Importance of online brand enforcement increases

In 2021, covid-19 lockdown measures decreased, as did the effect of the covid-19 pandemic on legal transactions.

Despite the pandemic, applications for IP rights increased last year, according to the Turkish Ministry of Industry and Commerce. In 2021, the Turkish Patent and Trademark Office received 191,779 trademark applications, 176,493 of which were domestic applications. The Ministry declared that trademark applications increased 12.4% compared with last year. The number of design applications and utility model applications increased, whereas the number of patent applications slightly decreased.

Statistics from the Turkish Statistical Institute reveal that the rate of ordering goods and services online continued to increase in 2021.

According to a staff working document of the European Commission, Turkey continued to be among the top producers of counterfeit beverages, perfumes, cosmetics, shoes, clothing and personal accessories in 2021.

Domain names and websites

Keywords, meta tags and hashtags

The Turkish authorities have limited power with regard to domains that are subject to uniform domain-name dispute-resolution policy (UDRP) proceedings. They can block access to domains from Turkey but cannot grant any decisions regarding ownership or block access to all domains.

Turkey’s country code top-level domain (ccTLD) is ‘.tr’. Domain extensions can be registered before the local authorities and are not subject to UDRP proceedings.

Recently, METUnic, an accredited registrar, announced that the transfer of the management of the ‘.tr’ domain name, which has been carried out by METU (Nic.tr) since 1991, to the ‘.tr’ Network Information System (TRABIS) is expected to be completed soon.

To register and renew a domain name, applications are filed through accredited registrars. Nic.tr is currently the authorised body to handle domain name disputes arising from ccTLDs.

After the transfer to TRABIS is completed, the registration and renewal processes will be handled through the registrars, but there will be important differences with regard to domain name transactions.

For the ‘.com.tr’, ‘.net.tr’ and ‘.org.tr’ domain extensions, documents showing the right to the second-level domain (SLD), such as trademarks and company names, are required. After the transfer, most of the ‘.tr’ domain extensions, including ‘.com.tr’, ‘.net.tr’ and ‘.org.tr’, will be registered on a first come, first served basis, and documents will be required only for the ‘gov.tr’, ‘edu.tr’, ‘bel.tr’, ‘k12.tr’, ‘av.tr’, ‘dr.tr’, ‘pol.tr’, ‘tsk.tr’ and ‘kep.tr’ extensions.

During the transfer period, the registrars will take backorders from applicants that are registering ccTLDs without documentation. Back orders will provide a priority right to the applicants, and payments of the back orders will be returned to applicants that cannot obtain the ccTLDs after the transfer to TRABIS is completed.

An important change will come into effect for the sale and assignment of ccTLDs three years after TRABIS enters into service. It is currently not possible to sell or assign ccTLDs since ccTLDs are registered on a right and the only way to obtain a specific ccTLD is through assignment of the base right (eg, the trademark) from the previous owner and then an application to register the ccTLD. Three years after TRABIS enters into service, it will be possible to sell or assign ccTLDs through registrars.

The following situations constitute exemptions with regard to the transfer of ccTLDs during the three-year period:

• domains can be transferred to legal heirs in cases such as the death, absence and presumptive absence of the registrant;
• legal entities can transfer their domains in transactions such as mergers and takeovers; and
• IP rights holders can transfer their domains if the IP right is transferred to a third party.

It is possible to file an objection against a domain registration. Objections against all ‘.tr’ domains are examined by Nic.tr, which is strict when it comes to proof of ownership.

In some conflicts with ‘.tr’ domains, it may be better to apply directly to the courts. The courts will resolve matters in which a domain is registered for the trade name of a registrant but the sign used as an SLD is also another party’s trademark.

After TRABIS enters into service, domain name disputes will be handled by accredited dispute resolution service providers; however, the domains that will be subject to dispute must be registered or renewed after TRABIS enters into service. The Information Technologies and Communication Authority will have discretion to handle disputes arising from domains that are registered before TRABIS.

In disputes before dispute resolution providers, the opponent must prove the following:

• the domain name is the same or similar to the opponent’s earlier right (eg, trademarks registered or actively used in commerce and commercial names);
• the registrant does not have any legal right or connection to the domain name; and
• the registrant registered or used the domain in bad faith.

The actions arising from domain names before the courts are mostly based on trademark infringement in accordance with Article 7(3)(d) of the IP Code; however, it is also possible to request the cancellation or assignment of a domain regarding unfair competition, the nullification of a trademark or the cancellation of the trade name.

Where the rightful trademark owner has a registration in Turkey, the following must be proven:

• the SLD is identical or similar to the plaintiff’s trademark;
• the domain is used for identical or similar goods and services with the trademark, creating a commercial impact; and
• the domain owner has no rights in or legal affiliation with the SLD.

The courts may decide to cancel the domain or, on request, may assign it to the trademark owner. The courts may also block access to the domain as a final decision or a preliminary injunction on request of the plaintiff. The Access Providers Union is the responsible authority for applying those court decisions.

If the attacked domain is registered as a trademark and the rightful owner has no earlier trademark registration in Turkey, a nullification action against the trademark and cancellation or assignment of the domain can be claimed. In addition, the rightful owner may request the cancellation or assignment of the domain in an unfair competition action.

Before taking such action in court, it is advisable to have online evidence available to avoid data loss. Determination of evidence can be made through the notary public’s online platform or a court action. Website content may constitute a separate infringement from the domain name.

Since the domain name would not be the subject matter of the dispute, the court would not decide to cancel or assign the domain; however, it may decide to block access to the website or to remove the infringing content from the website.

Even though no infringing content is present on the website or domain name, people who wish to be seen in search results and gain an advantage from a well-known mark may use keyword advertising, meta tags and hashtags to draw customers to that website. Those uses may be deemed trademark infringement by the IP courts.

The courts have discretion to prevent the defendant from using the mark as a keyword, a meta tag or any other similar use. If the content of the defendant’s website is also infringing, the courts may decide to remove the infringing content from the website or block access to that website or page.

Social media

Many social media platforms are used for online shopping and product promotion. If a trademark is used unfairly on a social media platform, the trademark owner can claim trademark infringement and unfair competition. Evidence determination is preferred to avoid data loss.

Even though the courts can determine unfair use on social media, related URLs cannot be blocked because most social media platforms use the hypertext transfer protocol secure (ie, HTTPS), and the authorities are not permitted to block access. In practice, the courts will remove the infringing content from the social media account.

Spam

Email and other communication channels are used for advertising purposes. Spamming is a method by which unwanted commercial messages are sent. If spam messages comprise an identical or similar sign to a trademark, it may be considered trademark infringement.

According to Article 6 of the E-Commerce Law No. 6563 (the E-Commerce Law), it is prohibited to send commercial advertising messages without the recipient’s prior approval.

Liability regime

Several individuals may be liable based on court decisions regarding online domain use. If a decision determines that the use of a domain results in trademark infringement, the infringer who owns the domain is directly responsible.

According to Law No. 5651, after notification of a violation, hosting providers and access providers are responsible for removing content. Where a court decision orders that access to a website or URL be blocked, the Access Providers Union should block access to that website or URL. Where use on a social media platform is deemed infringing, the platform should remove the content. If the decision orders the cancellation of a ccTLD, Nic.tr should cancel the subject domain.

If the decision determines the online use of a sign to be unfair competition, service providers are responsible pursuant to the Commercial Code No. 6102. If the decision determines that the online use is against the E-Commerce Law, the infringer – as the service provider – is responsible.

Online and offline: the sale and promotion of counterfeits

Owing to the increase in online sales of counterfeits, organising raids at the premises, stores, warehouses or places of manufacture of infringers is no longer enough to deal with counterfeiting. Likewise, targeting only online sales channels will not bring satisfying results. Brand owners must adapt their brand protection strategies to cover both online and physical platforms.

Online and on-site investigation strategies

Determination of the scope of infringing activities through online and on-site investigations is essential to build the best cause of action against infringers.

The biggest problem that blocks investigations against online sellers is the anonymity of the online marketplaces that they hide behind. To eliminate this problem, investigation firms will purchase a suspected product online to track down the source and ascertain whether the goods are counterfeit.

For on-site investigations, it is vital to disclose information and evidence to be used during potential legal actions, such as addresses, samples, receipts and photographs of the premises and counterfeit items. The collaboration of investigators with local councils is essential to maintain control over local investigative activities, since Turkey has no regulation establishing the rules of private investigations, and privacy is protected as an absolute right under the Constitution.

Tackling the online sale of counterfeits and ISP liability

Where the seller of counterfeit products can be determined, a right holder can obtain legal remedies in the usual manner through civil and criminal trademark infringement and unfair competition actions; otherwise, the right holder can request to block access to the related websites from Turkey or remove the infringing content through legal action.

Internet service providers (ISPs) must remove infringing content upon the written request of a right holder (Law No. 5651). ISPs may also be held responsible for helping infringers by filing civil and criminal trademark infringement and unfair competition actions.

Offline enforcement actions

Customs measures

Customs monitoring plays a key role in challenging counterfeits in Turkey since Turkey is a transit country between Asia and Europe. Numerous fake products are either manufactured in Turkey or come from the Middle East or Asia, with the intention of moving on to Europe via Turkey.

According to the Customs Code No. 4458 (the Customs Code), trademarks, patents, designs, copyrights and geographical signs can be recorded within Custom’s monitoring system for the seizure of (suspected) counterfeit goods via a simple online application to the directorate general of Customs. On acceptance of the applications, the recordal reflects all local customs authorities’ systems. It remains valid for one year and can be renewed annually unless the IP rights expire during that period. Customs monitors imported and exported goods passing through Turkey in transit and in free trade zones.

On determining suspected counterfeit goods, Customs will temporarily seize the goods and notify the right holder or its representative. The right holder must then obtain and submit a preliminary injunction order from a civil IP court or a criminal raid order within 10 working days for the permanent seizure of the counterfeit items. The 10-working-day term is extendible by up to a further 10 working days at the request of the right holder and if accepted by Customs. Before deciding whether to pursue legal action, the right holder may need to examine the seized goods or their photographs to verify their counterfeiting nature.

Where it is possible to pursue either criminal or civil proceedings to obtain a permanent seizure order, criminal proceedings are advised since the claimants may be requested to pay guarantee amounts for the issuance of a preliminary injunction order by the civil courts.

According to the simplified destruction procedure established under the Customs Code, counterfeit goods may be destroyed by Customs without a court order on a joint request of the right holder and the owner of the goods.

Customs has ex officio authority to seize suspected goods for unregistered IP rights and invite the right holder to take any necessary action within three working days; however, the recordal system is undoubtedly more beneficial and is highly recommended.

Criminal proceedings

Article 30(1) of the IP Code reads:

anyone manufacturing goods or providing services with identical or confusingly similar trademarks to another’s, offering for sale or selling, importing or exporting, buying, keeping, shipping or stocking them for commercial purposes shall be liable to imprisonment for one to three years and a judicial fine of up to 20,000 days.

Criminal proceedings against infringers begin with a criminal complaint of a registered brand owner before the Prosecution Office. Where the right holder claims a criminal raid order, this request is examined by the prosecutor with priority and then, in the case of the prosecutor’s approval, the file is sent to the Criminal Courts of Peace, which will have the final say on raid order requests. On issuance of a raid order, the police conduct a raid, which the right holder’s representative is recommended to attend. The claimants are required to submit solid evidence for the acceptance of raid order claims, which is why pre-investigations are crucial.

When the criminal complaint is found lawful, the prosecutor prepares and sends its indictment to the criminal court, and a criminal court action is brought on acceptance of the court’s indictment. According to the ‘fast destruction’ process established under Article 163 of the IP Code, the prosecutor may also request a destruction order from the criminal court if there is a risk of damage, serious loss of value or if the storage incurs considerable expense where the counterfeit nature of the goods is confirmed by an expert report.

Criminal court actions mostly result in imprisonment or a fine. If the indictee has no criminal record, the declaration of the verdict may be suspended under Article 231 of the Code of Criminal Procedure on the indictee’s request. In that case, the indictee will be under supervisory control for five years, and the verdict will be declared if it commits another crime within that period.

The court can also decide on the destruction of the counterfeit goods during the trial or at the end of the proceedings.

According to Articles 253 and 254 of the Code of Criminal Procedure, the courts must also apply the reconciliation process and invite the parties to seek reconciliation before deciding on the complaint.

Civil court actions

The IP Code regulates civil remedies aiming to prevent the infringement of IP rights even before infringement takes place.

A registered right holder may demand determination or cessation of the infringement, as well as damages by filing a civil court action.

According to the IP Code, ex parte or inter partes preliminary injunctions are also applicable, entitling the courts to issue preliminary injunctions to secure final judgments. Where the claimants prove the likelihood of infringement or ongoing infringement, the courts tend to grant a preliminary injunction.

Claimants are usually required to deposit a guarantee amount that is determined by the courts depending on the merits of the case. This guarantee is kept by the court until the verdict is finalised and is refunded to the claimant unless the defendant claims any losses. The defendants may ask the courts to lift preliminary injunctions in return for guarantees; however, in practice, the courts mostly refuse such requests.

The amount of compensation is determined by the courts through the calculation of any losses incurred by the right holder and any profits made by the infringer as a result of the infringing acts.