Trademark Infringement: Lawsuits, Compensation, and Protection Methods

Unauthorized use of trademarks, which are created with great effort in commercial life, can lead to serious financial and reputational losses for businesses. It is critical for companies to be well-versed in the legal remedies they can pursue in case of trademark right infringement to protect their unique identities. This article will cover the protection of registered trademarks, lawsuits that can be filed in case of unauthorized use, and methods for calculating material and moral damages. You can find out how to defend your rights by learning the detailed legal framework in this guide.

Determination and Scope of Trademark Infringement

Trademark infringement is evaluated within the framework of the Industrial Property Law No. 6769 (IPL) and, in relevant cases, the Law on Intellectual and Artistic Works No. 5846 (LIAW). In Turkish law, the unauthorized use of a registered trademark and the creation of a likelihood of confusion among consumers are qualified as trademark infringement. As stated in the judgment of the Istanbul Anatolian 1st Civil Court of Intellectual and Industrial Rights, dated 30.06.2020, with file no. 2018/85 E. and decision no. 2020/103 K.; infringement occurs when identical or similar signs are used for identical or similar goods and services with a registered trademark without the permission of the trademark owner, creating a likelihood of confusion, including the possibility of association among the public. In determining the likelihood of confusion (iltibas), the likelihood of an average consumer confusing the products at first glance is taken as the basis.

Infringement actions are not limited to physical products but also encompass digital platforms. Unauthorized trademark uses carried out in online environments are also subject to sanctions within this scope. The Istanbul Anatolian 1st Civil Court of Intellectual and Industrial Rights, in its decision dated 15.12.2020, with file no. 2017/60 E. and decision no. 2020/247 K., qualified the use of a trademark as a keyword on websites as trademark infringement under IPL art. 7/3-d. Similarly, unauthorized use of a trademark in a trade name, email address, or internet domain name also constitutes infringement (Istanbul Anatolian 2nd Civil Court of Intellectual and Industrial Rights, dated 21.12.2023, file no. 2019/125 E., decision no. 2023/342 K.).

Lawsuits and Legal Claims That Can Be Filed in Trademark Infringements

The right holder whose trademark right has been infringed has the right to file a lawsuit by making various legal claims pursuant to IPL art. 149 and the provisions of the LIAW.

Accordingly, the right holder may request the following from the court:

• Determination, Prevention (Men'i), and Cessation (Ref'i) of Infringement: The determination of whether an act constitutes infringement, the prevention of potential infringement (men'i), and the cessation of ongoing infringement and elimination of its consequences (ref'i) may be requested (Bakırköy 1st Civil Court of Intellectual and Industrial Rights, dated 18.10.2022, file no. 2021/284 E., decision no. 2022/214 K.).
• Destruction and Seizure: It may be decided to collect infringing products, packaging, and production tools, delete the trademarks on them, or destroy them if deletion is not possible (11th Civil Chamber of the Court of Cassation, dated 08.02.2016, file no. 2015/7122 E., decision no. 2016/1148 K.).
• Publication of the Judgment: If there is a just cause, the publication of the final judgment in a newspaper, with the costs borne by the defendant, may be requested (Istanbul 3rd Civil Court of Intellectual and Industrial Rights, dated 15.12.2022, file no. 2021/409 E., decision no. 2022/177 K.).

Principles of Material and Moral Damages

When determining the amount of compensation in trademark infringements, different calculation methods stipulated in the law pursuant to IPL art. 151 may be used. When calculating the amount of compensation, the period during which the tort occurred is taken as the basis, and the principle of adherence to the claim is considered.

• Loss of Profit: The right holder may claim the likely income the infringer would have obtained, the net profit the infringer obtained, or a hypothetical license fee. The Bakırköy 2nd Civil Court of Intellectual and Industrial Rights (dated 14.10.2022, file no. 2021/453 E., decision no. 2022/212 K.) ruled that calculations could be made based on net profit if the defendant failed to separate their records.
• Limitation of Compensation: According to the judgment of the 11th Civil Chamber of the Court of Cassation dated 31.05.2021, with file no. 2020/5769 E. and decision no. 2021/4571 K., material damages should be calculated for the period between the date the tort began and the date of the lawsuit; calculations covering the period after the lawsuit date constitute a ground for reversal.
• Adherence to the Claim: Pursuant to Code of Civil Procedure art. 26, the court cannot exceed the amount of compensation requested by the plaintiff. The 11th Civil Chamber of the Court of Cassation (dated 15.06.2020, file no. 2019/4837 E., decision no. 2020/2863 K.) emphasized that the amount requested for each item of infringement must be evaluated separately, and exceeding the claim is unlawful.

Threefold Fee Application Under LIAW art. 68

In case of infringement of logos or trademarks that qualify as works, compensation up to three times the fair market value may be claimed pursuant to LIAW art. 68. This special type of compensation comes into play in cases of unauthorized use of designs protected by copyright.

• Legal Nature: According to the judgment of the Grand Chamber of Civil Cases (Hukuk Genel Kurulu) dated 30.06.2020, with file no. 2017/71 E. and decision no. 2020/483 K., this amount is a "civil penalty" applied without seeking a fault condition, and a "fictitious contract" is deemed to have been established between the parties.
• Judge's Discretionary Power: The 11th Civil Chamber of the Court of Cassation (dated 12.05.2016, file no. 2015/12345 E., decision no. 2016/6789 K.) stated that if the plaintiff requests a threefold fee, the court cannot dismiss this claim ex officio. However, a dissenting opinion argues that the judge has discretionary power over this amount according to the scope of the infringement (11th Civil Chamber of the Court of Cassation, dated 13.06.2014, file no. 2014/5880 E., decision no. 2014/11339 K. dissenting opinion).

Procedural Defenses and Special Cases

Procedural defenses and limitation periods that parties can raise in trademark lawsuits directly affect the course of the case. The relationship between laws in protection remedies and situations such as silence are meticulously examined by the courts.

• Loss of Right Through Silence: The trademark owner's long-term silence despite knowing about the infringement may lead to loss of rights. However, the Bakırköy 2nd Civil Court of Intellectual and Industrial Rights (file no. 2021/453 E.) stated that loss of rights would not occur in cases where the 5-year period has not expired.
• Relationship Between IPL and Unfair Competition: In some court decisions, it is stated that since industrial property rights are protected by a special law (IPL), there is no need for a decision based on unfair competition provisions within the framework of general provisions (Turkish Commercial Code) (Istanbul Anatolian 1st Civil Court of Intellectual and Industrial Rights, dated 14.05.2024, file no. 2021/123 E., decision no. 2024/136 K.).
• Competent Court: The competent court for lawsuits arising from trademark infringement is the Civil Court of Intellectual and Industrial Rights.

In cases of trademark infringement, legal processes must be accurately executed to determine the correct legal strategy and fully protect compensation rights. Seeking professional support regarding trademark protection, compensation calculation methods, and procedural defenses prevents your business from experiencing loss of rights. In this context, you can benefit from Çevik Legal's expertise to take the safest steps for your company and defend your rights in trademark infringement lawsuits. It is advisable to consult an expert to initiate legal processes without delay against rights infringements.

This article is for informational purposes only and does not constitute legal advice.