Jurisdiction in the case of online infringement of intellectual and industrial property rights has always been a subject of discussion in Turkish practice. While the claimants suffering from the violation of their rights mostly presuppose that online infringement takes place anywhere in Turkey, so there shall be no geographical boundary on seeking their rights, the parties accused of violation generally rely on the general jurisdiction rules in the civil procedures and assert that such actions shall be filed before the courts in the defendant’s residence.
The Regional Court of Appeal in Ankara issued a remarkable decision in 2021 concerning the jurisdiction in online infringement cases. It principally took sides with the parties alleging trademark infringement by ruling that the trademark owner may initiate a court action against the infringer anywhere in Turkey in case of online infringement of a registered trademark.
In that specific case, the claimant was a foreign company with a trademark registered in Turkey and was willing to terminate the defendant’s infringing acts through a trademark infringement action. Because the defendant committed the infringement through its website and actual use, the claimant chose to initiate the infringement case before the IP Court of Ankara, relying on the fact that the impact of the online infringement was also felt in Ankara and, in fact, anywhere in Turkey.
Article 156 of the Turkish IP Code, titled “Commissioned and competent court”, states that: “in legal proceedings to be instituted against third parties by the owner of industrial property rights, the competent court shall be the court of the place where the plaintiff is domiciled or where the action violating the law has taken place or where the effects of this action are observed.”
Following this provision, the claimant evaluated that the online infringement effects are observed anywhere in Turkey and therefore decided to file the action in Ankara.
However, the defendant, a resident in Istanbul, claimed that the IP Court of Ankara did not have jurisdiction in this case; instead, the IP Court in Istanbul has it. The defendant relied and focused on the first part/option in Article 156/3 of the IP Code, stating that, in the actions to be filed in the name of IP right holders against third parties, the competent court is that of the place where the plaintiff is domiciled, in conjunction with the complementing Article 156/4 setting out that, where the plaintiff is not domiciled in Turkey, the competent court shall be that of the place where the business premises of the recorded agent of the trademark(s) of the plaintiff is located. Referring to these provisions, the defendant asserted that the claimant is not domiciled in Turkey and the recorded trademark agent for the claimant’s trademarks is located in Istanbul; therefore, the action should have been filed in Istanbul.
The Ankara IP Court found the defendant’s plea lawful and ruled that it did not have jurisdiction to hear this case by reasoning that the defendant was based in Istanbul and the registered trademark agent of the trademark owner was also located in Istanbul.
Upon further discussion, the Regional Court of Appeal returned the case to the IP Court of Ankara by founding that the Ankara IP Court had jurisdiction and should have heard the case on the merits because the infringement also occurred online and therefore, the impact of such infringement could be felt in Ankara (and, in fact, anywhere in Turkey). Following this procedurally final and binding decision, the Ankara IP Court resumed its examination and continued to hear the case on the merits.
So the Regional Court of Appeal acknowledged that in case of online infringement of a trademark, the trademark owner is authorised to initiate a court action against the infringement anywhere in Turkey. Accordingly, the trademark owner has the option to file the action before the court of the place where:
- the infringing action takes place; or
- the impact of the infringing action is observed; or
- the plaintiff is domiciled.
If the claimant has no 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 recorded trademark agent is located and, if the record of the agent has been deleted, that of the place where the Turkish IP Office headquarters is located.
The Regional Court of Appeal decision confirmed that the trademark owner is not expected to strictly follow the order outlined in Article 156/3 but is entitled to choose one of the three options, irrespective of such order.
We believe that this decision encourages the brand owners domiciled abroad to sue for trademark infringement and seek protection for their trademarks with less burden in case of online infringement. Furthermore, it is noteworthy that this rule does not apply only to trademarks but is also valid in case of online infringement of other industrial and intellectual property rights.