INFRINGEMENT OF TRADEMARK RIGHT AND WHAT CAN BE DONE.
It is stated in Industrıal Property Code No 6769; ‘’Trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor.’’ As a result of increasing commercial activities and production the importance of trademark is undeniable today. Accordingly, precautions to be taken against infringement of the trademark right and what can be done have also gained importance.
Infringement of trademark right:
Acts considered as infringement of trademark right according to Intellectual Property Code No. 6769 Article 29 are:
a) To use the trademark as set out in Article 7 without the consent of the trademark
b) To counterfeit the trademark by using the trademark or a confusingly similar
trademark without the consent of the trademark proprietor;
c) While being aware or should be aware that the trademark is counterfeited by use of
the trademark or a confusingly similar trademark, to sell, distribute, put on the market in a different form, possess for commercial purpose, import, export the products carrying
infringed trademark or to offer to make a contract related to this product,
ç) To broaden or to transfer to third parties, without consent, the rights given by the trademark proprietor through license.
(2) Provisions of second paragraph of Article 19 may be used as a defense in infringement proceedings. In this situation, the date of the proceeding shall be taken into account for determining the five-year period related to the use.
The mentioned Article 7 is the scope and exceptions of the rights arising from trademark registration. (The text of the article can be found in the footnote below.) In case of any of these situations, the trademark right is deemed to be violated, in this case, the Code has taken measures to protect the registered trademark. What can be done in this case will be mentioned below.
Criminal provisions related to trademark infringement
ARTICLE 30- (1) A person who produces or provides services, puts on the market or sales, imports or exports, buys for commercial purposes, possesses, transports or stores, while infringing a trademark right through quotation or likelihood of confusion, shall be sentenced from one year to three years of imprisonment and punished with judicial fine up to twenty thousand days.
(2) A person who removes the sign indicating the trademark protection from a product or packaging without authorization shall be sentenced from one year to three years of imprisonment or punished with judicial fine up to five thousand days.
(3) A person who makes, without authorization, a disposition of a trademark right, which is owned by someone else, by transferring, licensing or pledging shall be sentenced from two years to four years of imprisonment and shall be punished with judicial fine up to five thousand days.
(4) If the crimes indicated in the provisions of this Article are committed by acts of a legal entity, additionally specific security measures shall be taken.
(5) To give a sentence due to the crimes indicated in this Article, it is mandatory that the trademark is registered in Turkey.
(6) Investigation and prosecution of the crimes indicated in this Article are subject to complaint.
(7) If a person, selling or putting on the market a counterfeit product, submits information about where he acquired those goods and, thus, contributes to the detection of the producers and the seizure of the products, he shall not be sentenced.
Things To Do About Fringement Of The Trademark Right:
In case of fringement of the trademark right, it is possible to file a lawsuit for the termination and detection of the trademark violation. However, in practice, instead of a lawsuit, sending a “warning letter via notary” as a method that is more economical and results in less time is prefered. The content of this warning letter is important. Good explanation of the legal framework in a warning letter is very important in obtaining the desired result from this warning letter. In addition, it is possible to file a lawsuit for termination of the above mentioned detections and violations, especially if the result is not obtained from the warning letter. If the cases mentioned in Article 30 are violated, it is also important to take action in terms of criminal law by filing a criminal complaint with the prosecutor's office.
It is important that all these procedures are done by expert lawyers who are equipped with intellectual rights knowledge. For this reason, we believe that it is important to consider that lawyers who are also trademark patent attorneys are more experienced in the process and have a broader and different perspective.
 Scope of rights conferred by a trademark and its exceptions
ARTICLE 7- (1) Trademark protection provided by this Code shall be acquired by registration.
(2) Rights arising from trademark registration shall be granted exclusively to the trademark proprietor. The trademark proprietor shall be entitled to claim for prevention, in case of execution without consent, of the acts set out below:
4 a) Use of any sign identical with the trademark at goods or services that are in the scope of the registration.
b) Use of any sign identical with or similar to a registered trademark and covering identical or similar goods or services with the registered trademark, and is therefore liable to create a likelihood of confusion on the part of the public; including the likelihood of association between the sign and the trademark.
c) Use of any sign identical with, or similar to the registered trademark, irrespective of being for identical, similar or different goods or services, where the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark due to the reputation it has in Turkey.
(3) The cases set out below may be prohibited, if the sign is used in trade area, in accordance with paragraph two:
a) Affixing the sign to the goods or to the packaging thereof;
b) Putting the goods on the market, offering them as deliverable, or stocking them for these purposes under the sign, or offering or supplying services thereunder;
c) Importing or exporting the goods under the sign;
ç) Using the sign on business papers and advertisements of the undertaking.
d) Using identical or similar sign on internet media as domain name, router code, keyword or in similar manner with a commercial impression; provided that the person using the sign has no right or legal affiliation for the use of that sign.
e) Using the sign as a trade or company name;
f) Using the sign in comparative advertising in a manner that is against the law.
(4) The rights conferred by the trademark to its proprietor shall take effect against third parties as of the publication date of trademark registration. However, the trademark applicant shall be entitled to institute legal proceeding for compensation in respect of acts that occured after the date of publication of the trade mark application in the Bulletin, where those acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. The court may not decide upon the validity of claims raised before the registration is been published.
(5) The trademark proprietor may not prevent the honest use of his trademark by a third party, in the course of trade in the forms set out below:
a) Natural persons indicating their own name or address;
b) Making explanations concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;
c) Situations where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts or equivalent products.