The counterfeiting of goods is threatening international trade more than ever before. According to the Economic Costs of Counterfeiting and Piracy report by Frontier Economics, the total value of counterfeit and pirated goods in international trade is forecast to reach $991 Billion by 2022.[i][ii] And when it comes to fighting against goods infringing intellectual property (“IP”) rights in the course of cross-border trade, the role of the customs measures is crucial. In this short article, we will be analysing the application system for the respective measures and relevant procedural rules of Turkey, which should be a hub in this fight considering its geographical location bridging East and West.
Legislative Framework
In Turkey, customs measures available against goods infringing an IP right are mainly regulated under the Customs Code numbered 4458 and, in more detail, in the Customs Regulation (“Regulation”) published in the Official Gazettes dated 4 November 2011 and 7 October 2009, respectively. Although the Regulation has been amended numerous times since its enactment, its provisions in effect concerning the protection of IP rights are mostly in line with EU Regulation No. 608/2013 with certain differences.
Measures
Available measures that can be applied against goods infringing an IP right[iii] are the detention of the respective goods and their suspension from all customs proceedings. The respective measures not only cover the import and export of infringing goods but also goods in free zones and goods in transit.
Goods of which the release has been suspended or goods which have been seized cannot be:
put into the customs territory of the Republic of Turkey;
released for free circulation;
brought out of the customs territory of the Republic of Turkey;
exported;
re-exported;
placed under a suspensive procedure;
placed in a free zone.
Application: Online, Centralized and Free
For the respective measures to be applied, in principle, an application should be submitted by the IP rights holder and the respective application should be accepted. Although the Regulation also allows the customs authorities to take the measures based on suspicion at their own initiative where solid evidence is available on infringement, in practice, the customs authorities usually insist on an application filed by the rights holder. Therefore, we recommend not to rely on such rights of the customs authorities, but to submit the application. Please also note that an IP rights holder who domiciles outside Turkey may only apply for the respective measures through a representative in Turkey.
Fortunately, Turkey has an efficient application system. It is online: Applications for customs measures are filed online on the website of the Directorate General of Customs.[iv] It is also possible to check the status of the application or to renew previous applications on the website. It is centralized: Where an application is granted, all local customs authorities shall be able to act based on this single application. Local customs authorities shall be able to see the application granted and the information on the suspicious goods, on their intranet automatically. The application system is also free: no official fee, duty or tax is paid for the submission of the application.
In the application, the applicant must provide sufficient information about the IP right to be enforced and the suspected infringing, so the officers of local customs authorities can identify the difference between genuine and counterfeit (suspected) goods.
Within 30 working days of the receipt of the application, the Directorate General of Customs notifies the applicant of its decision granting or rejecting the application. If granted, the period in which the customs authorities are to take action should not exceed one year.[v] However, this period may be extended upon request.
Procedures Upon the Grant of an Application: Simplified Destruction or Interim Injunction
In the event that the Directorate General of Customs decides to grant the application, the decision granting the application and the description of the goods suspected of infringing an IP right will be made available to all local customs authorities through an intranet, and thus monitoring at the customs will officially begin.
When the monitoring pays off and a local customs authority identifies the goods suspected of infringing an IP right covered by the decision granting the application, the relevant local customs authority will either suspend the release of the suspicious goods or detain them. The respective measure taken by the customs authority will be notified to relevant parties, namely the rights holder (the applicant of the customs measures, the IP rights holder) and the declarant of the goods (the goods suspected of infringement) within the following working day. The rights holder may request inspection or sampling of the suspicious goods. If the rights holder is convinced that the suspected goods of which the release has been suspended or which have been detained, infringes their IP right, there will be two options.
Firstly, the IP rights holder may try to obtain a letter from the owner of the goods consenting that the goods suspected of infringing an IP right may be destroyed under customs control, without any need for a court decision. The respective letter must be submitted to the relevant local customs authority within 10 working days from the notification of the applied customs measure.[vi] This procedure is defined as a “simplified destruction procedure”. Alternatively, again within the same 10 working day period, the IP rights holder may initiate a lawsuit (to determine whether an IP right has been infringed) and obtain an interim injunction decision from the respective court (for the continuation of the applied customs measures).[vii] If an interim injunction decision has been obtained, the suspicious goods will be stored until the court decides on the merits of the case, and if the court determines that the goods infringe an IP right, the goods may be destroyed at the expense of the infringer.
Some Advantages of the Application System
By using this relatively basic application system, the IP rights holder may monitor suspicious activities throughout the Turkish borders and prevent counterfeit goods from entering the territories of Turkey or other countries before the consequences of infringement become difficult to control. Once infringing goods enter the borders, tracking them may become a much more challenging task. From this aspect, customs measures may be considered as a preventive strategy.
Furthermore, once infringing goods are detained by customs authorities, it will be possible for the IP rights holder to use the respective situation against the infringer as a tool of settlement (for the simplified destruction procedure). In the event that a settlement cannot be reached, the respective goods could be used as evidence providing the judge with an idea on the nature of the infringement in a lawsuit which would settle the dispute on its merits.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
[i] Frontier Economics (2017) The Economic Costs Of Counterfeiting And Piracy, Report prepared for BASCAP and INTA Executive Summary (see https://cms.iccwbo.org/content/uploads/sites/3/2017/02/ICC-BASCAP-Frontier-report-2016-Executive-Summary.pdf last accessed on 27 December 2018).
[ii] Please note that the respective figure does not include the domestic production and consumption of counterfeit and pirated goods, digital piracy in movies, music and software along with wider economic and social costs, which would boost the total impact of counterfeiting and piracy in general. For details, please refer to the mentioned report provided above.
[iii] Under the Regulation, the infringed IP right that is aimed to be protected by the respective measures may be a trademark, patent, utility model, copyright or any related right, design, topography of semiconductor product, plant variety right or a geographical indication. They must be duly registered in Turkey for benefiting from the measures.
[iv] The Directorate General of Customs is the competent department evaluating the applications for customs measures and works under the authority of the Ministry of Customs and Trade located in Ankara.
[v] The period begins from the date on which the application was duly registered into records of the Directorate General of Customs.
[vi] 3 working days for perishable goods.
[vii] Except in the case of perishable goods, the respective 10 working day period may be extended by a maximum of 10 working days upon a duly justified request by the IP rights holder. Alternatively, it is possible to obtain an interim injection decision from a non-competent court and submit the decision to the relevant local customs authority within the same 10 working days and file the lawsuit with the competent court afterwards, but within 10 days (not working days) after the receipt of the decision on the interim injunction (from the non-competent court).