obliged to "first remove, then evaluate"  principlein the event that ECSPs (or sellers) violate any IP rights, including trademark, before the ECISPs (or market places).

In this context, in case a acomplaint is filed to ECISPs by a right holder regarding violation of an IP right, ECISP must first remove the product subject to the complaint within forty-eight hours from the receipt of the relevant complaint and then notify the situation to ECSP (or seller) and the right holder.

Subsequently, ECSPs are given the opportunity to object to the said complaint, and in case it is clearly understood from the information and documentation that the objection of ECSP is justified, ECISPs are obliged to republish the product subject to the complaint on the platform within twenty-four hours at the latest following the receipt of the objection.

Considering the relevant provisions, it is possible to conclude that the marketplaces will have to manage the IP right violation processes in a much more proactive position, and that it would be advantageous to establish a unit to manage the operational process.

However, it is believed that the phrase "if it is clearly understood from the information and documentation that the objection is justified" in the Regulation, will be subjective and may lead to various interpretations in practice specific to ECISP. It is our opinion that this situation will increase the availability of the right holders to access the right.

The details of the above-mentioned process are as follows

How and where do people whose intellectual and industrial property rights are violated submit their complaints?

According to the Regulation, anyone who believes that any of their IP rights have been violated must notify ECISP and include at least the following information in their complaint:

  • Registration Certificate/Bandrol/Activity Certificate:  The registration certificate showing the ownership issued by the Turkish Patent and Trademark Office, or a bandrol form issued by the Ministry of Culture and Tourism, or an activity certificate issued by a professional association within the scope of the Law on Intellectual and Artistic Works.

    " Details of Complainant: In case the complainant is a real person, his/her name, surname, Turkish identification number, address, e-mail address and KEP address, if any; In case the complainant is a legal entity, its title, address, e-mail address, KEP address, if any; and in case of a complaint filed as a proxy, the aforementioned information of the principal and the attorney, and a document showing that the attorney is authorized to represent the principal.

    " Justification: Reasons and evidence that the product subject to the complaint violates the intellectual and industrial property rights.

    " Website Address: The website address indicating the product subject to the complaint.

    " Statement of Responsibility:  The declaration that the applicant shall be responsible for any damages and losses that may result in case the information and supporting materials submitted with the complaint be untrue.

When ECISP receives the complaint containing the above-mentioned information, must remove the relevant product from publication within 48 hours at the latest and then notify ECSP and the right holder of the issue.

How to object to a complaint filed for intellectual and industrial property rights?

Despite the Regulation adopts the principle of "first remove, then evaluate", it also grants the ECSP the right to object to a complaint pertaining to IP Rights.

In this context, the complained ECSP has been granted the right to prepare its objection to include the following details as a minimum, and send it to ECISP;

  • Details of the Complainant:  The name, surname, or title of the complainant; in the instance of an objection submitted by a lawyer or authorized representative, then that person's name and surname, together with a document proving that they have the legal right to represent.

    " Justification:  The reasons for the objection; documents and evidence that the removed product does not infringe the intellectual and industrial property rights of the complainant.

    " Documentation of No Infringement of Rights:  Contracts, other documents, and evidence that demonstrate the owner of the intellectual and industrial property right or the individuals who placed the product on the market based on the owner's authorization given by the right oweber, starting from the right owner; invoices or other comparable documentation suitable for demonstrating the originality of the product;

    " Statement of Responsibility: The declaration thatthe applicant shall be responsible for any damages and losses that may result in case the information and supporting materials submitted be untrue,

How to Conclude the Complaints and Objections?

According the Regulation, in case it is determined that ECSP has a valid objection, ECISP to republish the product that is the subject of a complaint within 24 hours at the latest.

The parties reserve the right to file an application before the judicial and administrative authorities in accordance with the general conditions.

Through which channels are complaints and objections submitted to ECISP?

Complaints and objections must be submitted to ECISP via KEP, notary public, or the internal communication system*.

Approval Requirement Has Been Stipulated for Advertising Activities of ECISPs Regarding the Trademarks of ECSPs

In accordance with the Regulation, one of the regulations brought to ECISPs and ECSPs within the scope of trademark law is related o advertising activities.

In this regard, the Regulation states that ECISPs or ECSPs may not engage in any advertising or promotion activities through online search engines by placing advertisements on keywords consisting of registered trademarks that serve as the primary element of domain names of people with whom they are not in economic integrity**, as registered with ETBIS, without obtaining consent in writing or electronically.

Is it possible to complain in case consent is not obtained?

An ECISP that violates the obligation to obtain consent for advertising activities can be the subject of a complaint to the Ministry.

In case of detection of a violation, the Ministry notifies the relevant ECISP or ECSP regarding the termination of the violation.

Following receipt of the notification from the Ministry, ECISP and ECSP are obliged to stop the infringement and notify the Ministry accordingly within twenty-four hours.

ECISPs Have Been Obligated to Prepare Compliance Reports Every Year

According to the Regulation, medium-, large-, and very large-scaled ECISPs* should conduct an annual inspection of the contents provided by the ECSPs associated with them in order to identify any issues that may be in violation of the applicable laws and regulations, including the Industrial Property Law №6469.

They are also required to prepare a report regarding the inspection and submit it to the Ministry in April of the following year.
Additionally, it is mentioned that the report must include the subject of the violation, the applicable laws, detection methods and measures taken.

General Evaluation

Considering the Regulation and the obligations regarding intellectual and industrial rights, it is noted that the balance between the marketplaces and the relevant IP right holders has evolved in favor of the right holders, and an obligation to act proactively to a certain extent has been imposed on the marketplaces.

Since there was no specific procedure before the marketplaces regarding the products that constitute an infringement of IP rights, particularly infringements of trademarks and patents, it has been observed that the claims of right holders for infringements previously remained inconclusive or did not start at all.

With these regulations, it is considered that the marketplaces may be forced to become considerably more involved in the area of IP right violations and to establish seperate unit for those violations in order to manage their operational procedures for complaints and objections.

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.