INTA Roundtable Addresses Trademark Infringement Online

Our habits have changed dramatically due to the COVID-19 pandemic. More than ever before, we shop, conduct business, entertain ourselves, and exercise with the help of online platforms. These shifts in consumer behavior have spawned new business models, led businesses and brands to build new online capabilities, and resulted in a significant increase in legal disputes concerning trademark infringement.

On October 6, Turkish trademark law practitioners gathered virtually for an INTA educational roundtable to discuss the illegal use of trademarks online and how trademark law in Turkey addresses this issue.

Hosted by Moroglu Arseven in İstanbul, Turkey, the interactive and informative roundtable featured Türkay Alıca (Alica Novus Patent, Turkey), Hale Büyükbozkurt (Reckitt Health, Turkey), and Elvan Cumhur (Hepsiburada,Turkey).

Mr. Alıca, a former Judge of Ankara 3rd Intellectual and Industrial Rights Court, described how trademark infringement is defined and relevant considerations, as well as how hosting, service, and access providers can be implicated in online infringement under Turkish law. In general, a hosting service provider can be subject to liability only if it is made aware of an infringement and does not take any action, he explained.

Ms. Büyükbozkurt drew attention to the magnitude of trademark infringement, noting that there has been a 133 percent rise in trademark infringement since the pandemic began. Due to the incrase in illegal usage, trademark owners have had to be more proactive to protect their trademark rights and their company’s reputation. A critical step to combat illegal uses is for both the online platforms and the trademark owners to collaborate, noted Ms. Büyükbozkurt.

Ms. Cumhur discussed the different measures and sanctions online platforms employ against illegal online trademark use, including suspending or shutting down an online shop. She also noted that online platforms must comply with Competition Law rules and be careful when examining brand owners’ takedown notices. Importantly, she emphasized that takedown notices sent by brand owners should be concrete and well supported.

The participants were highly active, asked probing questions, and highlighted the potential liability of online platforms for infringing acts of third parties based on precedents from the Turkish Appeal Court and the Court of Justice of the European Union (CJEU). One of the participants, Ekin Emir (Moroglu Arseven, Turkey) noted the CJEU decision in Coty Germany GmbH v. Amazon case (C-567/18), which addressed that simply “storing” the infringing goods cannot be an infringing act while, in contrast, storing is counted among the infringing acts in Turkish practice.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2021 International Trademark Association