Brand Protection on Digital Platforms and the Fight Against Counterfeit Goods

General Framework

The rapid growth in the volume of electronic commerce and the proliferation of online platforms operating as marketplaces have created an environment in which counterfeit or imitation examples of branded goods can readily be offered to broad audiences. In sales conducted through social media accounts, online marketplaces and independent websites, the unauthorised use of registered trademarks, the marketing of counterfeit goods as though they were genuine and the deception of consumers give rise to serious legal risks for both trademark right holders and consumers. The fact that such infringements can spread rapidly in the digital environment and that sellers can often not be easily identified takes trademark protection beyond a mere matter of registration and makes an effective and multifaceted legal response essential.

Infringements of trademark rights are assessed primarily within the framework of the Industrial Property Law No. 6769 (the “IPL”), as well as the Law on the Regulation of Electronic Commerce No. 6563 (the “E-Commerce Law”) and the relevant secondary legislation, the provisions of the Turkish Commercial Code No. 6102 (the “TCC”) concerning unfair competition, and the Customs Law No. 4458. This information note outlines the principal types of trademark infringement encountered on digital platforms, together with the administrative, civil and criminal remedies available to trademark right holders.

Trademark Infringement and Types of Infringement Encountered in the Digital Environment

The scope of the protection afforded by a registered trademark is set out in Article 7 of the IPL; as a rule, the use of the trademark or of a similar sign in the course of trade without the consent of the trademark proprietor constitutes an infringement of the trademark right. Pursuant to Article 29 of the IPL, imitating the trademark, and offering for sale, selling, distributing, importing or exporting goods known to be imitations, as well as possessing them for commercial purposes, are among the acts deemed to constitute infringement. The types of infringement most frequently encountered on digital platforms are summarised below:

• Sale of counterfeit and imitation goods: The offering for sale on online platforms of goods bearing a registered trademark that have been produced or imitated without the consent of the right holder constitutes a direct infringement of the trademark right.
• Use creating a likelihood of confusion: The use of signs, logos or product packaging similar to a registered trademark, thereby creating the impression in the mind of the consumer that there is a connection between the trademarks, may also be regarded as falling within the scope of infringement.
• Use of the trademark in domain names, accounts and store names: The unauthorised use of a trademark in a website domain name, a social media username or a marketplace store name may constitute not only infringement of the trademark right but also unfair competition.
• Use in advertising and as keywords: The unauthorised use of registered trademarks in search-engine or on-platform advertisements, or as keywords, may likewise constitute both infringement of the trademark right and unfair competition.
• Taking unfair advantage of a well-known trademark: Taking unfair advantage of the reputation of a well-known trademark, or causing detriment to its distinctive character, may be the subject of protection under the IPL even in respect of dissimilar goods and services.

Complaint and Take-Down Mechanism Before the Platform Under E-Commerce Legislation

In combating trademark infringements occurring in relation to goods offered for sale through an ECISP on electronic commerce marketplaces, it is possible to make use of the complaint and take-down mechanism envisaged under the E-Commerce Law. Pursuant to the Regulation on Electronic Commerce Intermediary Service Providers and Electronic Commerce Service Providers (the “Regulation”), upon a complaint by the right holder based on information and documents concerning the infringement of an intellectual and industrial property right, the electronic commerce intermediary service provider (“ECISP”) removes the product that is the subject of the complaint from publication and notifies the seller and the right holder accordingly.

Under the Regulation, a complaint may be filed through the internal communication system, a notary public or registered electronic mail (“KEP”), in such a manner as to include the information and documents required by the legislation, in particular the trademark registration certificate and the grounds for and evidence of the infringement. Once a complaint filed in accordance with the applicable procedure reaches the ECISP, the product must be removed from publication without delay and within no more than 48 hours. Where it is clearly established from the information and documents submitted by the seller alleged to have committed the infringement in its objection that the seller is in the right, the ECISP re-publishes the product within 24 hours at the latest from receipt of the objection. While this mechanism offers an effective means of swiftly halting the infringement, the rights of the parties concerned to apply to the judicial and administrative authorities under the general provisions remain reserved.

Civil Law Remedies

A right holder whose trademark right has been infringed may assert various claims by way of legal action pursuant to Article 149 of the IPL. In this context, the right holder may request a determination of whether the act constitutes infringement, the prevention of a likely infringement, the cessation of ongoing acts of infringement and the removal of the consequences of the infringement. The right holder may further request the seizure of the goods constituting the infringement and of the instruments and equipment used in their production, the granting of ownership of such goods to itself, the alteration of the shape of the goods or, where necessary, their destruction, and the publication of the court judgment to the public at the expense of the opposing party.

On the other hand, a right holder that suffers damage as a result of the infringement is entitled, pursuant to the provisions of the IPL concerning compensation (Article 150 et seq.), to claim material and moral damages, as well as compensation for damage to reputation where the reputation of the industrial property right is harmed as a result of the poor use or manufacture of the goods/services that are the subject of the trademark right, the procurement of goods so manufactured, or their release onto the market in an inappropriate manner. It is also possible to claim the loss of earnings by electing one of the alternative rights, namely the income that the trademark proprietor could probably have obtained by using its trademark had there been no competition from the infringer, the net profit obtained by the person infringing the trademark right through the goods or services in which the trademark was unlawfully used, or the licence fee that would have been payable had the trademark been lawfully licensed.

Moreover, in the face of the rapid spread of the infringement in the digital environment and the ease with which evidence may be destroyed, it is also of great importance to request a preliminary injunction pursuant to Article 159 of the IPL, either before the action is brought or during its course, so that measures aimed at halting the infringing use or publication may be taken.

It should also be noted that the IPL essentially provides for a system of protection based on registration; as a rule, the civil and criminal provisions concerning trademark infringement apply in respect of registered trademarks. Nevertheless, the genuine right holder who has used the sign on the basis of prior use may, relying on the provisions of the TCC concerning unfair competition (Article 54 et seq.), request the prevention of uses that create a likelihood of confusion or that take unfair advantage of its efforts, and the compensation of the resulting damage. Furthermore, the right arising from prior use may, pursuant to Article 6 of the IPL, also form the basis for opposing a later-dated trademark application or for seeking the invalidity of a registration. Well-known trademarks, for their part, may benefit from a certain degree of protection under the relevant international regulations even if they are not registered in Türkiye.

Criminal Law Remedies

Trademark infringement may, pursuant to Article 30 of the IPL, also constitute a criminal offence. Accordingly, a person who, by identically copying or creating a likelihood of confusion, infringes another’s trademark right and thereby produces goods or provides services, offers for sale, sells, imports or exports, purchases for commercial purposes, possesses, transports or stores such goods may be sentenced to imprisonment together with a judicial fine. For this offence, the trademark must be registered in Türkiye, and the conduct of an investigation and prosecution is subject to a complaint to be filed by the right holder within a period of six months from becoming aware of the act and the perpetrator. In the investigation conducted upon complaint, it is also possible to seize the counterfeit goods and the instruments used in their production.

As regards the detection and evidencing of the infringement in sales carried out through digital platforms, it is important to make timely and procedurally proper use of such means as screenshots of product listings and sales accounts, sales and shipping records and, where necessary, the determination of evidence through a notary public or the court. Securing this evidence without delay is decisive for the effectiveness of both the criminal and the civil proceedings.

Border (Customs) Measures

With a view to preventing counterfeit goods from being placed on the market by way of importation, it is also important for trademark right holders to seek protection at the customs stage. Pursuant to Article 57 of the Customs Law No. 4458, upon the request of the right holder or its representative, the customs administration may detain goods of a nature that infringes an intellectual and industrial property right or suspend the customs procedures. This mechanism can provide significant preventive protection by stopping counterfeit goods before they reach the domestic distribution network and online sales channels.

Conclusion

Brand protection on digital platforms is a multi-layered field that requires not the application of a single piece of legislation but the combined application of industrial property, electronic commerce, unfair competition, criminal and customs legislation. Trademark right holders may treat the complaint and take-down mechanism before the platform for halting the infringement, civil actions for remedying the consequences of the infringement and compensating the damage, criminal remedies for deterrence, and customs measures for imported goods as complementary tools.

The provision of effective brand protection depends on the trademark first being duly registered, on digital environments being monitored regularly, and on evidence being secured without delay where an infringement is detected. For this reason, it is important that administrative, civil and criminal remedies be assessed within the framework of a holistic strategy and on a concurrent basis in the fight against trademark infringements on digital platforms.