Rights Arising From Trademark Registration
RIGHTS ARISING FROM TRADEMARK REGISTRATION
A registered trademark grants exclusive rights to the trademark owner and protects the trademark owner against unfair actions committed by third parties.
The scope of the rights arising from trademark registration is explained in Article 9 of Decree Law No. 556.
The trademark owner may request the prevention of the use of their trademark without their permission and consent in the following cases:
1. The use of any sign that is identical to the registered trademark in relation to the same goods or services covered by the trademark registration,
2. The use of any sign that is identical or similar to a registered trademark and covers the same or similar goods or services as those covered by the registered trademark, thereby creating a likelihood of confusion among the public, including the possibility of an association between the sign and the registered trademark.
Actions that may be prohibited at the request of the trademark owner:
1. The use of the mark on goods or packaging may be prohibited. Since the use of a registered trademark or logo on goods or packaging by another party constitutes an infringement of trademark rights, this may be prohibited at the request of the trademark owner.
2. The marketing or stocking of goods bearing the mark in question may be prohibited. The marketing of goods bearing the trademark by another person without the trademark owner’s permission or approval constitutes an infringement of trademark rights.
3. The import and export of goods bearing the mark may be prohibited. That is, the import or export of goods bearing the trademark from abroad without the trademark owner’s permission also constitutes an infringement of trademark rights. Therefore, if a trademark registered in the name of another party in Turkey is produced solely for export purposes and sent abroad without entering the Turkish market, upon the trademark owner’s request, COUNTERFEIT PRODUCTS may be seized at the factories where they are produced, in warehouses, and at customs during export, and public prosecutions may be initiated by prosecutors against those who produce counterfeit products.
4. The use of the infringing mark or emblem in business documents and advertisements may be prohibited.
CASES OF TRADEMARK INFRINGEMENT
Trademark infringement is defined as “the use of the same trademark or a trademark that is indistinguishably similar to it in the course of trade on goods or services covered by the trademark registration without the approval of the trademark owner or the person authorized by the owner.”
Acts constituting trademark infringement are listed individually in Article 61 of Decree-Law No. 556. These acts are as follows:
1. Violation of Article 9 of the Decree-Law, which defines the scope of rights arising from trademark registration.
2. Counterfeiting the trademark by using the trademark or a trademark that is indistinguishably similar without the permission of the trademark owner.
3. Selling, distributing, or possessing for commercial purposes counterfeit trademarked products used in violation.
4. Expanding the license rights granted by the trademark owner without the trademark owner’s permission or transferring them to another party without permission.
5. Participating in trademark infringement acts, encouraging or facilitating the commission of infringement acts.
6. Refusing to disclose the source of counterfeit trademarked products.
THE TRADEMARK OWNER MAY BRING THE FOLLOWING ACTIONS AND CLAIMS IN CIVIL AND CRIMINAL COURTS:
1. The trademark owner may bring an action to determine the evidence of trademark infringement.
2. The trademark owner may request the cessation of trademark infringement.
3. The trademark owner may request the seizure of goods whose production or use is punishable by law, as well as the tools used to produce such goods.
4. The trademark owner may request that the ownership of the seized counterfeit products be transferred to them.
5. The trademark owner may request that the trademarks on the seized products and tools be removed, or if removal is not possible, that they be destroyed.
6. The trademark owner may seek material and moral compensation from those who use the trademark without permission.
7. The trademark owner may request compensation from the court for lost profits in addition to material and moral damages. Lost profits are calculated according to one of the following methods, at the discretion of the trademark owner, in accordance with Article 66 of Decree Law No. 556.
Based on the potential income the trademark owner could have earned from the use of the trademark if the infringer had not competed with them
Based on the income the infringer earned from using the trademark
Based on the license fee the infringer would have had to pay if they had used the trademark in accordance with the law under a license agreement.
8. The trademark owner may request that the court decision be made public through publication.
9. The trademark owner may request that customs authorities seize counterfeit products as a precautionary measure during import or export.
10. The trademark owner may file a complaint with the Public Prosecutor’s Office against those who commit trademark counterfeiting, and request that counterfeit products be seized by law enforcement authorities and that a PUBLIC PROSECUTION be initiated against those who produce and sell counterfeit products.