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Are your hands tied when your non-patented invention is counterfeited in Turkey?

I will reply to this very shortly: No, they are not.

In the event that a non-patented invention is counterfeited in Turkey, the rightful owner of the invention is entitled to pursue the counterfeiter under “Unfair Competition” provisions in Turkish Commercial Code.

Under these provisions, the rightful owner of the invention may request from the court:

(i)           determination as to whether the concerning act is unfair;

(ii)          prevention of an unfair act;

(iii)        elimination of the unlawful consequences (i.e. destroying the counterfeit products);

(iv)        compensation for damages (i.e. the court may rule that the defendant’s prospected gain related to the unfair competition act be provided as compensation to the claimant) and

(v)         moral compensation.

The statute of limitations for any lawsuit under “Unfair Competition” is 1 year after the rightful owner of the invention becomes aware of such unfair act; and in any case 3 years upon accruing of such act.

Unfair competition also constitutes a criminal act with a penalty of 2 year-imprisonment; but the prosecution and/or trials would not usually result in imprisonment; however, this measure can be used as a tool to pressurize the counterfeiter.

I must emphasise that as there will be no patent registration in Turkey, evidencing that “the claimant is the rightful owner of such invention” is one of the challenges in these lawsuits. However, if the invention is protected under a patent in another jurisdiction, these records can be used as a solid evidence for proving the identity of the rightful owner.

Please finally note that the application of “Unfair Competition” is very broad under Turkish law. These provisions may apply to any “unregistered” intellectual property rights such as unregistered trademarks, trade names or industrial designs (if not protected by copyright). Moreover a work product, which does not enjoy any kind of intellectual property protection such as “non-public know-how”, may be protected under these provisions.

So don’t lose your hope when your non-patented invention, unregistered trade mark or any work product, which does not enjoy any kind of intellectual property protection, is counterfeited in Turkey; trust Unfair Competition provisions.

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Publication Date: 2 December 2016