A quick look at Turkish Industrial Property Law, No: 6769
On 10.01.2017, Industrial Property Law, No: 6769 (“IPL”) was published on the Official Gazette and Trademark, Utility Models and Patent Rights were all secured under one unified law text. Just as the previous law, some of the acts that constitute a violation of trademark are stated and subject to criminal sanctions similar to IPL.
Unfortunately, there is no criminal sanction against violations of patent, design or utility model rights and the only option would still be filing civil action against such activities in order to prevent and/or remove the violation or to demand for indemnification.
Article 30 of Industrial Property Law, No: 6769 states criminal sanctions against violation of trademark and we can see the number of actions that are defined as criminal acts have been increased. Decree Law on Protection of Trademark, No: 556 used to regulate criminal sanction only against any person “who violates the trademark owned by another party by excerption or confusion to PRODUCE, EXPOSE FOR SALE OR SELL”, meanwhile the number of such acts have been increased and have also been listed particularly by IPL.
Pursuant to the Article 30 of the Industrial Property Law, No: 6769, any person who violates the trademark right owned by another party by excerption or confusion to;
Produce: The term “Producer” was also defined in previous law as is in IPL. Therefore, the producer of counterfeit product shall be sentenced to a criminal sanction.
Provide Services: The term “Services” was also defined in previous law but in practice, it was not possible to file a criminal lawsuit against any person who was providing or producing services under a trademark owned by another party. The most of our applications as per a complaint for the act above were dismissed as such act is subject to “civil law dispute” by the prosecutors and/or Criminal Courts. IPL brings in a new term, “Provider of Services”. As per the new term, if providing services by excerption or confusion violates a trademark owned by another, such provider shall be sentenced to a criminal sanction. We will experience how judicial authorities will respond to this matter when such claims are made however what we believe the law text is clear enough by defining “providing services under an officially registered trademark owned by another without agreement to do so”. For example, smartphone repair stores using trademarks of world’s famous brands such as “XXX Authorized Service” or auto mechanics services such as “XXX Authorized Auto Mechanic” should be under the protection of this article. Restaurants using a name similar to a well-known restaurant’s name to confuse customers into thinking they are the actual trademarked name should fall under the protection of this law. For example, a restaurant owner using “Room and Rimous” title to confuse any person into thinking they have connection with the restaurants registered under “Room and Rumors” trademark and provides similar services could face criminal sanctions. Finally, we would like to emphasize that IPL itself and its grounds does not include required explanations, for this reason court rulings and precedents will enlighten us about how the law will be applied.
Expose for Sale or Sell: These are the same actions that were also subject to criminal sanctions in the previous law. Any person who sells counterfeit products or exposes for sale shall be sentenced to criminal sanction. For example, there is no doubt that a retail store owner is committing a crime once he exposes for sale by keeping the counterfeit products in his window. Therefore, expose for sale or sale of the product do not have any differences in terms of the applications of criminal sanctions.
Import or Export: The terms also existed in the previous law even though some judicial authorities used to evaluate the importing act as “SELLING” and were ruling against companies that were importing counterfeit products. However, when it comes to exportation of counterfeit products, after counterfeit products were seized by directorates of customs, criminal complaints made against such exporters were dismissed. The purchase of counterfeit products by commercial means did not fall under the scope of previous law as a criminal act and the only way to act against such action was through filing a civil case before civil courts, by obtaining a preliminary injunction and then confiscating such products. However, as the prosecution process takes a long time and warranty payments for obtaining preliminary injunctions were too high for trademark right holders, such process was not preferable. IPL clearly states the act of importing and exporting as criminal actions, thus counterfeit products seized by Directorates of Customs shall be subject to a simple criminal complaint against the firms that export or import counterfeit products and the criminal cases will be filed thereof. This process will speed up the process of confiscation of counterfeit products.
Purchase by Commercial Means: IPL aims to stand in the way of commercial enterprises and traders who used to have benefit of purchasing counterfeit products as such act was not listed as a criminal act in the previous law. For instance, if commercial enterprise trading smartphone accessories buys bulk of counterfeit smartphone batteries, it shall constitute a criminal act. A commercial enterprise which focuses on trading cellphone accessories will obviously trade products it has purchased whether the products are authentic or counterfeit. Therefore, IPL defines the act of commercial purchase as a criminal act in order to prevent the act of selling.
Occupy or Store by Commercial Means: Occupying or storing counterfeit products by commercial means shall constitute criminal act under this article in order to prevent counterfeit products to be subject to commercial activities. If counterfeit products were not provided for sale while they were being commercially occupied or stored, lawsuits were used to be dismissed at the time of previous legislation. Even when there was no doubt that such products were commercially stored and would be provided for sale, previous law did not list acts of commercially occupying or storing as criminal acts, hence such rulings were achieved. Thanks to the IPL, it removes such difficulty.
Transportation by Commercial Means: Prior to IPL, the seizure of transit passing counterfeit products at Customs, was quite complicated as not all the jurisdiction authorities sustained a unified practice as to which way to be followed. When senders and receivers both were located in foreign countries, the lawsuits were being delayed for months as the presence of parties cannot be obtained and according to TRIPS agreement provisions, lawsuits for destroying counterfeit products were filed against carrier firms. But as according to Supreme Court’s precedents, filing against carriers as a party of the lawsuit was not lawful. Now, IPL makes it possible to file a lawsuit against the transporters.
This article covers any person transporting counterfeit products domestically, aside from customs. Many counterfeit products without any invoices are seized during highway controls. However, as there is no invoice provided, it was not possible to take legal action against relevant people. Now, IPL allows us to take a criminal legal action against carriers.
Any people who takes part in such acts as above-mentioned shall be sentenced to imprisonment from one year to three years and with monetary fine of up to twenty thousand days.
Apart from the acts mentioned above, both previous law and IPL states;
Any person removing trademark marking on product or packaging without authorization to do so, shall be sentenced to imprisonment from one year to three years and with monetary fine of up to five thousand days.
Any person transferring, licensing or trusting a trademark owned by another party without legal authorization shall be sentenced to imprisonment from two years to four years and with monetary fine up to five thousand days.
Fast Destruction Procedure
One of the main problems regarding trademark procedures in practice was used to locate seized products. Especially storing counterfeit products seized at Customs brings a serious burden on Directorates of Customs. Unfortunately, counterfeit products seized by the actions out of customs could not be stored in official repository, therefore counterfeit products are being held on private storages till the trials become final. To shorten the duration of preservation of seized counterfeit products, IPL adopts fast destruction procedures.
Article 163 of new Turkish IP Law;
According to provisions of this law, in the case of seized products are object of a criminal act and cannot be preserved at official repository because of quantity, dimensions or quality of said products, after enough amount of samples are taken under the directive of Chief Public Prosecutor Office, if sampling is possible, rest of the products that are subject to criminal act are sent over to local treasury agency. Information such as quantity, quality, dimension with samples of seized products are reported and delivered to Chief Public Prosecutor Office.
Pursuant to first paragraph, if products that are subject to a criminal act, are sent over to local treasury agency after sampling, are subject to damage or substantial loss of their value or preservation constitutes a serious burden, after an official survey report is obtained during the prosecution process and before the ruling is given by the Court, the Judge shall rule for the physical destruction of the products upon the request of Chief Public Prosecutor. Destruction process shall be executed in the presence of commission of three members lead by Chief Public Prosecutor, formed by treasury agency and a relevant minute will be issued.
Previously, the seized counterfeit products were not be able to submitted to official repository because of financial and location disadvantages and were transferred directly to private depositaries. IPL states that counterfeit products shall be submitted to local treasury agency and after an official survey report is obtained, products shall be destroyed before the trial is final.