Claims and Lawsuits that the Rights Holder Can File in Case of Infringement of Industrial Property Rights

Industrial property rights are intangible rights that protect the creative, innovative, and distinctive work of businesses and individuals, such as trademarks, patents, utility models, designs, and geographical indications. In today's economic system, a company's most valuable asset is often not its factory or inventory, but its brand or patented technology. Rights with such significant economic value inevitably become targets for malicious third parties, leading to infringements we call "industrial property infringement.".

In the Turkish legal system, the protection of industrial property rights is regulated by the Industrial Property Law No. 6769. This law offers a wide range of legal protection to the rights holder whose rights have been infringed, from halting the infringement to compensation for damages. In this article, we will discuss what a rights holder whose industrial property rights have been infringed can claim from the courts, the types of lawsuits they can file, the nature of these lawsuits, and the crucial institution of interim measures, all within an academic framework but in a language accessible to everyone, avoiding the tediousness of legal terminology.

1. What is the concept of Industrial Property Rights Infringement?

As a rule, in order for an industrial property right to be protected, it must be registered with the Turkish Patent and Trademark Office (TÜRKPATENT). Registration grants the right holder the exclusive right to use that right, while prohibiting third parties from using it without permission.

Industrial property infringement occurs when a protected trademark, patent, design, or utility model is produced, imitated, sold, imported, exported, or used outside of a contract for commercial purposes without the permission or consent of the rights holder. For example, printing and selling a garment that is identical or indistinguishable from a registered trademark, copying the production method of a patented machine part, or imitating an original furniture design constitutes direct industrial property infringement.

In such cases, the law does not leave the rights holder unprotected. Depending on the nature of the infringement, the rights holder can file various lawsuits in civil courts (Intellectual and Industrial Property Rights Courts) to seek redress for the infringement and compensation for the damages suffered.

2. Step Preceding or Simultaneous with Filing a Lawsuit: Provisional Injunction

Industrial property lawsuits, by their nature, require technical examinations, expert reports, and on-site inspections, and therefore can be lengthy. In a scenario where a lawsuit lasts two or three years, the defendant's continued release of counterfeit products onto the market can lead to the rights holder completely losing market share, damaging brand value, and suffering irreparable harm.

To mitigate this risk, our legal system of precautionary measures . A precautionary measure is a court decision that temporarily protects the rights of the rights holder in cases where delay would be detrimental, without waiting for the outcome of the main case.

Conditions and Scope of the Provisional Measure

To request an interim injunction, the rights holder must present two essential points to the court:

• Approximate Proof: The rights holder must prove "approximately" that they own the industrial property right and that there is a serious threat of infringement or an ongoing violation of this right. Absolute proof is not required; it is sufficient to create a strong conviction of their claim.

• Risk of Harm: It must be clearly demonstrated that failure to grant the injunction would significantly hinder or completely prevent the attainment of the right, or would result in serious harm.

What precautionary measures can be requested?

Under the Turkish Commercial Code, the court has very broad powers to prevent or stop infringement. The rights holder may request the following interim measures from the court:

• Temporary suspension of acts constituting infringement of industrial property rights.

• The seizure of counterfeit products manufactured or imported through illegal means, as well as the molds, machinery, and tools used in their production, at customs, on roads, or at production facilities, and their safekeeping in a secure location.

• Depending on the nature of the infringement, the offending business may have its operations completely or partially suspended, or access to its website may be blocked.

• To secure compensation for any damages that may arise, a precautionary attachment or injunction may be placed on the defendant's assets (bank accounts, vehicles, real estate).

The Collateral Issue

When issuing interim injunctions, courts generally require the plaintiff to deposit security (cash or a bank guarantee letter) in case the court rules against the possibility of the plaintiff losing the case. This is because if the plaintiff is found to be in the wrong at the end of the trial, the defendant will recover the damages suffered due to the injunction from this security. However, if the rights holder's situation is very clear and delay would be disastrous, the judge may issue an injunction without requiring security.

3. Legal Cases Filed in Cases of Infringement of Industrial Property Rights

Lawsuits filed against industrial property rights infringements are fundamentally divided into three groups according to the nature of the purpose sought: Declaratory Actions, Performance Actions , and Constitutive (Innovative) Actions. In practice, rights holders combine these types of lawsuits and apply to the court with a single petition. For example, claims for the determination of the infringement, its cessation, and compensation can all be made in the same lawsuit.

Now let's examine these cases and the specific claims of the rights holders within the scope of these cases in detail.

A. Declaratory Judgments (Judgment for the Determination of Rape)

A declaratory judgment lawsuit is a request to the court to formally determine whether a legal situation or right exists, or whether an action constitutes an illegality. In industrial property law, this lawsuit is called a "declaratory judgment lawsuit for infringement."

The primary purpose of this type of action is to definitively determine, through judicial means, whether there is an ongoing infringement or a certain future threat of infringement. The key characteristic of declaratory actions is that the court has no power to compel the defendant to do anything or pay any price. The court simply declares, "Yes, the defendant's actions constitute infringement of the plaintiff's trademark/patent," and thus registers the situation.

So, if it has no executive power, why is this lawsuit filed?

• Legal Interest: The rights holder resorts to this method to create a solid legal basis for future compensation claims. Once the infringement is established by a court decision, the elements of fault and tort are confirmed.

• Relationship with Evidence Gathering: Often, rights holders urgently request "evidence gathering" from the court because they fear that counterfeit products will quickly disappear from the market. Evidence gathering and infringement proceedings proceed side-by-side, with evidence of the violation being recorded.

B. Enforcement Cases (Executable Cases)

Actions for enforcement are a type of lawsuit aimed at compelling the defendant to do something, give something, or refrain from doing something. In industrial property rights infringements, these are the lawsuits in which the rights holder obtains the main protection and has direct enforcement power over the defendant.

Eda cases are further divided into subcategories such as prevention, cessation, removal of rape cases, and compensation cases.

1. Case for the Prevention of Rape

This lawsuit is filed against a threat of infringement that has not yet begun but has a very high probability of occurring, and for which there are concrete indications. The aim is to prevent the violation from happening in the first place.

• Example: You learn that a competitor has built a massive facility to manufacture products using your patented technology, started advertising, but hasn't yet begun production. In this case, you can prevent production from starting by filing an infringement lawsuit.

2. Case for Stopping and Preventing Rape

If the act of sexual assault has already begun and is ongoing, this is a lawsuit filed to put an end to the violation. The court orders the defendant to immediately cease their unlawful actions.

• Example: This case concerns a retailer selling bags with your registered design in their store, and seeking to stop and prohibit this sales activity.

3. Case for the Elimination (Rejection) of Rape

Stopping rape is sometimes not enough on its own. Even if the violation has stopped, the consequences of the past act of rape may still remain. An abolition of rape action aims to erase all material consequences of the violation from the world. In this action, the rights holder may make the following claims:

• Destruction and Seizure: The plaintiff may request that ownership of the infringing products, counterfeit goods, packaging, molds, machinery, and equipment used to produce these products be transferred to them, or that they be destroyed at the defendant's expense.

• Removal and Modification: Requests may be made to remove signs bearing counterfeit brands, shut down websites or cancel domain names, or scrape off lettering on vehicles.

4. Claim for Monetary Damages

Infringement of industrial property rights is essentially a tort, and according to the principles of the Code of Obligations, the party causing the damage is obligated to compensate the injured party. Monetary compensation aims to cover the decrease in the rights holder's assets caused by the infringement. The Industrial Property Law has provided significant ease for the rights holder in calculating monetary compensation and has specifically regulated the concept of lost profits

The rights holder may claim not only the actual damage suffered (e.g., expenses incurred in detecting counterfeits, direct losses) but also the lost profits. According to the law, lost profits are calculated using one of three methods, at the rights holder's choice:

• The Plaintiff's Potential Earnings: This calculates the amount of profit the rights holder would have typically earned from exercising the industrial property right themselves, had the infringement not occurred.

• Defendant's Profit: This is based on the net profit obtained by the infringer through the unauthorized use of the industrial property right. This method is usually revealed by examining the defendant's business books.

• License Fee (Hypothetical License): The amount demanded as compensation is the reasonable license fee that the infringer would have had to pay if they had legally leased the industrial property right through a license agreement. This method is known as the easiest and least risky way to prove infringement.

5. Claim for Non-Pecuniary Damages

The infringement of industrial property rights not only leads to economic loss; it also damages the commercial reputation, market standing, and credibility of the rights holder (whether an individual or a company). The presence of low-quality counterfeit products in the market under your brand can completely destroy the image you have built in the eyes of customers. The rights holder may request appropriate compensation from the court for the distress, suffering, and loss of commercial reputation caused by these actions.

C. Innovative (Law Procedures)

Construction lawsuits are legal actions that create a new legal situation, modify an existing one, or completely eliminate it through a court decision. In the field of industrial property, the most common construction lawsuits are nullification lawsuits. However, these lawsuits are usually filed by the accused party, not the victim, for defense purposes.

However, from the perspective of the rights holder, in cases of usurpation of industrial property rights (for example, the registration of an invention in the name of someone else without the permission of the true inventor), the true rights holder "Transfer of Registration to Him Due to Usurpation of Rights ." If the court accepts the lawsuit, the registration is transferred from the former unlawful owner to the true rights holder. This is a completely new decision.

4. Additional Requests: Publication of the Decision and Registration in the Registry

The rights of the rights holder who wins the case are not limited to receiving compensation or having the products destroyed. The law also grants the rights holder the right to inform the public and satisfy their sense of justice.

Announcement of the Court Decision

After the court ruling is finalized, the rights holder may request that a summary of the decision be published in national or local newspapers, on television, or online, with the costs borne by the defendant. This publication serves as a deterrent to other players in the market, while also sending a message to consumers that "The person who produced those counterfeit products has been found guilty; I am the original." It is a vital request for the restoration of commercial reputation.

Recording the Decision in the Register

The court decision (especially those changing ownership or defining the boundaries of an industrial property right) is recorded in the official register at the Turkish Patent and Trademark Office. Thus, the legal status of the right becomes binding on third parties as well.

5. Statute of Limitations Periods

The right to file a lawsuit in cases of industrial property infringement does not last forever. For the sake of legal certainty and market stability, the legislator has set specific time limits. Since industrial property infringements are considered torts, the statute of limitations for torts in the Turkish Code of Obligations also applies here.

Accordingly:

• The rights holder 2 years from the date they learned of the act of infringement and the identity of the perpetrator .

• In any case, the right to file a lawsuit expires after 10 years from the date the offense was committed

However, there is a crucial legal nuance here: If the act of infringement continues uninterrupted (for example, if the defendant continues to produce and sell the counterfeit product every day), the statute of limitations does not begin to run. As long as the act continues, the rights holder can always file a lawsuit. The time limits begin to be calculated from the moment the act of infringement completely ceases.

Conclusion

Industrial property rights are the lifeblood of the modern business world. Violation of these rights is not only an individual injustice but also a major blow to fair competition in a free market.

The Industrial Property Law No. 6769 provides rights holders with very powerful, flexible, and effective weapons against infringement. An individual or institution facing a rights violation can obtain immediate protection through preliminary injunctions, register their claim through declaratory judgments, and pursue all their rights through performance lawsuits, from the destruction of counterfeit products to the recovery of every penny of lost profits.

The key is to implement a professional legal strategy from the moment the violation is detected, to gather evidence without concealing it, and to file lawsuits in the right court with the right claims before the statute of limitations expires. It should be remembered that every right that is not protected and defended is doomed to disappear over time.