A discussion whether the freedom of expression is violated by prohibiting the access to a website where a trademark of a third company is used in the domain name was heard before the Turkish Constitutional Court (“the Court”) upon an individual application. In order to understand the ruling of the Court, it is worth looking at the history of the dispute.
Using a trademark of a reputable cargo company “yurtiçikargo” in a domain name as “yurticikargomagdurları.com”, having the meaning as “victims” of the said cargo company (“the Company”) in Turkish caused the dispute. Arguing that such use infringes the trademark rights of the company and constitutes unfair competition, the Company filed an action and requested pecuniary and non-pecuniary compensation. The Istanbul 4th IP Court (“IP Court”) decided with its decision no. 2013/117, merit no. 2012/137, date 02/07/2013 that no unfair benefit was derived from the well-known status of the Company’s trademark, no commercial effect was aimed, no good or service was provided in the website, etc. and therefore concluded that such use did not constitute trademark infringement. But in addition to that, the IP Court determined that such domain name creates a negative effect in society, humiliates the Company and damages its commercial reputation. As a result, the Court held that there is unfair competition, ruled for compensation and decided for blocking the access to this website. The Court of Appeal also upheld this decision (decision no. 2014/5119, merit no. 2013/15738, date 17.03.2014).
The admin of the website, who is also one of the defendants in the above mentioned case, made an application before the Constitutional Court, arguing that freedom of expression was violated since the access to the said website was blocked for an indefinite period. The Court assessed whether this prohibition infringes the freedom of expression or not by taking into account several factors as: legitimacy, justified reasoning, proportionality to the requirements of democratic social order. As a result, the Court held that commercial reputation is one of the property rights that the State has a positive obligation to protect. Since it was aimed to protect the Company’s commercial reputation by such prohibition, this is proportional to the requirements of democratic social order. Therefore, the Court rejected the application by majority.
However, in the reasoning of the dissenting vote, the Court’s President argued that criticizing companies is necessary as criticizing the organs of the State and political power; therefore the companies must be more tolerant for critiques. He also mentioned one of the disputes which was heard before WIPO Arbitration and Mediation Center (Akbank Türk A.Ş vs. Nurullah Akın, case no. 2011-1411, date 25.10.2011) as a precedent for the subject matter, in which the Arbitrator held that criticizing any trademark or good/service provider should be evaluated within the scope of freedom of expression. Accordingly, he stated in the dissenting opinion of the decision that the freedom of expression was violated by blocking the access to the web site for an indefinite period; therefore the application should have been upheld.
The decision is of importance since it points to the relationship/conflict of interest between the rights/legal remedies provided for trademark owners and constitutional rights of individuals. If the aforementioned dissenting opinion becomes adopted widely in the future, it may be interesting to see the impacts of such notion to the rights of the trademark owners especially for the cases in which trademark infringement or unfair competition are disputed.
First published by WTR, in 08.04.2019