Civil or criminal? Fighting counterfeiting in Turkey

Turkish law does not provide ex officio criminal measures where the administration or the public prosecution may act on behalf of trademark owners, as occurs in several countries. Therefore, Turkish law encourages brand owners to be more active in their fight against counterfeiting.

As the law provides a dual mechanism, brand owners often question the effectiveness of the alternatives and wish to adopt the approach which proves the most effective. Effectiveness may be measured in terms of time, cost and reduction of counterfeit activity.

When determining the appropriate course of action, the aims of the brand owner, the amount or extent of counterfeit products in Turkey, the size of the counterfeiter’s business and where it is located should be taken into account.

Criminal actions

Arguably, initiating criminal actions against counterfeiters in Turkey provides the most effective results for brand owners. As most brand owners’ primary concern is reputation, criminal action is generally the preferred alternative because it prevents counterfeit products entering the market.

Criminal actions against counterfeiters are more time-effective as they allow immediate seizure of the goods, usually within the same day. Importantly, the brand owner’s attorney plays a collaborative role during the process, attending the raid and receiving insight into the relevant counterfeit market as well as the specific illegitimate activities in question.

Due to the current legal framework and workload, the police generally do not take any steps beyond seizing the counterfeit products. However, the information or documents obtained during the raid can be useful for a brand owner’s future anti-counterfeiting activities.

Criminal action is a relatively cost-effective alternative compared to civil actions because the courts require only a minimal official fee from complainants in criminal actions.

In practice, criminal penalties for counterfeiting are not harsh in Turkey. Although the law mentions imprisonment, in practice prison penalties are generally converted into criminal fines. Therefore, in practice the criminal courts rarely issue decisions of imprisonment. If the counterfeiter has no criminal record, the court may suspend the punishment for five years.

Therefore, while the current criminal law does not have a major deterrent effect on counterfeiters, in practice criminal action provides an effective mechanism for seizure and destruction of counterfeit goods.

Civil actions

In addition to initiating a criminal action, brand owners may choose to start a civil lawsuit to eliminate trademark infringement as well as seek damages.

The Turkish Civil Procedural Law provides that brand owners may request a preliminary injunction to prevent sale of the goods to third parties. However, in practice the civil court judges are reluctant to render such preliminary injunction decisions.

In most cases, before rendering a preliminary injunction decision the civil court will schedule a hearing date after which it might send samples of the counterfeit product for expert examination. In some cases the court may issue a preliminary injunction decision if the brand owner deposits an amount in order to compensate the counterfeiter’s possible future damages. Because this process takes time, there is a risk that the counterfeiter may sell the counterfeit products in the meantime.

As a plaintiff in a civil action, brand owners must cover every official fee and expense until the end of the process. Therefore, initiating civil actions against counterfeiters is comparatively more expensive for brand owners than criminal actions.

Unlike in criminal actions, brand owners who initiate civil actions have the option to recover their material and moral damages. However, as it generally takes around three years to receive the court’s decision, this alternative is not always suitable. A further consideration is that since counterfeiters in Turkey usually do not have permanent business addresses, damages are not always collectable.

Despite this, the amount of damages ordered by the court has an effective deterrent effect because when the court calculates the damages, it considers the brand owner’s actual loss or the income of the counterfeiter.

Taking into account the pros and cons of criminal and civil actions against counterfeiters, initiating criminal action arguably serves brand owners better. Brand owners may choose to explore the counterfeit market through criminal raids and challenge the big fish through the civil courts.