|1. Retail Services Chaos in Class 35 - 2013|
|2. The Resolution of Dispute between Copyright Societies and Users in the Light of the Draft Copyright
Law - 2013
|3. A Comparative Law Perspective of the Protection of Unregistered Industrial Products Under Turkish Unfair Competition Law - 2012|
|4. An Assessment on Registration Procedure of Designs in Turkey - 2012|
|5. Discussions on the Convenience of Criminal Sanctions for Patent Infringement - 2012|
|6. Influence of Invalidation Action against Utility Models on Third Parties - 2012|
|7. Compensation of Interest for Author and Owner of the Structure in Case of Architectural
Works of Art - 2011
|8. Examination of Absolute Novelty by Witness Experts in Invalidation Actions Regarding Industrial
Property - 2011
|9. Partial Invalidation of Designs - 2009|
|10. National Treatment in Intellectual Propert Law and Obligation of Giving Guaranty for Foreigners in - 2007
|11. The Influence of Invalidation Decisions on Industrial Property Rights - 2006|
|12. Intellectual Property Rights: Practical Problems and Some Recommendations - 2005||Summary - Eng
Full Text - Tr
|13. Comments on the Decisions of Turkish Constitutional Court on the Utility Models and Trademarks:
The Issue of Incompatibility with the Constitution - 2004
|14. "Informed User" in Design Law and Some Problems in Practice - 2003|
|15. Invisible Designs in EC and Turkish Law - 2002|
|16. The Legal Situation of Designs Which does not Leave any Option to Its Designer - 2002|
|17. Protection of Utility Models in EU and Turkish Law (I) - 2002|
|18. Protection of Utility Models in EU and Turkish Law (II) - 2002|
|19. Cumulative Protection of Designs in EU and Turkish Laws - 2002|
|20. The Usage of Designs for Repair Purposes - 2001|
|21. Conditions of the Protection of Registered Designs in EU and Turkish Law - 2001|
|1. A Comparative Law Perspective of the Protection of Unregistered Industrial Products under Turkish Unfair
Competition Law- 2012
|Full Text - Tr|
|2. Remarks on the Draft Design Law – 2009|
|3. International Protection of Designs- 2006||
|4. Problems of Publishers on Intellectual Property Law and Proposed Solutions- 2006||
|5. Practical Problems on Design and Utility Model Protection – 2005||Full Text - Tr|
|6. Striving against Piracy and Printing Sector- 2004||Summary - Eng
Full Text - Tr
|7. Legal Protection of Packaging and Graphic Designs- 2003||Summary - Eng
Full Text - Tr
|8. Protection of Spare Part Designs or Straggle of Keeping the Independent Automotive Industry Alive- 2002||Full Text - Tr|
Q. Is Turkey signatory to international conventions?
Turkey became a party to some conventions and international agreements, such as Paris in 1925 and Bern in 1952. Starting in 1995 Turkey approved the other fundamental agreements, such as WTO / TRIPs, PCT, Madrid Protocol, The Hague, Rome, WCT and WPPT.
Q. Is multi-class trademark filing allowed in Turkey?
Turkey adapts multi-class filing and registration system, enabling new applications to be filed in multiple classes, with a reduced official filing fee being applied to each class after the first initial filing.
Q. Is there any specialized IP courts in Turkey to handle IP cases?
In 2001 the specialized IP Civil and Criminal Courts were established in Turkey. Since then the specialized courts have been handling the IP related cases. Currently there are more than 10 IP courts in Istanbul, Ankara and Izmir. In the other cities provincial courts are authorized to handle IP cases. Especially in the recent years both the number and the quality of the court decisions have been increasing and the case law has been developing rapidly with the decisions of both first-degree IP courts and the Supreme Court.
Q. How the IP Court proceeding procedure?
The written proceeding procedure is recognized as the general procedure for the civil and criminal court actions in Turkey. The proceedings in IP cases are carried out according to the general proceeding procedure. The judges, who command the IP courts, come from a law background and the technical issues are solved by the assistance of experts. Before IP court; invalidation of a present registration, cancellation of a given verdict, determination of the infringement occurred, determination of the absence of the infringement, assignment of the right as a result of usurpation, prevention of the infringement, annulment of the consequences of the infringement, compensation for the damages occurred, seizure of the products and instruments that are subjected to infringement, acknowledgement of the property right to the right owner on these products and instruments or their annihilation and announcement of the ruling to the public can be claimed.
Q. How is the Criminal IP Court proceeding procedure?
In the criminal cases, investigation and prosecution are subjected to a complaint by the right holder in principle. In other words, a public action cannot be filed ex-officio, unless the person, whose rights are violated, files a complaint against the infringers. There are also some exceptional cases, such as bandrol crimes, that are ex-officio investigated and prosecuted by the public prosecutors and the courts.
The right owner may withdraw his/her complaint or renounce his/her action any time before the verdict is finalized. The case drops with the withdrawal of the complaint or the renouncement of the case. In the cases, where there is more than one perpetrator, the case drops totally even when the complaint is withdrawn only for one or several perpetrators. A person, who withdraws his/her complaint or the case, may file a complaint or a case again with respect to the same issue. Therefore, withdrawal of the case depends on the permission of the defendant. However, the plaintiff does not require the permission of the perpetrator to renounce the right of filing a complaint or a case regarding the mentioned violation. Yet the person, who renounces his/her right, is not entitled to file a case or a complaint on the same issue later on. The case will drop in the event of waiver of the right, just like it happens in the abandonment or withdrawal.
Q. Is it possible to request a transfer of property right in criminal cases?
In civil suits, the right owner may request the transfer of the property right of the counterfeit products and instruments to him/her. However in the criminal suits, it is not possible to grant the property right of the products and instruments to complainant. In practice, the civil and criminal cases are filed usually simultaneously. The possession of the counterfeit products is generally given either to complainant or to perpetrator in their capacity of trustee. In the proceeding phase, it can be alleged by both parties that the products that are subjected to examination are not the same with the ones that were seized. In order to eliminate this prejudice, to give the possession of the products that are claimed to be counterfeit to the court safety room is the most appropriate solution.
On the other hand, just like in the general procedure, preliminary injunctions can be demanded in criminal and/or civil courts actions based on IPRs.
Q. Who bears the burden of proof in IP related actions?
The burden of proof is generally on the plaintiff. However there are some exceptions of this general rule. For instance, in the invalidation actions based on the non-use of the trademark, the burden of proof is on the defendant. In other words, in the invalidation actions based on non-use ground, it is sufficient for the plaintiff to claim that the trademark has not being used. If the trademark has actually being used, it is expected from the defendant to prove it. Otherwise, it is deemed as the plaintiff proved his/her case and the case would be accepted. Besides these exceptions, the burden of proof is always on the plaintiff.
Q. What is the expected duration of the proceeding in IP court actions?
The duration of a civil or a criminal court action filed before the IP courts is approximately 1 to 3 years in Turkey. There are several reasons under this lengthy period of time. For instance; the courts generally appoint an expert panel for examination of the file and when the report is lacking or not adequate or upon the objections by the parties, it sometimes become compulsory to appoint a second or even a third expert panel for re-examination of the file. Thus, duration of the expert examination(s) on the file takes around 1 to 2 years.
Upon the appeal of the verdict held by the IP court, the duration of the appeal examination before the Supreme Court takes approximately 15 to 18 months. Additionally, re-examination of the decision of the Supreme Court can also be demanded and the re-examination phase usually takes 6 to 8 months. Briefly, the approximate duration of the finalization of an IP court decision including the appeal and the re-examination phases takes 1 to 5 years.
Q. What is the approximate cost of the proceeding in IP court actions?
The cost of proceedings and the attorney fees in Turkey are very low compared to European countries. According to the data of WIPO Magazine, February 2010 Edition, for a patent case it is paid approximately 100.000 Euro in Spain, 80.000-150.000 Euro in France, 750.000-1.500.000 Euro in UK as attorney fees, whereas in Turkey approximately 10.000-50.000 Euro is requested as an attorney fee.
The official costs of proceedings are also very low in Turkey. For instance, the official filing fee of an invalidation action is less than 100 Euro. In the further phases of the proceeding, the file is sent to a panel of experts, consist of 3 people. The fee for the expert panel is approximately 750 Euro. In the case, when the file is sent to a new panel of experts, the mentioned amount shall be paid for the new expert examination as well. On the other hand, the official cost of appealing an action is approximately 100 Euro.
As in action for damages, in the cases, in which the matter of dispute is a certain amount of money, a certain percent of that amount, namely % 0.60 is deposited in the treasury of the court as the legal fee.
Q. How to request for preliminary injunction?
When there is a risk that the action in dispute might create an important danger or cause an irreparable damage, then the judge has the right to decide for a preliminary injunction against the defendant at the beginning of or during the court action. In this context the owner, whose for instance trademark has been damaged has a right to demand preliminary injunctions, such as the cessation of the acts of infringement of the trademark rights of the plaintiff, the seizure of the infringing goods or ordering the placement of security for damages to be compensated.
Q. Is it allowed to request preliminary injunction with main court action?
A preliminary injunction request can be filed before the filing of the main court action (ex-parte) or within the plaint petition at the time of the filing of the main action or during the trial at the first instance phase. It is allowed to file the request until the end of the first instance proceeding. If there is a preliminary injunction request prior to the filing of the main action, the subsequent court action (main action) must be filed within 10 days after the issuance of the preliminary injunction.
All the evidences that will be submitted during the main court action must be submitted in advance when the request of preliminary injunction is filed. If the preliminary injunction request is ex-parte filed before the main court action, all the evidences that have already been submitted together with the preliminary injunction request must be re-submitted to the main file. This process prevents the advancement of the case and thus the decision and also brings extra costs. Therefore if there is not a very crucial and/or specific situation there is no need to request an ex-parte preliminary injunction prior to the main action and it would be better to file the request within the plaint petition for the main action.
Q. How long it takes to get a preliminary injunction?
The process may be concluded in 1 to 2 months if the judge decides to continue to the proceeding in the absence of the defendant, without sending any notification to him/her and also decides not to seek an expert report. However if the notification has made to the defendant and both of the parties has been called out to the courts and the judge decides to send the case file to an expert then this period may be lengthen to 10 months. If the action is also considered as a criminal act then it is preferable to file a criminal complaint to the public prosecutor other than requesting a preliminary injunction case when the length of the preliminary injunction proceeding in the civil courts are considered. The preliminary injunction decisions that are held within at least 2 months can be obtained in 2 to 3 days from the public prosecutor.
Q. How is the procedure of securing the deposit in preliminary injunction?
The judge can rule in favor of preliminary injunction either gratuitously or by obliging the plaintiff to secure a deposit in return. When the deposit is obligatory that the party who got the preliminary injunction decision in favor must secure the amount of deposit in Turkish Liras in cash or lay up the letter of guarantee to the court’s payment office. The letter of guarantee can only be issued by the national banks of deposit. In practice it is not possible for a foreign enterprise that has neither a domicile nor an official branch in Turkey to obtain a letter of guarantee from the Turkish deposit banks. As a result the foreign firms may only secure a deposit in cash.
The deposit will be held in the pay office of the court until the decision of the first instance court is become final and binding. Yet if the case is dismissed in the end of the proceeding and the defendant suffer damages, for example because of the preliminary injunction preventing him from use of the trademark, the defendant is entitled to file an independent court action in order to compensate his/her damages from this deposit. However it has to be mentioned that the rejection of the main case does not necessarily mean that the preliminary injunction decision was unlawful and/or the defendant has been suffering damages because of this decision. The defendant is obliged to prove that he/she had suffered losses precisely because of the unlawful preliminary injunction and to submit solid evidences to show the size of his/her damages.
Since the secured deposit is not being valued in any ways, the amount of money that was secured loses its value as the time passes in the course of proceedings. This is the most essential element that impels the firms to think twice before requesting a preliminary injunction. The amount of the deposit may vary according to the volume of the enterprises of the both parties and/or the context of the commercial activity that will be prevented by preliminary injunction. This amount can be a couple of thousand or of hundred thousand Turkish Liras. In the special cases such as an infringement of a pharmaceutical patent, the million Turkish Liras can be requested as the guarantee. Within this year in one of the cases where our firm is representing the plaintiff, it was held to a preliminary injunction against the biggest Turkish national bank by the IP courts under the obligation of securing an amount of 150.000 Turkish Liras (app. 75.000 Euro) as a deposit. As a result the use of the trademark in consideration has been ceased as a precautionary measure. This amount is one of the highest amounts that have been appraised by the IP courts so far.
Q. What is the cost of expert panel in IP cases?
In the practice of Turkish Law, the IP courts seek the assistance of experts nearly in every single case related to copyrights, patent, trademark and design law and unfair competition. The Supreme Court obliges the examination of experts even in the matter of similarity among trademarks and depends on the reason that the disputes regarding IP law necessitate special and technical knowledge.
There are three people in the expert panels in general. It is usually assessed 1.500 TL (700 Euro) in total as the fee of three experts, approximately 500 TL for each. However this amount may vary according to concrete case and can be raised to the amount of 4.500 TL (2.000 Euro). As there is a possibility that the case file may be sent to a second or even a third panel of experts according to the situation this cost can be doubled or tripled.
The party who lost the case pays also the expert fees. However it must be mentioned that the plaintiff pays the fees of experts in advance after the court appoints the panel of experts. In the case of plaintiff winning the case the amount of money that plaintiff has paid as the expert fee will be collected from the defendant at the end of the trial.
Q. Is there any obligation of securing deposit for foreigners?
According to the art.17 of the Hague Convention there may be no security, bond or deposit of any kind imposed by reason of their foreign nationality, or of lack of domicile or residence in the country, upon nationals of one of the contracting states, having their domicile in one of these States, who are plaintiffs or parties intervening before the courts of another of those States. As a result nationals from the contracting states of the Hague Convention shall be exempted from this obligation for the cases filed in Turkey.
With the exception of Hague Convention and the bilateral agreements that recognize the principal of reciprocity among the contracting states, it can be easily declared that the ones who file or follow up or intervene in a case in Turkey have the obligation to secure a deposit. This procedural rule is enforceable for all types of cases as well as IP. The deposit that is demanded during the filing is an institution related to the procedural law. Therefore it is not possible to state that the principal of national treatment in TRIPs and/or Paris Convention shall dissolve the obligation to secure a deposit for a foreigner. In other words; the articles regarding national treatment among the contracting states in TRIPs and Paris Convention does not hinder the art.32 of International Private and Civil Procedure Code that obliges the foreigners to secure a deposit; nevertheless art.17 of the Hague Convention does.
Q. Is Turkey allowed parallel importation?
Parallel importation is the importation of a product, which has been put on the market in another country with the permission of the right owner, to a market, in which the right is protected. The case, where a product that possesses an IP right is put on the market in the country of the right owner by the right owner himself, then exported to abroad and then imported back to the right owner’s country is called re-importation. In re-importation the product is first put on the market in the territory (for example in Turkey), than exported to another country (for example to Germany) and afterwards imported back to the country, where it was first put on the market (to Turkey).
According to the national exhaustion, it is possible for the right owner to prohibit the parallel importation; however it is not possible for him to prohibit re-importation.
The national exhaustion principle acknowledged in Turkish IP legislation has turned into a different shape during the legislative applications. The Supreme Court has acknowledged a different system, which stands in between national and international exhaustion. The action of putting on market even one product with the permission of the right owner in Turkey causes the right to exhaust regarding the same products that is put on the market in abroad. Therefore, the products that are put on the market in abroad can be imported to and sold in Turkey without permission from the owner of the trademark by the third parties. Actually this application corresponds neither to national nor to international exhaustion. Thus, both in national and regional exhaustion the right exhausts only with respect to the concrete products that has been put on the market with the permission of the right owner in the related country or region.