Parties in Turkish Trademark Disputes

Sultan Ballı

Ali Mert Çavuşoğlu

Introduction

In Turkish law, accurately identifying the plaintiff and defendant in trademark-related lawsuits is of paramount importance. If the party initiating the lawsuit does not possess the legal status of a plaintiff, the case will inevitably be dismissed due to a lack of active standing. Similarly, if the party against whom the lawsuit is directed does not have the legal status of a defendant, the case will be dismissed for a lack of passive standing.

Below, we analyze the statuses of plaintiffs and defendants in the context of various types of lawsuits in Turkish trademark law.

I. Parties in Trademark Invalidity Lawsuits

A. Plaintiff

According to Article 25/2 of the Industrial Property Code No. 6769 (hereinafter “IPC”), trademark invalidity may be requested by interested parties, public prosecutors, or relevant public institutions and organizations.

a. Interested Parties

The concept of “interested parties” replaced the previous term “injured parties” under the now-abolished Decree-Law No. 556. The law does not explicitly define the scope of "interested parties." However, in our opinion, similar to the broad interpretation of “injured parties” under the old law, the term “interested parties” should also be interpreted expansively. This approach would include anyone whose interests would benefit from the invalidation of a trademark registration. Indeed, “interest” is a broader concept than “injury.” The boundaries of this term must be evaluated within the procedural law framework. Article 114/1-h of the Civil Procedure Code No. 6100 (hereinafter “CPC”) establishes that a legal benefit is a prerequisite for filing a lawsuit. Consequently, this condition also applies to trademark invalidity cases. The limits of “interest” are determined by the existence of a legal benefit. If the invalidation of a trademark improves a person’s legal position, it should be recognized that such persons have a legal benefit in filing the lawsuit. However, whether the person requesting invalidation possesses a legal benefit under Article 114/1-h of the CPC has been a subject of debate in legal literature and court rulings.

Examples of “interested parties” include individuals harmed or likely to be harmed by the registration or continuation of the trademark. Additionally, individuals sued for trademark infringement should be deemed to have a legal interest in requesting invalidation. Furthermore, individuals facing criminal investigations or prosecutions due to trademark registration, or who are at risk of such actions, should also be considered as having a legal interest in filing for invalidation.

b. Public Prosecutors

Under Article 25/2 of the IPC, public prosecutors have the right to request trademark invalidation. The provision does not impose any limitations on the circumstances under which prosecutors may file invalidation lawsuits. However, legal doctrine suggests that prosecutors should only file such lawsuits in cases involving public interest. Prosecutors should not pursue invalidation lawsuits that involve no public interest and merely intervene in disputes between trademark owners. In Turkish procedural law, prosecutors are generally only permitted to initiate civil lawsuits in exceptional cases, limited to those affecting public order or explicitly authorized by law.

Prosecutors may file invalidation lawsuits either on their own initiative or upon notification by public or private legal entities. Prosecutors acting in this capacity are regarded as plaintiffs and must file a lawsuit petition containing the necessary elements as required under the CPC.

c. Relevant Public Institutions and Organizations

Relevant public institutions and organizations are also authorized to file trademark invalidation lawsuits under Article 25/2 of the IPC. However, it is essential that these institutions qualify as public entities. Examples include the Turkish Patent and Trademark Office (TÜRKPATENT), municipalities, ministries, professional organizations, and universities.

B. Defendants

Article 25/3 of the IPC stipulates that trademark invalidation lawsuits must be filed against the person listed as the trademark owner in the registry on the date of the lawsuit or their legal successors. An important point to note is that TÜRKPATENT cannot be named as a party in trademark invalidation lawsuits.

In cases where invalidation requests are accompanied by a demand for the annulment of a decision by TÜRKPATENT, the institution may be named as a defendant. However, in such instances, TÜRKPATENT’s involvement is limited to the annulment aspect of the case, not the invalidation request.

II. Parties in Trademark Infringement Lawsuits

A. Plaintiffs

Under Article 149/1 of the IPC, the owner of an industrial property right that has been infringed may seek remedies enumerated in the article. Therefore, in lawsuits involving claims for the determination, cessation, prevention, and removal of infringement, as well as compensation for damages arising from trademark infringement, the plaintiff is the owner of the infringed industrial property right. According to Article 7/1 of the IPC, trademark protection is obtained through registration. Thus, except for cases where unregistered protection is provided by law, trademark registration is a prerequisite for asserting ownership and claiming infringement.

Additionally, under Article 158/1 of the IPC, exclusive licensees may file lawsuits on their own behalf in the event of trademark infringement, unless otherwise agreed in the license agreement. Non-exclusive licensees, on the other hand, may request the trademark owner to file the necessary lawsuit. If the trademark owner refuses or fails to initiate the lawsuit within three months of notification, the licensee may file a lawsuit on their own behalf, limited to protecting their own interests.

B. Defendants

In trademark infringement lawsuits, the defendant is the person or persons who commit acts constituting trademark infringement. These acts may include counterfeiting the trademark, using the trademark or its indistinguishable imitation without authorization, selling, exporting, or importing goods bearing the trademark, offering to contract regarding infringing goods, or expanding license rights without authorization.

Licensees who unlawfully extend their licensed rights or transfer them to third parties without authorization, as per Article 29/1-(ç) of the IPC, may also be named as defendants in trademark infringement lawsuits.

III. Parties in Lawsuits Against TÜRKPATENT Decisions

A. Plaintiffs

Parties adversely affected by TÜRKPATENT’s decisions or third parties have the right to file lawsuits against the institution to seek annulment of such decisions. The term "adversely affected" is not clarified in the IPC or its explanatory notes. However, doctrine defines "adversely affected" persons as those who have suffered or are at risk of suffering harm, or whose ability to use the mark is unjustly restricted or threatened.

B. Defendants

Lawsuits seeking annulment of TÜRKPATENT decisions must be directed against TÜRKPATENT. While it is debated whether the trademark applicant or objector should also be named as defendants, legal doctrine and case law generally hold that these parties should be included as co-defendants.

[1] Uğur ÇOLAK, Türk Marka Hukuku, s. 1019, Onikilevha Yayıncılık, 4. Baskı, İstanbul, 2018

[2] Serdar KALE, Marka Davalarında Yargılama Usulü, s. 50, Adalet Yayınevi, 2020, Ankara.

[3] Bkz. ÇOLAK, s. 1022 vd.

[4] Sabih Arkan, Marka Hukuku, C.II., s. 166, Ankara, 1997; KALE, s. 52

[5] Ejder YILMAZ, Savcıların Hukuk Davalarındaki Görevleri, AÜHFD C. XXIX 1972 Sayı:1-2, s. 260

[6] KALE , s.74.

[7] KALE, s. 87-88.; ARKAN, s. 161-163; Yargıtay 11. HD 31.01.2014 tarih ve E. 2014/390 K. 2014/1757; Yargıtay 11. HD 08.10.2013 tarih ve E. 2012/3607 K. 2013/17884