I. INTRODUCTION
Criminal provisions on trademark infringement are set forth in Article 30 of Industrial Property Law No. 6769 (“Law No. 6769“), titled “Criminal provisions related to trademark infringement”.
Article 30 in Law No. 6769 lays down three different types of crimes: (1) producing or providing services, putting on the market or selling, importing or exporting, buying for commercial purposes, possessing, transporting, or storing, while infringing a trademark right through quotation or likelihood of confusion; (2) removing the sign indicating the trademark protection from a product or packaging without authorization; and (3) making, without authorization, a disposition of a trademark right, which is owned by someone else, by transferring, licensing or pledging.
In this article, titled “Offense of Trademark Infringement”, we will (i) trace the history of the offense of trademark infringement in Türkiye, (ii) explain the concept of trademark and the differences between the offense of trademark infringement and the offense of “unfair competition” regulated under Article 55 of Turkish Commercial Code No. 6102 (“Code No. 6102“) with reference to Article 62, (iii) address only the type of offense stipulated under Article 30/1 of Law No. 6769 in terms of its elements, (iv) examine the right to complain, the period of complaint, and the contrition provisions with respect to this offense, and (v) refer to the security measures to be applied to legal entities if they commit this offense.
This article will not cover the offenses of removing the sign indicating the trademark protection from a product or packaging without authorization (Article 30/2) and making, without authorization, a disposition of a trademark right, which is owned by someone else, by transferring, licensing or pledging (Article 30/3).
II. HISTORICAL OVERVIEW OF TRADEMARK INFRINGEMENT IN TÜRKİYE
The initial examples of international regulations for the protection of trademarks were seen in 1995, when the signatories to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) started to adapt their trademark legislation to this regulation.
Over the years, the European Parliament and the Council made various amendments to trademark legislation, which culminated in the enactment of Regulation (EU) 2017/1001 on the European Union Trademark. Following the changes in the European Union legislation closely, Türkiye made significant amendments to the trademark section of Law No. 6769. [1]
With the repeal of Decree Law No. 556 on the Protection of Trademarks by Article 191 of Law No. 6769 of 22.12.2016, the period of decree laws regarding trademarks in Turkish Law came to an end. Accordingly, the legislation set forth criminal sanctions for the protection of trademarks in line with the principle of legality.
III. DIFFERENCES BETWEEN TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
The registration of a trademark is not mandatory for trademark infringement to be sanctioned under criminal law. However, registration is important to prove trademark rights, protect trademarks by preventing trademark infringements, and determine whether a trademark infringement will be subject to the criminal provisions in Law No. 6769 or in Code No. 6102.
In fact, Article 30/5 of Law No. 6769 states, “To give a sentence due to the crimes indicated in this Article, it is mandatory that the trademark is registered in Türkiye.” Therefore, a trademark infringement may be subject to criminal sanction only if the trademark is registered in Türkiye as per Law No. 6769.
Unregistered trademarks or trademarks that are not registered in Türkiye are also protected under criminal law as per the unfair competition provisions of Code No. 6102.
In Code No. 6102, Article 55/4 refers to the act of “taking measures that lead to confusion with the goods, products, activities or works of others…,” thus listing the manufacturing of counterfeit products as an example of unfair competition. Furthermore, Article 62 provides that the acts listed in Article 55 constitute the offense of “unfair competition”. It states, “…upon the complaint of a person entitled to file a civil action pursuant to Article 56, they shall be punished with imprisonment up to two years or a judicial fine for the acts specified in each subparagraph.” In addition, in parallel with Article 30/4 of Law No. 6769, Article 63 sets forth that security measures specific to legal entities will be applied if they commit this offense.
Therefore, whether a trademark is registered is important not only for its protection, but also for determining the legislation that will provide protection to it. Accordingly, the Court of Appeals Assembly of Civil Chambers indicates that if a trademark is registered in Türkiye, it will be protected under Law No. 6769, and if it is unregistered or registered elsewhere, it will be protected under Code No. 6102 (File 2007/11-965, Decision 2007/961, 12.12.2007).[2]
IV. CONCEPTS OF LIKELIHOOD OF CONFUSION AND QUOTATION
As indicated above, the acts that constitute trademark infringements that we discuss here are listed in Article 30/1 of Law No. 6769. Accordingly, Article 30/1 of Law No. 6769 penalizes trademark infringement through quotation and likelihood of confusion.
For this reason, we should explain the concepts of quotation and likelihood of confusion before addressing the elements of this offense. In the doctrine, quotation refers to the imitation of a trademark, while likelihood of confusion refers to acts that will cause confusion with the original trademark.
V. ELEMENTS OF THE OFFENSE
For the type of offense regulated in Article 30/1 of Law No. 6769 to occur, it is sufficient for the infringer to commit only one of the acts listed in this article.
Hence, the infringer will be found guilty if they commit one of the following acts: producing or providing services, putting on the market or selling, importing or exporting, buying for commercial purposes, possessing, transporting, or storing, while infringing a trademark right through quotation or likelihood of confusion.
Since trademark infringement is classified as an endangerment offense, it is not necessary that actual harm has been caused. In other words, the victim of the offense does not need to suffer any additional damages for the offense to occur.
Moreover, when this offense is evaluated in terms of its moral element, general intent is sufficient for its occurrence and specific intent is not required. As mentioned above, the infringer must perform the acts listed in the law that constitute trademark infringement by means of quotation or likelihood of confusion.
The offense is punished with imprisonment from one year to three years and a judicial fine up to twenty thousand days. However, Article 30/7 of Law No. 6769 sets down a contrition provision. Accordingly, if a person, selling or putting on the market a counterfeit product, submits information about where they acquired those goods and, thus, contributes to the detection of the producers and the seizure of the products, they will not be sentenced.
However, as stated in various decisions of the Criminal Assembly of the Court of Appeals, in order for the contrition provisions to be applied, it is not sufficient for the infringer who puts on the market or sells the goods produced by imitating another party’s trademark to report where the goods were obtained. It is also necessary that, following the notification of the infringer, the producers of the goods must be identified, and the produced goods must be seized.[3]
As for the right of complaint and the limitation period, the prosecution of a trademark infringement requires the filing of a complaint under Article 30/6 of Law No. 6769. Pursuant to Article 73/1-2 of the Turkish Criminal Code No. 5237 (“Code No. 5237″), in offenses subject to a complaint, it is obligatory to use the right of complaint within the 6-month limitation period from the date of discovering the infringer and the act. Accordingly, the right of complaint must be exercised within the 6-month limitation period from the date of discovering the trademark infringement and the infringer.
Article 30/4 of Law No. 6769 states, “If the crimes indicated in the provisions of this Article are committed by acts of a legal entity, additionally specific security measures shall be taken.” Thus, it is stipulated that if the offenses regulated in Article 30/1 are committed by legal entities, security measures specific to them will be taken in accordance with the general provisions.
Since Law No. 6769 does not define the security measures specific to legal entities, those given in Article 60 of Code No. 5237 may be taken as a reference in this respect.
Pursuant to Article 60 of Code No. 5237, in case of conviction of a crime through participation of the organs or representatives of a legal entity subject to special law and operating under the license granted by a public institution or misuse of authorization conferred upon by this license, the court may decide cancellation of this license and confiscation of property and material interests related to the offense.
VI. CONCLUSION
In this article, we have (i) traced the history of trademark infringement in Türkiye, (ii) explained the concept of trademark and the differences between trademark infringement and unfair competition, (iii) defined the concepts of quotation and likelihood of confusion, (iv) addressed the offense of trademark infringement in terms of its elements and the right of complaint, the duration of complaint and the contrition provisions, and (v) referred to the security measures specific to legal entities in case they commit this offense.
As the article demonstrates, it is important for the sustainability of economic, social and commercial activities that the infringement of trademarks owned by legal entities or natural persons is penalized under criminal law and subject to criminal sanctions. In addition, the security of commercial life requires the lawmaker to address the acts that are not currently criminalized in the law but constitute trademark infringement in today’s conditions.
Written by: B. Batuhan Birtane, Senior Associate
[1] Mustafa Öksüz, Türkiye Barolar Birliği Dergisi, 2021, Marka Hakkına Tecavüzün Sonuçları, Issue: 156, p. 303.
[2] Court of Appeals Assembly of Civil Chambers, File 2007/11-965, Decision 2007/961, 12.12.2007: “Unauthorized use of a trademark is considered (i) unfair competition in case of an unregistered trademark and (ii) an infringement in case of a registered trademark.”
[3]Criminal Assembly of the Court of Appeals, File 2020/19-167, Decision 2020/444, 05.11.2020: “In order for the contrition provisions to be applied to the offense of trademark infringement, it is not sufficient for the infringer who puts on the market or sells the goods produced by imitating another party’s trademark to notify where the goods were obtained. Their notification should also reveal the producers of such goods and ensure the seizure of the goods. Therefore, the infringer wishing to benefit from the contrition provision must ensure: (i) the persons alleged to have supplied the goods are producers, or (ii) the producers are identified by tracing the process from procurement to production, and (iii) the goods produced under these conditions are seized.”
