CRIME OF TRADEMARK INFRINGEMENT AND ITS ELEMENTS 10 February 2025

Crime of Trademark Infringement and Its Elements

A trademark is a set of signs that distinguish the goods or services of a business from those of others. Trademark rights grant the owner of a registered trademark the exclusive right to use the mark on specific goods or services. The crime of trademark infringement occurs when someone unlawfully and unauthorizedly uses another's trademark and is regulated under the Industrial Property Law No. 6769 ("IPL"). This offense is frequently encountered in the commercial world, causing both material and moral damage to the trademark owner due to unauthorized use of the mark.

Elements of the Crime of Trademark Infringement

The crime of trademark infringement is committed when an unauthorized person uses a registered trademark belonging to another. The elements of this crime are as follows:

1. Registration of the Trademark: For the crime to occur, the infringed trademark must be registered. Under the IPL, if a trademark is not registered, criminal protection is not provided. Therefore, the crime of trademark infringement must be committed against a registered trademark.
2. Unauthorized Use: Unauthorized use of a registered trademark constitutes trademark infringement. This unauthorized use may take the form of exact imitation (counterfeiting) or usage in a way that is confusingly similar to the original mark (passing off). Counterfeiting refers to an exact copy of the trademark, whereas passing off creates a similarity that misleads consumers.
3. Intentional Action: This crime can only be committed intentionally. That is, the perpetrator must knowingly and willingly use the trademark. The perpetrator must act without the permission of the trademark owner.

Acts Constituting the Crime of Trademark Infringement

The crime of trademark infringement is an offense with alternative acts, meaning that it can be committed through different actions. According to Article 30 of the IPL, the following acts constitute this crime:

• Manufacturing goods or providing services,
• Offering for sale or selling manufactured goods or services,
• Importing or exporting the products,
• Purchasing, possessing, transporting, or storing these products for commercial purposes.

If any of these acts are committed, the crime of trademark infringement occurs. For the crime to be established, the trademark owner does not need to suffer material damage, as this is a crime of danger, it materializes even if no actual damage occurs. For example, merely storing counterfeit products in a warehouse with the intent to sell them is sufficient for the crime to be committed.

Trademark Infringement by Counterfeiting and Passing Off

Trademark infringement can occur in two ways:

1. Counterfeiting (Exact Imitation): In this case, an identical or nearly indistinguishable copy of a registered trademark is produced and used on the same products or services. For example, an exact replication of a clothing brand's logo constitutes counterfeiting.
2. Passing Off (Confusing Similarity): Passing off occurs when a mark is created that is highly similar to a registered trademark and likely to confuse consumers. In such cases, consumers may mistake the counterfeit product for the original. For passing off to be established as a crime, the imitation must be similar enough to cause confusion among consumers regarding the original brand.

Criminal Sanctions for Trademark Infringement

Trademark infringement is a serious crime with significant legal consequences. Under the IPL, individuals committing this crime may face the following penalties:

• Imprisonment from One to Three Years: Those who use another’s registered trademark without permission, produce counterfeit goods, or sell such goods may be sentenced to imprisonment from one to three years.
• Judicial Fine of Up to Twenty Thousand Days: In addition to imprisonment, a judicial fine may also be imposed.

Furthermore, the IPL stipulates penalties for individuals who unlawfully exercise control over a trademark. For example, those who unauthorizedly transfer or license a trademark may face two to four years of imprisonment and a judicial fine of up to five thousand days.

Right to File a Complaint and Statute of Limitations

The crime of trademark infringement is a complaint-based crime, meaning legal action is initiated only upon the complaint of the trademark owner. The trademark owner must file a complaint within six months from the date of learning about the infringement. If no complaint is filed within this period, a criminal case cannot be initiated. Additionally, the statute of limitations for this crime is eight years. This means that if eight years pass after the commission of the crime, no legal proceedings can be initiated.

Effective Remorse in Trademark Infringement Cases

For the provisions of effective remorse to apply in trademark infringement cases, certain conditions must be met (Supreme Court General Assembly Decision No. 2020/444):

1. The perpetrator must have produced counterfeit goods by infringing another’s trademark and must have offered them for sale or sold them.
2. The seller or person offering the counterfeit goods must disclose the source from which they obtained these goods.
3. By revealing the source of the goods being sold, the following must be ensured:
• Identification of the manufacturers,
• Seizure of the counterfeit goods.

The provisions on effective remorse are regulated by law. According to the IPL, if a person selling counterfeit goods discloses the source of these goods and helps authorities locate the manufacturers and seize the products, no penalty will be imposed on them (IPL Article 30/7).

Competent Court for Trademark Infringement Cases

The court responsible for handling trademark infringement cases is the Criminal Court of Intellectual and Industrial Property Rights. This court conducts proceedings according to the Criminal Procedure Code No. 5271.

Conclusion

Trademark infringement is one of the most common legal issues encountered by trademark owners in the business world. Unauthorized use of registered trademarks can decrease the value of a brand and damage consumer trust. Therefore, trademark owners must take legal action by filing complaints to protect their rights.

The legal regulations on trademark infringement clearly define both the elements of the crime and the criminal penalties, providing strong protection for trademark owners.