Using another person’s trademark without permission does not produce the same legal result in every case. The scope of the registration, the sign used, the goods or services, the commercial nature of the use and the statutory exceptions are examined. Once the conditions of infringement are met, determination, prevention, cessation, elimination of the consequences and, under suitable conditions, compensation may be requested. An interim injunction, a criminal complaint and a platform notice are separate tools, each subject to its own conditions. [S1, Art. 7, 29–30, 149–159]
This article addresses the points to be assessed by the rights holder, and by the business facing an infringement claim, in disputes concerning counterfeit products, similar packaging, store signs, online sales and advertising use. Removing a registration from the register and stopping actual use are different requests.
Which uses may constitute infringement of a trademark right?
There are different possibilities: the identical use of the trademark for the same goods or services, a similar sign creating a likelihood of confusion for the same or similar goods or services, and unfair advantage taken of the reputation of a well-known trademark. Placing the sign on a product or packaging, using it on commercial papers or in advertising, offering the goods for sale, and import or export operations under the relevant statutory conditions all come into the assessment. [S1, Art. 7]
Trademark infringement is not a claim to be directed solely at the manufacturer. Liability may also arise for persons who, for commercial purposes, sell, distribute or hold products that they know or should know to be counterfeit, or who carry out other acts listed in the law. Nevertheless, the roles of the manufacturer, the seller, the licensee, the advertising agency and the platform must be kept apart. The presence of a product on a platform does not show that every actor is liable on the same legal basis and to the same extent. [S1, Art. 29]
Online listings, keywords and domain name use
The use of a sign online, as a domain name, redirection code, keyword or the like, in a way that creates a commercial effect, is assessed under the conditions of Article 7/3-d of the SMK. The user’s justified or legitimate connection with the sign, whether the presentation creates an impression of a link between businesses, and the concrete manner of use are important. Not every mention of a trademark is an automatic infringement.
In an online listing, the price, the seller’s identity, the product image and the placement of the sign should be recorded together. A small screenshot of a search result alone may not explain who offered the product for sale and on what date. The transfer of a domain name may separately require domain-specific application routes; an infringement decision and the transfer procedure at the registry are not the same thing.
Can a person holding a registration certificate also commit infringement?
Holding one’s own trademark registration does not grant unlimited permission to use against earlier rights. Article 155 of the SMK limits the invocation of a later-dated industrial property right as a defense in an infringement action brought by the earlier right holder. In addition, the specimen recorded in the register and the appearance used on the market may differ. Enlarging a small element on the packaging, approaching the dominant element of another trademark, or changing color and placement may affect the outcome of the dispute. [S1, Art. 155]
A Court of Cassation example: examining the use separately while an invalidation request is rejected
In its decision of May 14, 2024, E.2023/275, K.2024/3889, the 11th Civil Chamber of the Court of Cassation (Yargıtay 11. Hukuk Dairesi) examined a trademark dispute concerning dairy products. The appeal objections against the rejection of the invalidation request were not accepted; by contrast, the rejection of the infringement claim was set aside because the actual use, which differed from the registration, approached the earlier trademark. [K1, V/C–VI]
Because of the date of the events, the decision applies the provisions of the repealed Decree-Law No. 556. In a current file, the provisions of the SMK must be applied separately. The limited but important conclusion that can be drawn from the decision is this: the comparison of the signs in the register and the comparison of the use on the market must be made separately. The rejection of one claim does not justify rejecting the other without reasons.
Which defenses may be considered against an infringement claim?
Honest use and descriptive statements
An individual’s honest use of their own name or address, the description of characteristics such as the type or quality of the product, and cases where it is necessary to indicate the intended purpose of use are examined within statutory limits. Stating that a spare part is compatible with a particular product is not the same as creating the impression of being an authorized service or the trademark owner. An honest use defense must be supported by the concrete presentation and the commercial context. [S1, Art. 7/5]
Exhaustion of rights and the sale of original products
Exhaustion of rights may come into play for products placed on the market by the right holder or with its consent. However, circumstances provided for in the law, such as alteration or deterioration of the product, may change the result. The question of whether an advertisement creates an impression of authorized dealership must also be kept separate from the “the product is original” defense. The supply invoice, the genuineness of the product and the conditions of its placement on the market are important. [S1, Art. 152]
A claim based on an unused trademark
In an infringement action, a non-use defense may arise under Article 29/2 of the SMK. The date of the action is the basis for determining the five-year period. After submitting their own registration certificate, the claimant should not regard evidence of use as unnecessary. Nor can the defendant assert that every old trademark is automatically unprotected; the conditions of the defense and the connection of the evidence with the relevant goods or services are examined. [S1, Art. 9, 19/2, 29/2]
Which evidence should be preserved when an infringement is noticed?
The first step is to document the existing use and the related commercial activity in a lawful manner. Time matters, because online content may be deleted, packaging may be changed or stock may be transferred. Preservation of evidence and an interim injunction serve different purposes: the first secures a record of the existing facts, the second secures temporary protection.
| Group of evidence | Fact to be proved | Common mistake |
|---|---|---|
| Register and license records | Right holder, scope, term, standing to sue | Relying on an old or transferred record |
| Product, packaging and invoice | Actual sign, seller, date, commercial relationship | Submitting a sample whose source is unknown |
| Internet and advertising records | URL, date, account, manner of use | A cropped image without context |
| Commercial records | Sales, profit, loss and market impact | Treating turnover directly as net loss |
| Permissions and correspondence | Consent, limit of the license, receipt of the formal notice | Leaving out the annexes of the contract |
A notarial record or a court-ordered preservation of evidence under Article 400 and the following articles of the HMK is assessed according to the needs of the file. Unauthorized access to an account or the obtaining of unlawful data cannot be regarded as a legitimate method of increasing evidentiary weight. Trade secrets and personal data must be protected to the extent necessary. [S2]
Which actions and requests for interim protection are possible?
Determination, prevention and elimination of the consequences
Article 149 of the SMK regulates the determination of infringement; the prevention of probable infringement; the cessation and removal of continuing infringement; depending on the conditions, requests concerning products or means of production; and the publication of the judgment. The request must be framed within the scope necessary to eliminate the infringement. Requesting the destruction of all products in every file is not an automatic or proportionate solution.
Besides the right holder, the standing of the licensee to sue is assessed according to the type of license and the contract. An exclusive license and a non-exclusive license do not give rise to the same authority; the notification and action-filing conditions of Article 158 of the SMK must be examined. Naming only the name on the sign as defendant may not be sufficient; the operator, the company and the person who carried out the relevant act must be correctly identified. [S1, Art. 149, 158]
Interim injunction
Under Article 159 of the SMK and the provisions of the HMK, an injunction may be requested by showing, with prima facie proof, that infringement has occurred or that serious and effective preparations exist. The requested measure must be defined in a way that can be enforced with regard to product, address, URL or activity. The court may require security; the opposing party’s objection and liability for an unjustified injunction are also taken into account. [S1, Art. 159; S2, Art. 389–399]
For a pre-action injunction, the periods for requesting enforcement of the decision and for filing the main action must be tracked separately. Article 393 of the HMK provides for a one-week period from the pronouncement or notification of the decision to request enforcement; Article 397 provides for a two-week period for filing the main action from the date enforcement was requested. If mediation as a condition precedent to litigation has been applied for, the effect of the special time-limit provision is calculated separately. Having filed an application does not by itself stop the sale of products. [S2; S4, Art. 18/A/16]
How is compensation calculated?
Actual loss and lost profit are separate items. Article 151 of the SMK provides for the approaches of probable income, the net profit obtained by the infringer, or an appropriate license fee, at the right holder’s choice. These methods are not added together so as to multiply the same loss. Which method is chosen affects the documents to be requested and the expert examination. [S1, Art. 150–151]
For example, in a hypothetical file, infringing sales of 1 million Turkish lira (TL) do not automatically mean that the right holder will receive compensation of 1 million TL. The connection of the sales with the infringement, expenses, net profit, the contribution of the trademark to sales and the chosen calculation method are examined. When the license fee method is chosen, the suitability of comparable contracts is discussed with regard to term, territory, product and scope of use.
Claims for non-pecuniary damages and for harm to reputation likewise do not result automatically from a mere finding of infringement. The legal conditions, the concrete effects and the basis of the claim must be explained. The submission of the necessary commercial documents before filing the action and during the proceedings may be requested under Article 150/3 of the SMK. Obtaining the judgment and collecting the compensation are separate stages; the debtor’s assets and enforcement possibilities are also assessed.
Jurisdiction, mediation, time limits and criminal complaint
The competent court is the civil court for intellectual and industrial property rights; where no such court exists, a designated civil court of first instance (asliye hukuk mahkemesi) acts in that capacity. In actions brought by the right holder, the special venue options in Article 156 of the SMK are examined. Not every trademark action must be filed in Ankara; the Ankara-specific rule is particularly important for actions against decisions of the Office. [S1, Art. 156]
For monetary claims and claims for compensation of a commercial nature, mediation as a condition precedent to litigation comes into play under Article 5/A of the TTK. Where an action is filed together with non-monetary requests for cessation and invalidation, the nature of the claims and the procedural application must be carefully assessed. The generalization that “there is never mediation in an intellectual property action” is not safe. [S3]
For private-law claims, the limitation provisions of the TBK apply by reference from Article 157 of the SMK. For tort compensation, the two-year period running from learning under Article 72 of the TBK, the ten-year period from the act and the possibility of a longer criminal limitation period are examined. Because of continuing acts, separate infringements and different types of claims, a single final date cannot be given for the whole file. Sending a formal notice (ihtar) does not, as a rule, by itself interrupt the limitation period. [S1; S5]
For offenses under Article 30 of the SMK, registration in Türkiye, the complaint and the elements of the offense are assessed separately. For offenses prosecutable only upon complaint, the six-month period running from learning of the act and the perpetrator under Article 73 of the TCK is observed. Filing a civil action does not take the place of a criminal complaint; the effect of the decision in the criminal file on the civil action is also examined on the basis of the reasoning of the judgment and the material facts established. [S1; S6]
Conclusion
In protecting a trademark right, the outcome depends not only on the registration but on the correct documentation of actual use and on framing the claim in line with the nature of the infringement. First the entitlement and the scope of use must be determined; then preservation of evidence, interim protection, compensation and, if necessary, a criminal complaint should be planned, each with its own conditions. A business facing an infringement claim should assess the defenses of permission, honest use, exhaustion of rights and non-use with concrete records.
Related articles: Opposition to a Trademark Application: Time Limit, Likelihood of Confusion and Proof of Use; Invalidity and Revocation of a Trademark: Unused Trademarks and the Correct Route of Application; Domain Name Disputes: .tr Applications, UDRP and Recovery of a Domain Name.
Frequently Asked Questions
If my trademark is registered, can I stop every similar use?
No. The goods and services, the use of the sign, the likelihood of confusion and the statutory exceptions are assessed together. A registration does not provide unlimited rights over all words and sectors.
Does complaining to the platform take the place of a lawsuit?
No. A platform action may remove the listing; however, it does not provide compensation, a register change or a binding judicial finding. Evidence should be preserved before the notice is made.
Is it mandatory to send a formal notice?
It is not a general requirement in every infringement action. It is assessed according to the file in terms of permission, default, good faith, loss of evidence and the need for an injunction. It should not be assumed that a formal notice stops time limits automatically.
Does an acquittal in the criminal case necessarily end the civil action?
No. The reasoning of the acquittal and the facts established with finality are important. Different issues, such as the registered sign and actual use, may be examined separately; the Court of Cassation example above shows the importance of this distinction.
Sources and legal bases
- Industrial Property Law No. 6769 (Sınai Mülkiyet Kanunu), Arts. 7, 9, 19, 29–30, 149–159. TÜRKPATENT legislation page; WIPO Lex record of the consolidated Turkish text.
- Code of Civil Procedure No. 6100 (Hukuk Muhakemeleri Kanunu), Arts. 389–405. Text of the law.
- Turkish Commercial Code No. 6102 (Türk Ticaret Kanunu), Arts. 4 and 5/A. Text of the law.
- Law No. 6325 on Mediation in Civil Disputes (Hukuk Uyuşmazlıklarında Arabuluculuk Kanunu), Art. 18/A. Text of the law.
- Turkish Code of Obligations No. 6098 (Türk Borçlar Kanunu), Arts. 72, 74, 154. Text of the law.
- Turkish Criminal Code No. 5237 (Türk Ceza Kanunu), Art. 73. Text of the law.
- Court of Cassation 11th Civil Chamber (Yargıtay 11. Hukuk Dairesi), May 14, 2024, E.2023/275, K.2024/3889, V/C and VI. Full-text record, may require login; alternative decision page.