Cases of patent infringement in Turkey may be enforced in courts with an emphasis on intellectual property. In order to manage patent disputes, Turkey set up specialist intellectual property courts in major cities. These tribunals were referred to as “Intellectual and Industrial Property Rights Courts” or “IP Courts.”
The IP Courts have authority over proceedings involving intellectual property, including allegations of patent infringement. They are in charge of hearing disputes, holding trials, and making decisions in situations involving patent infringement. In comparison to normal civil courts, these specialist courts resolve matters more quickly and effectively because they include judges with experience in intellectual property law.
If there is no specialized Intellectual and Industrial Property Rights Court (IP Court) in a particular city in Turkey, intellectual property cases, including patent infringement cases, may be handled by general civil courts. In such cases, the Commercial Courts of First Instance or the Civil Courts of First Instance are typically responsible for hearing IP disputes.
Where there are specialized IP courts, the lawsuit should be filed in these courts. However, if there is no specialized IP court in the place where the case will be filed, the competent court is the Civil Court of First Instance. The plaintiff can decide where to file a lawsuit by looking at these three factors:
- The court in the place where the plaintiff’s address in Turkey is located
- The court where the defendant is located
- Court in the place where the effects of infringement were seen
The plaintiff may decide, by considering these criteria, whether to file a lawsuit in the most convenient place for him/Her.
This situation is not clear in our legislation yet. According to Article 5/A of the Turkish Commercial Code No. 6102, it is a prerequisite to go to mediation in cases where the subject is a certain number of receivables and compensation. Accordingly, if the IP case includes a claim for compensation, it is necessary to go to the mediator first, but the issue is confused here.
The following demands were made in the lawsuit filed for trademark infringement:
- detecting, preventing, stopping infringement,
- destruction of confiscated products,
- removing the phrase that is alleged to constitute infringement from the trade name of the plaintiff,
- suspending the use of the Instagram account, which contains elements allegedly infringing on trademark rights,
- issuing a precautionary injunction to prevent the transfer of the trademark registration application made on behalf of the defendants to third parties,
- material and moral compensation,
- Deciding on the determination of the license fee based on the calculation of the pecuniary compensation.
The court of first instance stated that there was a claim for compensation among the claims put forward in the case, stated that there was a mediator obligation within the scope of Law No. 6102 and deemed it necessary to go to a mediator first for the admission of the claim.
The decision was appealed, and this objection was rejected at the appeal stage. The situation changed during the appeal to the Supreme Court. According to the Supreme Court decision, there is a “collection of cases” in the present case.
There is also a claim for compensation among the claims, but in terms of other claims (detecting, preventing, stopping infringement, destruction of confiscated products, removing the phrase that is alleged to constitute infringement from the trade name of the plaintiff, suspending the use of the Instagram account, which contains elements allegedly infringing on trademark rights, issuing a precautionary injunction to prevent the transfer of the trademark registration application made on behalf of the defendants to third parties) there is no mediator obligation, and
“The claim for compensation brought together with a claim that is not within the scope of mediation, which is a litigation condition, is also not subject to the mediation case condition…”
judgments of the court of instance and of appeal were overturned.
In the current practice, if there are other claims that are not subject to mediation in addition to the claim for compensation, there will be a case of “collection of cases” within the scope of the Civil Procedure Law No. 6100 and there is no obligation to resort to mediation. In other cases, if there is only a claim for compensation in the case, it is obligatory to resort to mediation.
The mediation process is often assessed in the context of a judicial requirement. Arbitration is seen as a fresh approach to problem-solving in Turkey that hasn’t yet gained much traction. It is nevertheless true that the courts are the typical and initial authority that comes to mind when an issue arises.
Other alternatives may be more strongly motivated by indirect considerations like the lengthening of the legal procedures and the decline in the economic worth of the dispute.
The legal system in Turkey typically requires litigants to be represented by licensed attorneys, particularly when it comes to formal legal proceedings. This requirement applies to both domestic and foreign companies. Having a Turkish attorney can ensure that the necessary legal procedures are followed correctly and that the company’s interests are represented effectively.
Foreign nationals have got a right to launch a lawsuit in Turkey without hiring a counsel. Individuals have the right to represent themselves in court, often known as “pro se” representation, in accordance with the Turkish Civil Procedural Law. This implies that you can bring a lawsuit without an attorney’s help and argue your case in court.
It’s crucial to remember that patent disputes can involve intricate legal issues, specialist expertise, and technological specifics. Although self-representation is permitted, it is strongly advised to get legal counsel, particularly in matters involving patents, to make sure that your rights are upheld and that you can successfully make your case.
- Consultation with an Attorney: To evaluate the merits of your case, compile the required evidence, and choose the best legal course of action, it is preferable to speak with an attorney who specializes in the pertinent field of law.
- Preparing the Lawsuit Petition: The lawsuit petition (dilekçe) will be drafted by your attorney and will include a summary of your claims, arguments in support of those claims, and any supporting documentation you desire to include. According to the applicable procedural regulations, the petition should be drafted.
- Filing the Lawsuit: The petition for a lawsuit is filed with the relevant court that has jurisdiction over the case. At this point, the “justice fees” (adalet harc), or court costs, are due. The kind and value of the claim are two criteria that affect how much court costs will be. Recently total fee can be approximately at 1000-1500 $ plus relevant ratio fee if a compensation is requested.
- Service of Process: Following the filing of the case, the court will provide a copy of the petition to the defendant, informing them about the legal action and giving them a chance to reply.
- Exchange of Written Submissions: The parties may exchange written arguments, facts, and legal defenses in what are referred to as “pleadings,” which are called.
- Preliminary Hearings: To resolve procedural issues, examine the evidence, and maybe stimulate settlement discussions between the parties, the court may conduct preliminary hearings. The court may (and certainly will) request an expert witness report regarding the subject matter of the lawsuit. An expert witness may be a person or a committee consisting of relevant experts. Parties may appeal against expert witness reports. The court may request expert witness reports more than once.
- Trial Procedures: If the case goes to trial, both sides will testify in court and make their cases using evidence and witnesses. After reviewing the evidence and hearing oral arguments, the court will make a ruling.
It is difficult to give a precise time frame for how long it takes for a matter to proceed to trial when it has commenced. Depending on the intricacy of the case, the volume of cases on the court’s docket, and any appeals or other required procedural processes, the length might vary greatly. While some instances can be handled in a matter of months, others can take a number of years.
Through various legal channels, parties can request the disclosure of pertinent papers or materials from their opponents before or after the start of proceedings. The following are some possibilities:
- Request for Interlocutory Injunction: A party may ask the court for an interlocutory injunction if they urgently need to collect specific documents before beginning formal legal procedures. An order for the preservation of evidence, which may involve the disclosure of pertinent documents, may be granted by the court.
- Request for Interrogatories: In some circumstances, a party may ask the court for permission to send the other party written inquiries (interrogatories). The replying party is required to respond to these questions within a certain amount of time, including by supplying any necessary papers.
- Request for Document Production During Litigation: After starting formal legal action, a party may ask the court for help in getting the other side to turn over a certain set of documents. The party making the request must convince the court that the sought papers are relevant and necessary.
- Expert Witnesses Selected by the Court: The court may select experts to review the case and compile evidence, including pertinent documents. These expert witnesses may ask for and gather documentation from the parties as directed by the court.
It’s crucial to remember that depending on the type of case and the court’s discretion, the availability and scope of document disclosure might change. The fundamental framework for civil proceedings is provided by the Turkish Civil Procedure Code (Hukuk Muhakemeleri Kanunu), although the particular steps and requirements might vary depending on a number of circumstances.
Depending on the circumstances of the case and the applicable regulations, the particular processes may vary, but generally speaking, the pre-trial phase entails the following steps:
- Filing the Lawsuit: A lawsuit is filed with the appropriate court by the plaintiff to begin the pre-trial phase. The allegations, supporting evidence, and legal foundation for the case should all be clearly stated in the complaint.
- Service of Process: The defendant will get notice of the lawsuit’s filing as well as a summons from the court. After then, the defendant has a certain amount of time to reply to the complaint by filing a defense and any counterclaims.
- Exchange of Written Submissions: The pleadings, statements of claim and defense, and any supporting documentation are all exchanged between the parties. These submissions lay out the information, arguments, and supporting materials that each party plans to use in the trial.
- Pre-Trial meeting: The court may occasionally hold a pre-trial meeting to go through the problems, make the claims and defenses clear, and look into settlement options. The court may also discuss procedural issues, outline the nature of the dispute, and set a schedule for further hearings at the conference.
- Evidence Disclosure: In Turkey, the disclosure of evidence often only pertains to the evidence that each side plans to use as support during the trial. The parties are required to make their written submissions and any supporting documentation—including any technical evidence—public. This might be in the form of papers, reports from experts, witness testimonies, or other pertinent information.
- Expert Evidence: If technical evidence is necessary to determine certain issues in the case, the parties may submit expert reports. The court may also appoint court-appointed experts to provide their opinions on specific technical matters relevant to the case. In IP matters, the court requests an expert’s assistance very frequently. In practically every case, courts request an expert. If this is not done, the Supreme Court may reverse the judgment and order that the decision be made after obtaining an expert report. Expert committees might be made up of a single individual or a committee that is consist of academical, industrial, and legal experts.
- Preparing Witness Statements: Each side may prepare witness statements from people who have knowledge or information about the matter that is important. Usually, these witness testimonies are included in the written submissions. Very rarely, the court may invite witnesses or experts to support their written statements.
The Turkish Code of Civil Procedure (Hukuk Muhakemeleri Kanunu (HMK)) governs how arguments and evidence are presented during trials in Turkey. An outline of the overall procedure is given below:
- Pleading Stage: At this stage, the parties file their initial written assertions, or pleadings, outlining their claims, defenses, and the supporting evidence. The arguments made at the trial are based on these pleadings.
- Exchange of Written Evidence: After the initial pleadings, the parties exchange written evidence, such as documents and expert reports, to support their respective positions. This evidence is presented prior to the trial and allows the parties to prepare their arguments accordingly.
- Trial Proceedings: During the trial, the parties have the opportunity to present their arguments orally. They can make legal submissions, present witness testimony, and cross-examine opposing witnesses. The court may ask questions to clarify any issues.
With the amendment made to Article 141 of the HMK, the following article has been added:
(1) (Amended: 22/7/2020-7251/art. 15) The parties can freely expand or change their claims or defenses with reply and second reply petitions. The claim or defense cannot be extended or changed after the petitions are mutually submitted.
New evidence is no longer presented except for the improvement of the case or the express consent of the other party.
In the year 2019, the Ministry of Justice introduced the “target time in the judiciary” initiative with the aim of expediting legal proceedings. As a result, measures were implemented to reduce the duration of lawsuits. Pursuant to the regulations, judges are now responsible for informing the parties about the estimated timeframe for completing their cases at the outset. These timeframes are as follows:
In criminal cases, the target duration is between 10 and 13 months.
In civil cases, it is anticipated that 87% of cases will be concluded within 18 months, while the remaining 13% may take up to 24 months.
Based on data provided by the Ministry of Justice for the year 2021, these targets were achieved at a rate of 86% in criminal cases and 85% in civil cases. This indicates a substantial success in meeting the set objectives.
There are provisions that allow for the filing of a determination case, wherein one can request an expert report to substantiate claims of non-infringement. This report serves as valuable evidence in establishing that no infringement has occurred. Additionally, in accordance with Article 154 of the IP Law, individuals have the right to bring a lawsuit specifically aimed at proving non-infringement. This legal avenue provides an opportunity to present arguments, present evidence, and seek a judicial determination regarding the absence of infringement.
“Legal proceeding on noninfringement and conditions
ARTICLE 154- (1) Anyone who has interest may demand the right owner to provide its opinions about whether or not commercial or industrial activities being carried out or to be carried out or serious and actual attempts carried out for these purposes in Turkey would cause an infringement of his industrial property right. In the event that no opinion is given within one month after notification of this demand or if the opinion given is not accepted by the interested party, the interested party may institute a legal proceeding against the right owner for a decision on noninfringement. The submission of opinion shall not be a prerequisite for the legal proceeding to be instituted. This proceeding may not be filed by a person against whom an infringement proceeding has been instituted.
(2) Legal proceeding instituted in accordance with the first paragraph is notified to all right owners registered in the registry.
(3) Legal proceeding instituted in accordance with the first paragraph may be opened together with the invalidity proceedings.
(4) The court shall not decide on the validity of the allegations before the publication in accordance with the third or seventh paragraph of Article 99 and the tenth or twelfth paragraph of Article 143.”
In Turkey, it is possible for a party to be held liable for infringement as a secondary infringer, distinct from a primary infringer. The Turkish Industrial Property Law (No. 6769) recognizes the concept of secondary liability (Article 86) for patent infringement (Article 141).
Under Turkish law, a party can be considered a secondary infringer if they intentionally aid, facilitate, or induce another party to commit patent infringement. This can occur through actions such as actively promoting or assisting in the use of an infringing product or process.
Regarding the supply of part of an infringing product or process, Turkish patent law does not explicitly address contributory infringement. However, similar to the concept of contributory infringement in other jurisdictions, liability may arise if the supplied component or part constitutes a material element of the patented invention and has no substantial non-infringing use.
The determination of liability as a secondary infringer and the evaluation of partial supply would depend on the specific circumstances of each case. Turkish courts would consider factors such as the level of involvement, intent, knowledge of the infringement, and contribution to the overall infringing activities.
In general, liability for patent infringement can extend to parties involved in importing a product that has been manufactured using a patented process, even if the process itself is carried out outside the jurisdiction.
In many jurisdictions, including Turkey, the concept of “indirect infringement” or “induced infringement” can be applied to situations where a party imports or sells a product that is made using a patented process (article 141 of IP Law 6769). This means that even if the patented process is conducted outside the jurisdiction, the importation of the resulting product can still be considered an act of infringement if certain conditions are met.
The main criteria in such a situation are that on the importer’s side (Article 141)
“…It is known or it is required to know that this method is used without permission…”
Before claiming this kind of infringement, the claimant must clearly define that the importer knows or is in a position to know that the product is produced with a process patent.
Under Turkish law, if a patented process is being used abroad to manufacture a product and that product is subsequently imported into Turkey, the act of importing the product can potentially be deemed an infringement of the process patent. The key factor is whether the imported product is made using the patented process, regardless of where the process itself takes place.
1. Lack of industrial applicability: According to Article 82/2(c) of the Turkish Industrial Property Law No. 6769, an invention can be invalidated if it does not have industrial applicability, meaning it is not capable of being made or used in any kind of industry or does not have any practical application.
2. Insufficient disclosure: Article 83/2(a) of the Turkish Industrial Property Law No. 6769 states that an invention can be invalidated if the description and the patent application documents do not sufficiently disclose the invention in a manner that allows a person skilled in the relevant field to carry it out.
3. Lack of clarity: Article 83/2(b) of the Turkish Industrial Property Law No. 6769 mentions that a patent can be invalidated if the claims are not clear and unambiguous, thereby failing to define the boundaries of the invention.
4. Subject matter not patentable: Article 82/2(a) of the Turkish Industrial Property Law No. 6769 excludes certain subject matters from patentability, including abstract ideas, mathematical methods, mental processes, laws of nature, and methods of doing business.
5. Prior public disclosure: Article 84 of the Turkish Industrial Property Law No. 6769 addresses prior public disclosure as a ground for invalidity. If the invention was publicly disclosed before the filing date of the patent application, it may lack novelty and could be considered invalid.
6. Fraudulent or deceptive practices: Article 85 of the Turkish Industrial Property Law No. 6769 deals with fraudulent or deceptive practices. If it is determined that the applicant has engaged in fraudulent or deceptive practices during the application process, it can be a ground for invalidating the patent.
In Turkey, infringement proceedings can be stayed pending the resolution of validity in another court or before the Patent Office. The Turkish legal system provides mechanisms for coordination between validity and infringement proceedings to ensure consistency and efficiency.
Under Turkish law, if there is an ongoing invalidity action before the Turkish Patent and Trademark Office (TPTO) or a court, the court handling the infringement case may decide to stay the proceedings until the validity issue is resolved. The court has the discretionary power to stay the proceedings to avoid potential conflicting decisions.
The court may take into consideration factors such as the stage of the invalidity proceedings, the potential impact of the invalidity decision on the infringement case, and the interests of the parties involved. If the court determines that the validity issue is central to the infringement case and requires resolution first, it may decide to stay the proceedings until the validity challenge is concluded.
The coordination between the validity and infringement proceedings in Turkey is aimed at achieving consistency and efficiency in the resolution of patent disputes. By staying the infringement proceedings, the court can avoid rendering a decision on infringement while the validity of the patent is still in question.
It is important to note that the decision to stay the proceedings is within the discretion of the court handling the case. The court will assess the specific circumstances of each case and determine whether staying the infringement proceedings is appropriate.
Prior use: Article 87 of the Turkish Industrial Property Law No. 6769 recognizes prior use as a defense against infringement claims. It states that the patent owner’s rights shall not apply to any person who, in good faith and before the filing or priority date of the patent application, has used the invention or made effective and serious preparations for such use in Turkey.
Exhaustion of rights: Article 152 of the Turkish Industrial Property Law No. 6769 recognizes exhaustion of rights as a defense. It stipulates that once a patented product is put on the market by the patent owner or with their consent, the patent owner’s rights shall not extend to acts regarding the product, except where there are legitimate reasons based on the specific nature of the product.
License: The defense of a valid license can be raised based on the terms and conditions of the license agreement. While the Turkish Industrial Property Law No. 6769 does not explicitly mention this defense, the concept of licensing is recognized, and the rights and obligations of the parties to a license agreement are generally governed by contract law.
Invalidity of claims: Article 138 of the Turkish Industrial Property Law No. 6769 allows for the invalidity of a patent to be raised either as a counterclaim or as a defense against infringement allegations. The accused infringer can argue that the claims of the patent are invalid based on grounds such as lack of novelty, lack of inventive step, insufficient disclosure, or lack of industrial applicability.
Experimental use: The concept of experimental use is not explicitly addressed in the Turkish Industrial Property Law No. 6769 (Art. 85/3 (b)). However, it may be possible to argue that certain uses fall within the scope of experimentation, research, or testing and are not conducted for commercial purposes.
Statute of limitations: The Turkish Industrial Property Law No. 6769 does not explicitly mention a statute of limitations for patent infringement claims but the article 157 addresses Code Of Obligations’ statutes of limitations provisions. In civil matters, including patent disputes, the general provisions of the Turkish Code of Obligations regarding statutes of limitations will apply.
(a) Preliminary Injunctions Basis: Preliminary injunctions are available in Turkey on both an ex parte basis and an inter partes basis.
(b) Basis for Granting Preliminary Injunctions and Bond Requirement: Preliminary injunctions can be granted based on the urgency of the situation and the potential irreparable harm that could be caused if the injunction is not issued. The court considers factors such as the likelihood of success in the main case, the balance of interests, and the potential harm to the parties involved. In some cases, the court may require the applicant to provide a bond as security against any potential damages that the defendant may incur if the injunction is later found to be wrongly granted.
(c) Protective Letters Against Ex Parte Injunctions: Yes, protective letters can be filed with the court to safeguard against ex parte injunctions. These letters are essentially pre-emptive notifications from a third party who might be affected by a potential ex parte injunction. They provide the third party with an opportunity to present their arguments and evidence to the court before any ex parte injunction is granted. This allows the court to consider a more complete picture of the situation before making a decision.
Final injunctions are a legal remedy that can be sought in various legal systems, including Turkey. A final injunction is a court order that permanently restrains a party from engaging in a particular action or behavior. In the context of intellectual property, such as patents, trademarks, or copyrights, a final injunction can be sought to prevent further infringement of the protected rights.
Here’s a bit more detail about final injunctions in Turkey:
Nature of Final Injunctions: Final injunctions are sought as a final remedy in a legal proceeding, often after the court has determined that the plaintiff’s rights have been infringed upon by the defendant. If the court finds that the plaintiff’s rights are indeed being violated and the plaintiff is entitled to protection, it can issue a final injunction to prohibit the defendant from continuing the infringing activities.
Conditions for Granting Final Injunctions: The conditions for granting final injunctions can vary depending on the legal system and the specific laws in place. In Turkey, similar to other jurisdictions, the court will consider factors such as the strength of the plaintiff’s case, the potential harm caused by the infringement, the balance of interests between the parties, and the public interest.
Effect of Final Injunctions: A final injunction, once granted, is a binding court order. It prohibits the defendant from engaging in the infringing activity for the duration specified by the court. Failure to comply with a final injunction can lead to legal consequences, such as fines or penalties.
Enforcement of Final Injunctions: Enforcement of final injunctions is typically the responsibility of the court and relevant law enforcement authorities. If the defendant continues to engage in the infringing activities despite the injunction, the plaintiff can bring this to the attention of the court, which may take further action to enforce the injunction.
Appeals and Challenges: In some cases, the party affected by a final injunction may choose to appeal the decision. This could lead to a higher court reviewing the case and potentially modifying or upholding the injunction.
In the context of patent infringement lawsuits, asserting a public interest defense is not possible under the current legal framework. Specifically, in Turkey, the avenue for public interest considerations is reserved for public entities. This role is fulfilled by the administrative court system in Turkey, established based on the French law school tradition.
This stance remains consistent even when public interest claims intersect with demands for compulsory licensing. In instances where a patent’s application is perceived to have implications for the public interest, the responsibility of recognizing this rests primarily with the relevant ministry. For instance, the Ministry of Health could identify a public interest in areas like drug production, development, or distribution. Upon making such an assessment, the ministry engages the Administrative Court, seeking the grant of a compulsory license in the public interest. Alternatively, the ministry could approach the president with the same request. Additionally, the President retains the authority to grant compulsory licenses based on public interest grounds.
As a result, individuals or legal entities are precluded from invoking a public interest defense concerning a patent within the framework of private law courts. The public interest dimension in such cases remains distinctly within the purview of the administrative and governmental framework in Turkey.