Efficient customs actions at Turkish borders play a key role in the global combat against counterfeits in transit, and rights holders have a big part to play. Ayla Oktar and Salih Oktar report.
Border measures and customs seizures aimed at IP protection are the most effective, quickest and cost-efficient instruments for detaining and seizing counterfeit goods in international circulation, before they reach the end consumers. This is because:
- A temporary detaining procedure at customs does not require a prior judicial decision in principle.
- As an administrative public authority, the customs administration has a definite legal and actual power over the goods that are subject to customs procedures during the import/export transaction.
- Even if the rights holder does not make an application with the customs administration beforehand, there is a high probability that counterfeit goods can be determined and detained, because they pass through control and inspection for other compliance criteria (such as tax, public health requirements, etc) during customs transactions.
- All the information and documents relevant to all the parties related to the detained products, such as the producer, seller, shipper and purchaser companies, as well as the characteristics, price and quantity of the goods are obtained and kept by the customs administration. These count as reliable evidence for the rights holder in enforcement proceedings.
- Any shipment that is subject to a customs transaction enters the customs regimes of at least two different countries—the import and export countries. With transit shipments, the number of check points is even higher.
- Rights holders do not have to carry out a difficult and expensive investigation and evidence collecting in advance.
- The process of practical seizure of the detained goods currently at customs is not troublesome or expensive for the rights holder.
- There is a simplified destruction process at the customs.
Turkey, situated at the crossroads of Asia and the neighbouring EU countries, has a significant geopolitical position. Therefore Turkish customs have an undeniably vital role in the worldwide battle against infringement of IP rights.
Efficient customs actions at Turkish borders play a key role in the global combat against counterfeits in transit as well. Indeed, Turkish customs take very effective measures in this context. As a result, the number of infringed goods seized by customs has reached a remarkable level over the years.
Rights holders are highly recommended to use the administrative and legal procedures for an efficient IP protection involving customs measures in Turkey.
Baseline legal arrangement
The legal basis for the detainment and seizure of goods deemed to be infringing IP rights at the Turkish border, is Article 57 of Customs Law no 4458, which was amended in 1999, and Articles 100 to 105 of the Customs Regulation which is enacted based on this law.
Scope
Goods which infringe registered trademarks, patents, industrial designs, geographic indications, integrated circuit topography rights, plant variety rights and copyright protected by the law, are stopped by customs upon the application of the rights holder or ex officio under specific conditions, and the goods are detained temporarily. In this context, it is most important for rights holders to ensure the territorial protection of their IP rights through registrations in Turkey.
The process
Application of the rights holder
Customs measures function, in principle, based on a central application made to the customs administration by the rights holder. Upon this application, which requires renewal annually, the customs administration starts tracking potential infringements related to a protected right. When a product of this nature is declared at customs, its procedure is promptly suspended; the product is temporarily detained and the right holder is immediately informed.
Ex officio procedures in the absence of a central application to the customs administration
When a rights holder does not make any central application to the customs administration in advance, if it is obvious that the goods are counterfeit, the customs administration notifies the rights holder in compliance with Article 57/1.b of the law and can detain such goods ex officio and stop the customs procedure for three business days in order to permit the rights holder’s application.
If the rights holder examines the products during this time, detects the infringement and makes the required application to the customs administration, then as of that moment, the procedure will be applied to the goods as if the rights holder had previously made a central application.
However, it has to be considered that this proceeding is optional for the customs authority and the customs may not apply this mechanism ex officio. In practice, this option will be performed in favour of well-known trademarks only, where the customs officers can identify the obvious infringement easily.
Further steps
Upon notification of the temporary detainment decision by the customs administration to the rights holder or its representative—this notification is made in writing in the implementation as a fax transmission in advance which is followed by a mail and the terms start as of the transmission of the fax message—the following procedures can be exercised by the rights holder:
1. Simplified destruction
This procedure has been added to the law by the amendment in 2009 (Customs Law Article 57/6; Customs Regulation Article 105). Accordingly, the rights holder may, within 10 business days following the customs notification (three days for perishable products), apply to the customs administration together with the written consent of the product owner or the authorised declarer for the simplified destruction of the goods without any need for a court order.
If no objections are made by the owner or declarer of the goods during the term indicated, then the simplified destruction procedure is applied by the customs administration. The application period of 10 days for non-perishable products can be extended, if demanded, for further 10 days as based on valid grounds.
The destruction procedure is realised under the supervision of the customs administration and the responsible party for that action is the rights holder. Therefore all the expenses will be collected from the rights holder. In the simplified destruction process, having destruction costs borne by the rights holder is certainly not optimal.
“RIGHTS HOLDERS CAN PUBLISH MATERIALS SUCH AS MANUALS AND BROCHURES CONTAINING DETAILED BRAND INFORMATION, AND SHARE THESE WITH THE CUSTOMS ADMINISTRATION PERSONNEL.”
However, with other seizure options, especially in cases where a court decision is required for the destruction to take place, when the high storage expenses that the rights holder is obliged to pay during this process are considered, it is clear that simplified destruction is more advantageous for the rights holder.
Moreover, since it is necessary for the owner of the goods or declarer to consent to destruction for the simplified procedure to take place, in practice this generally results in a ‘settlement’ between the rights holder and the goods owner/declarer. In this case, it is recommended that a settlement is reached in which the owner/declarer of goods undertakes the costs and expenses for simplified destruction.
2. Claiming an interim injunction
If the conditions for simplified destruction are not realised or the rights holder does not want this option, then the rights holder should take an interim injunction decision for seizure of the suspended goods within 10 days of customs notification, and present it to the customs administration.
At this stage, the rights holder can file a criminal complaint before the Public Prosecution Office to start a criminal investigation or a civil case before the competent Civil Court or both of them.
Criminal proceeding
Since the detained goods are infringing a protected IP right such as a trademark, patent, industrial design, geographical indication, or intellectual and artistic work, putting such goods in circulation and bringing them into the customs zone constitutes a crime. According to Turkish law, goods subject to a transit customs regime are also evaluated within this scope. Consequently, the rights holder can implement this penal protection complaining to the Public Prosecution Office as being affected by the crime.
Upon receiving the complaint, the Public Prosecution Office sends the file immediately to the relevant Criminal Court of Peace for a seizure decision. Except for in a few exceptional cases, this process operates in a speedy manner and the court decisions for seizure are delivered to the customs administration on the same day.
In this case, the goods are kept and stored by customs until a final judgment. In this process, the rights holder is recommended to follow up the case as an intervener. If the case is concluded by decision of acquittal or dismissal due to a procedural or principal reason, this can result in the release of the goods.
Civil proceeding
The rights holder can also file a civil case before the competent Civil Court due to the infringement of the IP right in question, demanding the prevention and prohibition of the infringement, confiscation and destruction of the goods, as well as moral and material compensation, and demand an interim injunction decision for seizure of the goods. If an interim injunction decision is obtained and presented to customs in due time, the goods shall be kept by customs until the end of the case.
Although it does not provide a remedy at the desired level, satisfactory compensation decisions have been taken by Turkish Courts in recent years. In several decisions given by the Supreme Court, it is clearly stated that material and moral compensation can also be claimed by right holders in case of a transit shipment.
If these administrative and legal methods are not applied by the rights holder in due time, then the customs releases the temporarily detained goods.
Suggestions to increase efficiency
Regular contact and mutual information exchange with the local customs offices and training and educating the customs administration personnel, especially customs inspection officers, play a key role in the functioning of the system. Rights holders or their representatives should regularly acquaint the local customs with the nature and scope of their protected IP rights.
These education activities are usually conducted by providing regular training programmes for customs personnel or by the creation of databases which contain up to date information about protected rights and their holders, and are open to the use of customs personnel.
Within this scope, it is required to indicate that Interface Public Members (IPM), a global anti-counterfeiting tool developed by the World Customs Organization, gradually increases its functionality. A total of 58 countries, including Turkish Customs, have already joined this system, which aims to provide mutual exchange of information between customs and rights holders on a global level.
The system is currently being used by more than 2,000 customs administration personnel. Within this scope, for a more active operation of the system and for an increase in the benefits obtained, it is required to increase the number of right holders joining in the system, and customs personnel using the system actively.
Again, rights holders can publish materials such as manuals and brochures containing detailed brand information, and share these with the customs administration personnel within the scope of direct education of the customs personnel. Such materials shall be updated at specific intervals and redistributed to the local customs administrations.
For the fast and efficient operation of the system, it is very important that rights holders provide direct information, and support customs during the inspection phase of the goods. That could be achieved by having local representatives who can contact customs offices rapidly at any time of the day.
Keeping customs personnel motivated is very important in strengthening the efficiency of the system. The intent and persistence of rights holders for protection of their own rights along with the support given to the customs administration strengthens the motivation of the customs personnel and increases overall efficiency.
Ayla Oktar is a founding partner of Oktar & Oktar Law Office. She can be contacted at: ayla.oktar@oktaroktar.com
Salih Oktar is a founding partner of Oktar & Oktar Law Office. He can be contacted at: salih.oktar@oktaroktar.com
This article was first published on 01 April 2013 in World IP Review
IP protection, Turkey, counterfeiting, customs
