TRADEMARK LAW AND TYPES OF LEGAL ACTIONS

TRADEMARK LAW AND TYPES OF LEGAL ACTIONS

I. Introduction

The concept and usage of trademarks have gained immense importance in every field today. A trademark can even influence consumers’ decisions on whether to purchase a product. Rights related to trademarks are protected through civil and criminal proceedings. In order to file a lawsuit based on trademark rights obtained through registration, these rights must have been infringed by third parties.

Trademark infringement must involve one of the cases specified in the Industrial Property Law (“the Law”). Unauthorized use of a registered trademark at the Turkish Patent and Trademark Office (“the Office”), or the knowing marketing, stocking, offering for sale, exporting, importing of goods or services bearing the mark, or refusing to disclose the source of such goods, constitutes an infringement of trademark rights.

II. Trademark Infringement

Article 29 of the Law explicitly defines acts that constitute trademark infringement. These include:

1. Unauthorized Use of the Trademark

Use of a trademark by someone other than the owner without permission constitutes an infringement. Unauthorized use occurs when no permission is obtained from the trademark owner, when permission is denied, or when a previously granted license has expired or is exceeded in scope.

Importing a registered trademark into Turkey without authorization, using a sign identical or confusingly similar to the trademark, keeping counterfeit goods in free zones, storing such products, or placing them on the market are all violations under the law. Any of these conditions may constitute trademark infringement.

2. Counterfeiting the Trademark

Another type of infringement is counterfeiting the trademark without the owner’s consent by using the trademark or a sign so similar that it may cause confusion. Use of a similar mark may cause confusion and harm the reputation of the original trademark. It is also important to note that counterfeiting does not only require imitation of the product but also of the mark itself.

3. Use of the Trademark or Its Confusingly Similar Sign

Even if the user is aware or should be aware that the mark is counterfeit, selling, distributing, renting, or otherwise commercializing goods bearing the sign, or storing them in customs for such purposes, constitutes trademark infringement.

In such cases, in order to file a lawsuit, the act of counterfeiting must exist. Moreover, the infringer must be aware or capable of being aware that the mark is counterfeit. Finally, the goods must have been subject to a commercial transaction.

4. Unauthorized Expansion or Transfer of License Rights

If the licensee expands the scope of the granted license rights or transfers these rights to third parties without authorization, this constitutes an infringement of trademark rights. Unauthorized use may involve expansion of the license in terms of location, goods, usage method, or by using the trademark in combination with another mark or sign.

Additionally, transferring the license to third parties without consent also constitutes trademark infringement. All these issues must be evaluated in accordance with the law, and actions must be taken in a lawful manner. Otherwise, those who infringe trademark rights may face both legal and criminal consequences.

III. Conclusion

If trademark rights are infringed, various legal remedies may be sought. These remedies include both civil and criminal actions. To avoid any loss of rights, legal consultation is crucial in cases of trademark infringement. The possible legal remedies are summarized below:

1. Civil Lawsuits

In case of trademark infringement, the following types of lawsuits may be filed: determination of evidence, injunctions for cessation and prevention of infringement, declaratory actions, removal of infringement, and compensation claims. Compensation lawsuits may include both material and moral damages (including damage to commercial reputation).

In cases where ownership of a trademark is unclear or it is uncertain whether a third party holds any real or personal rights over the trademark, a negative declaratory lawsuit may also be filed, asserting that no infringement has occurred.

Parties may also request precautionary measures, such as stopping the infringement, seizure of goods, or providing security, if necessary.

As seen, various legal paths exist for addressing trademark infringement. Therefore, it is essential first to identify the dispute and take legal steps to protect the rights involved.

2. Criminal Lawsuits

The following acts are subject to criminal penalties: removing signs indicating trademark protection, falsely presenting oneself as the applicant or owner of a trademark, transferring or pledging trademark rights without having any legal authority, continuing to use a trademark after the protection period has expired, or after the trademark has been invalidated or annulled.

Moreover, any act listed in Article 29 of the Industrial Property Law is subject to criminal sanction. It is crucial to respect trademark rights and act in compliance with the law. Otherwise, legal sanctions will be imposed on infringers under the legislation.

Av. Sinem Orhan (Dipl.-Jur.)

Av. Anıl Coşkun, LL.M

www.anil-coskun.com

info@anil-coskun.com

Tel: +90 553 308 80 69

Av. Anıl Coşkun, LL.M. (Mainz)

Attorney-at-Law — Türkischer Rechtsanwalt at ANC Partners Law Firm

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