Jurisdiction in Online Infringement of Intellectual Property Rights – Intellectual Property


Turkey: Jurisdiction over online infringement of intellectual property rights

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Jurisdiction in case of online infringement of intellectual and industrial property rights has always been discussed in Turkish practice. While the plaintiffs victims of the violation of their rights mainly presuppose that the online violation takes place anywhere in Turkey, so there will be no geographical border to assert their rights, the parties accused of violation generally rely on the general rules of jurisdiction in civil proceedings and state that such actions must be brought in the courts of the defendant’s domicile.

The Ankara Regional Court of Appeal issued a remarkable decision in 2021 regarding jurisdiction in online infringement cases. It mainly sided with parties alleging trademark infringement by deciding that the trademark owner can take legal action against the infringer anywhere in Turkey in case of online infringement of a registered trademark.

In this specific case, the plaintiff was a foreign company whose trademark was registered in Turkey and was willing to put an end to the acts of infringement of the defendant through a trademark infringement action. Since the defendant committed the infringement through its website and its actual use, the plaintiff chose to bring the infringement action in the Intellectual Property Court of Ankara, relying on the fact that the impact of the online crime was also felt in Ankara and, in fact, all over Turkey.

Article 156 of the Turkish Intellectual Property Code, titled “Committed and Competent Court”, states that: “In legal actions brought against third parties by the owner of the industrial property rights, the competent court is the court of the place where the plaintiff is domiciled or where the action contrary to the law took place or where the effects of this action are observed.”

Following this provision, the plaintiff assessed that the effects of online infringement are seen everywhere in Turkey and therefore decided to file the action in Ankara.

However, the defendant, a resident of Istanbul, argued that the Ankara Intellectual Property Court lacked jurisdiction in this case; instead, the Istanbul Intellectual Property Court has it. The defendant relied and focused on the first part/option of article 156/3 of the intellectual property code, indicating that, in the actions to be brought on behalf of the holders of intellectual property rights against third parties, the competent court is that of the place where the plaintiff is domiciled, in conjunction with the addition of article 156/4 stipulating that, when the plaintiff is not domiciled in Turkey, the competent court is that of the place where the premises are located of the registered agent of the trademark(s) of the applicant is located. Referring to these provisions, the defendant asserted that the plaintiff is not domiciled in Turkey and that the registered trademark agent for the plaintiff’s marks is located in Istanbul; therefore, the action should have been filed in Istanbul.

The Intellectual Property Court of Ankara deemed the defendant’s plea legitimate and ruled that it had no jurisdiction to hear this case finding that the defendant was based in Istanbul and the registered trademark agent of the brand owner was also located in Istanbul.

After discussion, the Regional Court of Appeal sent the case back to the Ankara Intellectual Property Court finding that the Ankara Intellectual Property Court had jurisdiction and should have heard the case on the merits, because the ‘infringement also occurred online and, therefore, the impact of such an infringement. felt in Ankara (and, indeed, everywhere in Turkey). Following this final and procedurally binding decision, the Ankara Intellectual Property Court resumed its examination and continued to examine the case on the merits.

Thus, the Regional Court of Appeal recognized that in case of online trademark infringement, the trademark owner is entitled to take legal action against the infringement anywhere in Turkey. Consequently, the owner of the trademark has the right to bring the action before the court of the place where:

  • the act of infringement takes place; Where

  • the impact of the act of infringement is observed; Where

  • the applicant is domiciled.

If the applicant does not have a domicile in Turkey and decides to choose the third option, then Article 156/4 will apply and the competent court will be that of the place where the business premises of the registered trademark agent are located. and, if the registration of the agent has been deleted, that of the place where the seat of the Turkish Intellectual Property Office is located.

The decision of the Regional Court of Appeal confirmed that the trademark owner is not obliged to strictly follow the order defined in Article 156/3 but has the right to choose one of the three options, regardless of this order.

We believe this decision encourages foreign-domiciled trademark owners to sue for trademark infringement and seek protection for their trademarks with less burden in online infringement cases. In addition, it should be noted that this rule does not only apply to trademarks but is also valid in the event of online infringement of other industrial and intellectual property rights.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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