The Industrial Property Code 6769 (IP Code) entered into force on 10 January 2017. It repealed and replaced the decree-laws on patents, utility models, trademarks and service marks, industrial designs and geographical indications. Despite its essential changes, the IP Code makes no clear reference to the status of IP enforcement relating to so-called 'transit-passing' goods.
Article 9 of Decree-Law 556 on the Protection of Trademarks (amended in 2009 through Law 5833) stated that trademark protection would be enforceable against "goods bearing marks entering the customs territory, being subject to a procedure or use that is approved by customs". With this definition, the court's understanding of trademark infringement was broadened to include transit-passing goods.
This provision had been applied to court proceedings, as the repealed Decree-Law 556 included no other regulation or special wording other than the direct reference to Article 9.
There are many cases which acknowledge that the transit of goods can constitute trademark infringement based on Decree-Law 556, the Customs Law and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Following the IP Code's enactment, trademark protection has been redefined under Article 7, by which a rights holder is entitled to prevent "the unauthorized importing or exporting the goods".(1) For some IP practitioners, this limits the scope of the prior legal provision with respect to goods in transit, as the wording of Article 7 limits the scope of protection to goods subject to import or export, among others.
Whereas Article 30 of the IP Code concerning criminal provisions and the violation of trademark rights adds transportation to the scope of acts of trademark infringement, the term 'transportation' can be interpreted as referring to transit-passing goods under the new IP Code.
The absence of a clear reference to transit passing goods and the absence of a broad description as in the repealed Decree-Law 556 (see above) may cause hesitation as to whether trademark rights can be enforced against transit passing counterfeit goods.
Although the Customs Act does not specifically regulate this matter, Article 57 defines the acts which can be prevented based on IP rights as "customs procedures", which suggests a broad description inclusive of transit passing goods. This means that Customs can continue to suspend the release of the counterfeit goods regardless of whether they are exported, imported or transit passing.
On 13 June 2018 a specialised IP Court in Istanbul issued an interim decision that accepted a preliminary injunction over the transit passing of products (lighters) bearing a well-known third party brand upon the suspension of release decision of the Istanbul/Ambarli Customs Authority.
On 1 February 2018 a Criminal Court in Istanbul also issued an injunction over transit passing counterfeit watches upon the suspension of release decision of Ataturk Airport.
Both court proceedings are pending and the defendants have not challenged the injunction decisions.
Recent case law shows that despite changes to the wording of the new IP Code, prior practice concerning goods in transit persists at the administrative (Customs) and the judicial level (at least at the first-instance level). However, the lack of clear reference to counterfeit goods in transit must to be clarified to avoid potentially inconsistent decisions due to the different interpretation of the new IP Code.
For further information on this topic please contact Okan Can or Feride Utku at Deris Attorney At Law Partnership by telephone (+90 212 252 6122) or email ([email protected] or [email protected]). The Deris Attorney At Law Partnership website can be accessed at www.deris.com.tr.
Endnotes
(1) The IP Code's description of 'importing or exporting goods' existed in Decree-Law 556 prior to the 2009 amendment. During that time, the Supreme Court interpreted the law in a way that entitled rights holders to enforce their rights over transit passing counterfeit goods.
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