JURISDICTION REPORT: TURKEY
TRANSIT OF COUNTERFEIT GOODS THROUGH TURKEY
Isik Ozdogan and Ezgi Baklaci Moroglu Arseven
Turkey was historically an important artery of the Silk Road and the Spice Route, and it continues to be a strategic crossroads between the European Union (EU) and Middle Eastern countries, and an important hub for international land, sea and air transportation. Considering that Turkey is the easternmost neighbour of the EU and many goods pass through it before entering Europe, Turkish customs are very important.
Even though goods have been transported to their final destination through Turkish customs for many years, the Turkish Custom Authority’s responsibility over goods in transit was much debated until the amendment made in Decree Law Regarding the Protection of Trademarks (No. 556). As the Decree Law No. 556 did not contain any regulation on this topic, it was up to the judge’s own discretion to determine whether counterfeit goods in transit constituted trademark infringement in Turkey.
While some courts required trademark owners to prove that goods in transit were at risk of being illicitly diverted into the Turkish market (or that there were serious and effective efforts by counterfeiters toward this end) before taking action, other courts accepted the idea that any suspected goods in transit could be detained and considered as trademark infringement if the requirements of Decree Law No. 556 were met. In short, based on a legal loophole, the legal status of goods in transit was open to interpretation and, before 2009, this led the courts to render many inconsistent decisions.
Aſter the amendment to Decree Law No. 556, the legal status of goods in transit seems much clearer in Turkey than in the EU, considering the Court of Justice of the EU’s decision in the Philips v Nokia case. Aſter the amendment, the text identifying “import and export” as infringement, was changed to “entrance of the infringing goods to the custom zone and being subject to a use or process which is confirmed by the Custom Authority”. It is obvious that the expression “being subject to a process which is confirmed by the Custom Authority” includes any action taking place in the customs zone, including the transit of goods through Turkey.
Te expression also means that as long as the goods in transit are subject to a customs process, storing the goods in an official storage facility or private storage in a free zone does not change the nature of the trademark infringement. In other words, the Decree Law No. 556 does not require any proof that the goods in transit will be illicitly diverted into the Turkish market before a legal right owner may take action. Based on recent decisions, it is also obvious that the courts do not even need to consider any unclear information (eg, address, name, destination, etc) of the importer before they may rule ın favour of the rıghtful trademark owner. Terefore, aſter the 2009 amendment, goods in transit through Turkish customs can be detained upon the right owner’s request.
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“IT IS VITAL FOR TRADEMARK OWNERS TO REGISTER THEIR MARKS IN TURKEY REGARDLESS OF WHETHER THEY PLAN TO CONDUCT BUSINESS IN THE COUNTRY.”
It should be mentioned that in order to detain goods in transit, the goods in question must comply with the definition of trademark infringement under Turkish Law. In order to constitute an infringement, the trademark should be registered in Turkey and, as a general rule, only the trademark owner can prevent a third party from using its trademark. If the trademark in question is registered in its country of origin and the country of destination, but not in Turkey, the goods in transit cannot be detained. Tis is why it is vital for trademark owners to register their marks in Turkey regardless of whether they plan to conduct business in the country.
In order to have suspect goods in transit detained, the trademark owner has to file a request to the Custom Authority. Even if it is obvious that the goods are counterfeit, the Custom Authority will not ex officio detain the products. However, in practice, the Custom Authority tends to inform the trademark owners of suspect products to give them a chance to take the necessary measures.
When goods in transit are detained, the trademark owner has to file a civil or criminal action against the alleged infringer. After an action has been initiated, the case turns into a regular trademark infringement case where the trademark owner can also request an injunction or financial compensation for its losses.
Since detaining counterfeit goods before they enter their final destination is one of the more effective techniques in the fight against counterfeiting, registering a trademark in the Turkish Custom Authority’s records is the best way for the trademark owner to be aware of suspect goods.
Isik Ozdogan is a partner at Moroglu Arseven. She can be contacted at:
iozdogan@morogluarseven.av.tr
Ezgi Baklaci is a senior associate at Moroglu Arseven. She can be contacted at:
ebaklaci@morogluarseven.av.tr
World Intellectual Property Review September/October 2012 115
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