In this letter, we will briefly discuss the necessary actions to be taken regarding trademark infringement, a common issue faced by companies. These actions must be taken promptly.
Trademarks are protected under the Law on Intellectual and Artistic Works No. 5846 (hereinafter referred to as “FSEK”). By being registered, trademarks are protected within the framework of intellectual property as intellectual works. In cases of imitation, theft, or use through confusion, there are various legal and criminal protection methods available to safeguard trademark rights.
Under the FSEK, the following lawsuits may be filed to prevent trademark infringement and remedy the damage:
•Lawsuit for the Removal of Infringement
•Lawsuit for the Prevention of Infringement
•Lawsuit for Compensation
Similarly, under FSEK Article 71, a criminal complaint may be filed to initiate a criminal lawsuit against those infringing upon trademark rights.
In any situation involving the infringement of trademark rights (e.g., direct use of the trademark, use of a similar mark), the first step is to file a lawsuit for the determination of infringement and violation. As a result, a lawsuit for the removal of infringement and compensation may be filed to end the infringement and compensate for the damage. Furthermore, a criminal complaint may be filed. Alternatively, this matter can be resolved through an agreement with the opposing party.
1. Case for the Dismissal of Rape
The lawsuit for the removal of infringement (“tecavüzün ref’i davası”) is a legal action that can be filed if the rightful owner’s financial and/or moral rights have been violated and the violation is ongoing. FSEK grants the right holder the authority to file a lawsuit for the removal of infringement in the event of a violation of their financial and/or moral rights over the work. Additionally, it allows the right holder to claim from the defendant “up to three times the amount of the fee that could have been requested in the event of a contract, or the current value determined in accordance with the provisions of this Law.”
1.1. Conditions
1.2. Parties
In a lawsuit for the removal of infringement (“tecavüzün ref’i davası”) filed for the violation of financial and/or moral rights, the first party to appear as the plaintiff is the owner or co-owners of the work. In addition to the owner of the work, other individuals may also have the right to file this lawsuit. According to Article 80 of the FSEK, “those holding related rights, like the owners of the work, may benefit from the right to file lawsuits for the removal of infringement, the prevention of infringement, and for compensation,” thus granting related right holders the authority to act as plaintiffs in lawsuits for the removal of infringement.
The FSEK does not regulate whether license holders, who have been granted the right to use one or more of the financial rights of the owner, may file a lawsuit for the removal of infringement. According to recent rulings of the Court of Cassation, license holders are not granted the right to file a lawsuit for the removal of infringement.
Professional associations, however, may hold the right to act as plaintiffs with respect to the rights they are authorized to follow (FSEK, Article 42). The individuals who can file a lawsuit for the removal of infringement in regard to moral rights are also those who hold the authority to exercise moral rights.
Other than the owner of the work, the following individuals may file a lawsuit for the removal of infringement: (a) if the work’s owner has not determined the manner in which their rights are to be exercised after their death or has not assigned this responsibility to anyone, the executor of the will; (b) if no executor is appointed, the surviving spouse, children, and appointed heirs in order; and (c) the parents and siblings of the owner of the work.
In a lawsuit for the removal of infringement, the defendant will be the individual who violated the financial and/or moral rights. If the infringement was carried out by representatives or employees of a business in the course of performing their duties, a lawsuit for the removal of infringement may also be filed against the owner of the business.
1.3. Competent and Authorized Court and Statute of Limitations
The legislator has not left the resolution of disputes related to intellectual property law to the general jurisdiction civil courts; instead, it has adopted the establishment of specialized courts as the competent courts. Pursuant to Article 76 of the FSEK, the competent courts for cases arising from legal relationships regulated by the FSEK are the specialized courts to be established by the Ministry of Justice. In judicial districts where Intellectual and Industrial Rights Civil Courts do not exist, the competent court will be the general jurisdiction civil courts.
The issue of the statute of limitations for lawsuits for the removal of infringement is not regulated under the FSEK. Therefore, in matters not regulated by the special law (FSEK), the provisions of the general law (TBK) regarding the statute of limitations will apply. The applicable statute of limitations under the TBK will be determined by the nature of the act subject to the removal of infringement.
If the act violating the financial and/or moral rights of the owner constitutes a tort under the TBK, the claims arising from the lawsuit for the removal of infringement will be subject to a statute of limitations of two years from the date the act and the perpetrator are known, and in any event, ten years from the date the act was committed (TBK, Article 72). However, if the claim arises from an act requiring punishment under criminal law, and the criminal law prescribes a longer statute of limitations, that statute of limitations will apply.
1.4. Determination of Compensation
Since the outcome of a lawsuit for the removal of infringement will directly impact the amount that can be claimed, it is necessary to distinguish between the amount that can be claimed in the event of a contract and the market value. Accordingly, the amount that can be claimed if a contract had been made will be determined based on the owner’s fee, i.e., the fee they have received or are receiving for other works (subjective fee).
For example, if the owner is charging users an annual license fee of 100,000 TL for a particular computer program, they may demand up to three times the license fee applied to other users (in this case, 300,000 TL) from those who used the program without entering into a contract with them.
1.5. Threefold Compensation in the Practice of the Court of Cassation
Lawsuits for the removal of infringement where the plaintiff demands up to three times the amount that could have been requested had a contract been made, or up to three times the market value in the case of financial rights violations under Article 68 of the FSEK, have been brought before the Court of Cassation, which serves as the appellate authority for first instance court decisions. As will be discussed below, while the Court of Cassation has not issued any rulings approving triple compensation in cases of competition violations under the Competition Protection Law, it has issued many substantive decisions regarding cases where three times the amount is requested in the context of violations of financial rights under intellectual property law.
In general, the Court of Cassation accepts the authority of the plaintiff to demand triple compensation in a lawsuit for the removal of infringement and overturns first instance court decisions that award single or double compensation when the plaintiff has demanded triple compensation. However, the court examines the plaintiff’s contributory fault in calculating the amount to be awarded, and it overturns first instance decisions that do not reduce the amount in cases where contributory fault exists, even though the FSEK does not require fault.
In one decision, the Court of Cassation stated that the first instance court is bound by the plaintiff’s demand for triple compensation under Article 68 of the FSEK and overturned a first instance decision that reduced the requested triple compensation to double compensation:
“The provision in Article 68/1 of the FSEK that the author ‘may request up to three times the amount of the damages’ grants the author the authority to demand up to three times the market value from the infringer in cases of violations of financial rights. In this respect, the right granted by the law to the author to demand up to three times the market value is a choice that belongs to the plaintiff, who is the author. The court cannot alter the selected demand. Therefore, while a judgment should have been made in consideration of the plaintiff’s demand for triple compensation under Article 68/1 of the FSEK, the decision to award double compensation for the reasons stated in the judgment was not found appropriate, and the decision was overturned in favor of the plaintiff.”
Following the Constitutional Court’s decision that Article 68 of the FSEK does not violate the Constitution, the Court of Cassation has not changed its stance in principle but has expressed it through different reasoning. In this context, the Court of Cassation stated the following in one decision:
“According to Article 68/1 of the FSEK… the right to exercise the option of increasing up to three times the amount belongs to the plaintiff, and although the reasoning in the Constitutional Court’s decision No. 133/33 dated 28.2.2013 rejecting the annulment request for this provision is not binding, it is of a guiding nature. Furthermore, this reasoning is not contradictory to our Chamber’s decisions No. 14831/17744 dated 27.11.2011 and the 4th Civil Chamber’s decision No. 5472/10458 dated 30.9.2002, which explain that the judge has discretion in determining the market value to be paid within this limit, taking into account Articles 66/4 of the FSEK and Articles 42 and 43 of the former Turkish Code of Obligations No. 818. Therefore, the decision to award double the market value for the reasons stated in the judgment was not found appropriate, and the decision was overturned in favor of the plaintiff.”
In conclusion, it can be seen that the Court of Cassation recognizes the plaintiff’s authority to demand triple compensation in lawsuits for the removal of infringement under Article 68 of the FSEK and overturns first instance court decisions that award single or double compensation when the plaintiff has requested triple compensation. The court does not grant the judge discretion in this matter and examines the plaintiff’s contributory fault in calculating the amount to be awarded, even though fault is not a requirement under the FSEK. It overturns first instance decisions that do not reduce the amount in cases where contributory fault exists.
Additionally, it can be said that the Court of Cassation has established settled case law on this matter, providing significant legal certainty and reliability for plaintiffs when filing lawsuits for the removal of infringement. Although there are instances where first instance court decisions awarding single or double compensation have been upheld in the Court of Cassation, this can be attributed to the specific circumstances of these cases (e.g., the plaintiff not appealing the decision, the plaintiff not amending their claim, or the defendant accepting the lawsuit), and such decisions do not contradict the settled case law of the Court of Cassation.
2. Case for Prevention of Rape
A lawsuit for the prevention of infringement (“tecavüzün men’i davası”) can be filed not for violations that have already occurred, but to prevent potential violations that pose a threat of occurring. If the violation has already occurred and there is a likelihood of its continuation or repetition, both the removal of infringement and the prevention of infringement can be requested in the same lawsuit. For the prevention of infringement, meaning the prevention of potential unlawful use, the fault of the infringer is not required. Article 66/3 of the FSEK is applicable in this context. Accordingly, the court will take necessary measures by considering: (a) the moral and financial rights that are at risk of being infringed, (b) the form of the infringement and whether fault exists, (c) the severity of the potential infringement, and (d) the potential damage that the opposing party may suffer if the infringement is prevented.
3. Compensation Lawsuits
3.1. Moral Compensation
Under the provisions of the FSEK, the owner of a work whose moral rights have been violated may file a lawsuit for moral compensation against the individual who committed the act of infringement. For this, there must be an unlawful act that constitutes a violation of the moral rights over the work. The existence of the infringement implies the occurrence of moral damage. The owner of the work is not required to separately prove the existence of moral damage in such a case. Additionally, it is not necessary for the person who committed the act of infringement to be at fault.
The moral compensation stipulated in Article 70/1 of the FSEK pertains to the violation of the moral rights over the work. It does not concern the personal rights of the owner. If there is an attack on the personal rights of the owner, moral compensation may be sought under the general provisions of the Turkish Code of Obligations. In such cases, fault on the part of the violator is required.
If the violation of the owner’s moral rights has also caused material damage and the person who committed the act is at fault, a claim for material compensation may also be made under the general provisions of the Turkish Code of Obligations.
3.2. Material Compensation
In cases of infringement on the financial rights over a work, the owner may also claim material compensation. Article 70/2 of the FSEK states that the provisions of the Turkish Code of Obligations regarding torts will apply in such situations. Unlike cases of moral rights infringement, for the right holder to claim material compensation, the person committing the infringement must be at fault, and the material damage must be proven.
The material damage subject to compensation may include: (a) a decrease in assets, (b) an increase in liabilities (resulting in debt), (c) preventing the reduction of liabilities, or (d) loss of profit, meaning preventing the increase of assets. The right holder may claim all of these types of damages.
If the infringement of financial rights also leads to moral damage, the right holder may claim moral compensation under the general provisions of the Turkish Code of Obligations.
3.3. Refund of Earned Profit
In cases of infringement on both the financial and moral rights over a work, in addition to the aforementioned compensation claims, the right holder may also demand that the profits obtained through the infringing act be handed over to them (FSEK Article 70/3). For instance, a person who publishes an unpublished work without the written permission of the right holder may have earned a profit as a result. In such a case, the right holder may request the return of this profit in addition to claiming material and moral compensation.
If the right holder has also claimed copyright compensation (up to three times the hypothetical contract fee), the copyright compensation will be deducted from the claimed profit. The court will then decide to return the difference to the right holder.