Products of a trademark holder which are registered and well-known were counterfeited and these counterfeit products were exhibited for sale via a web site where on-line shopping has been made. Which rights does the Company allegating that its trademark rights have been infringed have against the Company providing on-line services ?
Is it possible to file a lawsuit against the Company providing the electronic commerce as if this Company has counterfeited the products and is it feasible to claim for determination, prevention and prohibition of unfair competition and infringement of trademark right, suspension of broadcasting and sale of the products, collection and demolition of the products and claim for non-pecuniary damages?
Could all these claims requested only from the internet place provider not from the Company which counterfeits the products? Before filing a lawsuit, is there any legal ground to force the Company to remove the content from the internet by only sending a warning letter?
Although you have not sent a warning letter to the operator Company, does filing a lawsuit against this Company expire the goodwill of the Company?
Law No 5651 on Regulating Internet Publications and Combating Internet Offences which has come into effect on 23.05.2007 has provisions based on Electronic Commerce Directive of European Union.
In accordance with 5th article of Law No 5651, the place provider has no obligation to control the content and examine if there is any illegal activity.
Furthermore in accordance with 9th article of Law No 5651 including the amendments made on 6th February, 2014, the place provider is under obligation to respond within 24 hours and remove the content from the web-site after he/she is informed on the illegal content or the person whose personal rights are infringed can directly apply to the Criminal Court of Peace instead of applying to the place provider.
Therefore, before filing a lawsuit with a request of interim injection, sending a warning letter to the place provider or applying to the Criminal Court of Peace might have an efficient consequence and provide a rapid solution.
There is a decision of Civil Chamber Assembly of Supreme Court dated 15.01.2014 which enligtens the issue.1
In this decision, The Court accepted that products in dispute had been presented for sale through the web site of the defendant and the trademarks on the products of the extrajudicial party had been registered on behalf of the plaintiff.
The Local Court decided to prevent the broadcast and sale of the products via the web-site and rejected the other claims on the grounds that the defandant can not be a party to the trial. The Local Court explains that there was loophole in the law due to the date, 20th July, 2006 when the lawsuit was filed. Therefore, by making a comparision, provisions of Electronic Commerce Directive of European Union and additional 4th article of Law on Intellectual and Artistic Works, numbered 5846 have to be applied into the dispute.
In terms of the relevant provisions, a system of warning and removing is stipulated. Therefore, the Company is assumed to be faulty, in case, the defandant Company is informed on the infringement and despite being informed, it does not remove the illegal content from the web-site.
Exceptionally, the defandant shall be liable for the infringement without sending a warning letter, if he/she places the content herself/himself or be in cooperation with the Company which counterfreited the products.
The Local Court decided that the defendant Company is not faulty. As, the defandant Company has not placed the illegal content on the web-site and a legal action has been taken against the Company without sending a warning letter. Therefore, prevention of infringement and non-pecuniary damage could not be claimed from the defandant Company which has no fault.
The Civil Chamber Assembly of Supreme Court decides and highlights that the petition dated as 20th July, 2006 replaces the warning letter at the same time. The defendant Company became aware of the illegal content by the notified petition. However, the defandant rejected to the petition and the interim injunction given by the Court, instead of removing the illegal content from the web-site. As a consequence, the defandant has been made faulty and has a legal capacity to become party to the pending case.
Additionally, in the users agreement drafted by the defandant and signed in the electronic media, it is regulated that the defandant has right to prevent the accession of users into the system.
Moreover, according to the Supreme Court’s decision, there is no loophole in the Turkish legislation due to the date, 20th July, 2006 when the lawsuit was filed. A joint liability of a person assisting to the commitment of acts which constitute infringement has to be applied to the dispute in accordance with 61/e article of the Decree Law on the Protection of Trademarks and 50th article of the former Turkish Code of Obligations numbered 818.
Finally, for protection of electronic commerce, warning of the internet place provider is regulated in the Turkish legislation. After, the Company allegating that its trademark rights have been infringed warns the internet place provider by a notification or a petition, if the platform operator company insists on not removing the illegal content, it becomes faulty and liable for the non-pecuniary damages and infringement.