Parallel importation and trademark rights in the Turkish Law
The extent of legal protection granted to intellectual property rights is an important issue. An absolutely unlimited protection granted to intellectual property rights leads to the control of transferring and/or distribution of goods launched on the market by respective proprietors. This situation restricting free circulation of such goods and competition entails excessive limitation of intellectual property rights. One of the principles restricting intellectual property rights is “exhaustion of the right” according to which the intellectual property rights relating to the goods are deemed exhausted once such goods are launched on the market by the trademark owner or with his consent. In this case, the trademark owner is no longer entitled to control the circulation of those goods in the marketplace on the grounds of the intellectual property rights.
Parallel importing refers to the importation of genuine and trademarked goods launched on the market of a country by the trademark holder or with his consent into another country by any third person without the express permission of the trademark owner.
The imported goods do not have to be launched abroad only in order to be called parallel imports. In other words, importing the goods into Turkey that have been launched in any other country suffices for existence of parallel imports.
The “Gray market” refers to genuine and trademarked goods launched on a foreign market by the trademark owner or with his consent and imported into Turkey by any third person that are different than the trademarked goods already launched on the domestic market by such trademark owner or with his consent. In other words, the trademarked goods launched on the domestic market by the trademark owner should be more or less different than those launched on the foreign market by that trademark owner.
It is ruled in Article 9 of the Statutory Decree on the Protection of Trademarks (“SDPD”) that a trademark owner may prohibit the importation or exportation of the goods bearing his trademark without his express consent. Pursuant to Article 61 of the SDPD, a trademark owner is exclusively entitled to prohibit the importation or exportation of the goods bearing his trademark in any way whatsoever including parallel importation. Therefore, importation of such goods into Turkey by third persons through parallel importing without the consent of the trademark owner constitutes an infringement of the trademark rights. In such a case, the trademark owner whose trademark rights are infringed by way of parallel importation may choose to exercise his right to claim or sue and request for implementation of the legal measures set forth in Article 62 and succeeding Articles of the SDPD. The principle adopted by the Supreme Court on this issue is as follows: Pursuant to Article 13/1 of the SDPD and Article 7.1 of the Directive, “the trademark shall not entitle the proprietor to prohibit its use in relation to goods which have been launched on the market under that trademark by the proprietor or with his consent”. This is called “exhaustion of the trademark rights” both in the law and in practice. Implementation of this principle requires that the goods bearing the registered trademark should have been launched on the domestic market in Turkey by the trademark owner or with his consent. The trademark owner may not prevent the purchase and importation into Turkey of the trademarked goods by third persons if the trademark owner sells such goods abroad (or manufactures the same in anywhere other than the country of origin) after launching thereof on the market in Turkey. The same applies to the sole Turkish vendor (exclusive licensee) of the goods bearing the foreign trademark who has registered the trademark on his own behalf with the consent of the trademark owner.
The Supreme Court approves purchasing of trademarked goods from a foreign supplier and bringing them into Turkey by way of parallel importation after they are launched on the domestic market in Turkey by the trademark owner or any other person with his consent on the grounds of the “exhaustion of the right” principle.