Trademark Infringement

A trademark is a concept that distinguishes a product or service from similar ones and therefore needs to be protected. The unauthorized use or imitation of a trademark is an absolute right with real effect. Based on these definitions, it is an unavoidable necessity for the trademark owner to have legal protection against potential attacks. In cases of potential trademark infringement, the trademark owner has several legal avenues to pursue.

When looking at the definitions of the concept of a trademark, the common points are as follows: firstly, the trademark must be distinctive in nature, distinguishing the product/service it relates to from similar ones. Personal names, shapes, pictures, logos, letters, numbers, the shape of the product/packaging, three-dimensional shapes, colors, even taste and smell, can be registered as trademarks, provided they comply with legal requirements.[1] Absolute/relative grounds for refusal in trademark and trademark registration are regulated in Articles 4 et seq. of the Industrial Property Law (IPL). If there are absolute grounds for refusal, registration is not possible under any circumstances, while if there are relative grounds for refusal, the application may be rejected upon objection. After passing these stages, the trademark right will provide legal protection to its owner. Publication of the registration in the Bulletin is the beginning of the trademark registration's effect against third parties. It should be noted that the protection period of the registration is regulated as 10 years; renewal will be required every ten years. (IPL Article 23/1) Therefore, it is possible for the trademark owner to file a compensation lawsuit in case of prohibited actions or infringements. According to the regulation, the trademark owner may request the prevention of the following actions: (Trademark Law, Article 7/2)

• Use of a mark identical to the trademark on goods/services covered by the registration
• The use of a sign that could be mistaken for a public trademark or confuse with other goods/services covered by the deferral program
• If the trademark in question is well-known, regardless of whether it meets the criteria of being identical or similar, unfairly profiting from its recognition or using a sign without justifiable cause that will damage its reputation is prohibited

The use of the mark in the commercial field may also be prohibited in accordance with paragraph 2 in the following cases (SMK art.7/3):

• Placing a mark on the packaging or the product
• Placing on the market, offering to deliver, or stockpiling for these purposes goods bearing the mark, or providing or offering services using the mark
• Export or import of goods bearing the mark
• Use of the mark in the undertaking's business documents or advertisements
• Using the mark on the internet without having the right to use it in order to create a commercial effect
• Use of the mark as a trade name/business name
• The unlawful use of the mark in comparative advertising

It is important to note that trademark registration provides legal protection only within a specific region/country. As can be expected, in today's world, such limited protection is unfortunately insufficient for the trademark owner. Therefore, international protection can only be achieved through international agreements and protocols. The Madrid Protocol is one such example. An international application made under this protocol will also bring with it the same legal protection and consequences as within the country.

As mentioned above, the trademark owner has avenues to pursue when their trademark rights are subjected to various attacks and infringements. Generally speaking, trademark infringement is a commercial act and a specific form of unfair competition.[2] As understood from the regulations of the Trademark Law, trademark rights provide protection only to the trademark owner; in other words, it is an exclusive right. Trademark infringement/infringement of trademark rights is addressed in two articles of the Trademark Law: Article 7 (scope) and Article 29 (infringement of trademark rights). According to these articles, in a possible situation, the trademark owner may request the cessation of the existing acts considered as infringement, the prevention of acts that pose a risk of infringement, or compensation for the damages arising from these acts.[3] It should be emphasized that trademark infringement can only occur if it is for a commercial purpose and produces commercial results.[4] In other words, simply using the trademark without the permission of the trademark owner will not result in trademark infringement. In other words, while the act of selling an imitation product of a brand on the market for the purpose of making a commercial profit may be considered a trademark infringement, a student using the brand's logo in a presentation assignment would not be considered within this scope because it does not have a commercial purpose.

Actions constituting trademark infringement are regulated in Article 29 of the Trademark Law. Accordingly:

• Use of the trademark in the cases specified in Article 7 without the permission of the trademark owner
• The brand is imitated to the point of being indistinguishable from similar brands
• Selling, distributing, commercializing, importing, exporting, possessing for commercial purposes, or offering to enter into a contract relating to a product bearing the trademark, knowingly or having reason to know that the trademark is being counterfeited
• Unauthorized expansion or transfer of rights granted by the trademark owner through licensing

In cases where a trademark owner faces such circumstances, they must first prove ownership of the trademark in the lawsuit they file. This is only possible with a registration certificate. To reiterate the claims that the party alleging trademark infringement may make, using common provisions (Article 149 of the Trademark Law):

• Determining whether the act in question constitutes rape
• Preventing a possible rape
• Stopping existing acts of rape
• The relevant violation should be removed and compensation should be provided for the resulting material and moral damages

In conclusion, trademark rights, which aim to distinguish a product or service from similar ones and provide legal protection to its owner, are subject to infringement if used without the owner's permission, particularly for the purpose of generating commercial profit and constituting acts defined in legal regulations that produce commercial results. In this case, the claims that the trademark owner will pursue against those who committed these acts through legal action will be within the scope of the legal protection of trademark rights.

[1] Eyüp Can Karaca, “Trademark and Trademark Rights from a Legal Perspective”, The Journal of Europe – Middle East Social Science Studies, 1 (1), p.43, https://dergipark.org.tr/tr/pub/jemsos/issue/18644/196766 (Access Date: 18.05.2023).

[2] İlhami Güneş, “Applied Trademark Law in the Light of the Industrial Property Law”, 2nd Edition, Adalet Publishing House: Ankara, February 2020, p. 304.

[3] Age, p.315.

[4] Age, p.329.