A Supreme Court decision involving infringement of the POLO brand demonstrates that criminal law rulings are not binding on civil courts in Turkey, and in claims for material and moral damages, the courts must examine the degree of infringement by defendants on a case-by-case basis.

The plaintiff, the Polo Lauren Company LP (Polo Ralph Lauren), is a global fashion brand and holder of multiple trademark registrations in Classes 3, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27, and 35, as well as a well-known Turkish trademark registration bearing the main element POLO. It first filed a criminal complaint based on grounds of using indistinguishable marks commercially on textile products of which falls under POLO marks of its client’s protection scope by using verbal and figurative elements of Polo Ralph Lauren marks. It then brought an invalidation action against three registrations —2014/23455, 2013/101692, and 2014/89950—in Classes 14, 18, 25, and 35, belonging to the defendants, along with claims of determination and trademark infringement and unfair competition.

Polo Ralph Lauren demanded material and moral damages compensation before the civil courts. The company sued on the ground that each of the defendants’ trademarks either included the word “POLO” as the essential element or a logo bearing similar visual elements to those of the plaintiff. The defendants argued that they used the disputed mark because of the exclusive right conferred by their registered trademarks and because the plaintiff’s POLO trademarks have a low degree of distinctiveness.

While the civil proceedings were under way, the criminal courts (Ankara 1st Penal Court of Peace on October 2, 2017, by Miscellaneous File No:2017/7182) ruled that the initial complaint would not be prosecuted.

Following the criminal courts’ decision, the first instance of the civil courts (Ankara 3rd Civil Court of Intellectual Property, Oct. 18, 2018, Decision No:2018/365) found no basis for infringement because of the decision not to prosecute the criminal complaint verdict and a lack of evidence while accepting that the marks had a high degree of similarity, and so invalidated all three of the defendants’ trademarks. Both parties appealed the decision and the dispute was brought before the Regional Civil Court of Justice. Because the criminal courts declined to prosecute the criminal case, the Regional Court was unable to find a basis or proof for the plaintiff’s claims other than invalidation of the defendant’s trademarks. Both parties appealed this decision.

The Supreme Court (11th Civil Chamber, May 24, 2022, Decision No: 2022/3948) unanimously overturned the Regional Court of Justice’s decision to refuse the infringement claims and ruled that a decision of non-prosecution is not binding upon civil courts and that the defendants could not assert a later-dated trademark registration as a defense in infringement actions. The court concluded that negligence is an absolute criterion in claims for material and moral damages. However, the issue of whether a defendant is expected to be reasonably aware that its goods infringe other parties’ marks must be examined before reaching a verdict on claims of such damages, which all prior decisions lacked.

Source:https://www.inta.org/perspectives/law-practice/turkey-supreme-court-rules-non-prosecution-verdicts-are-not-binding-on-civil-courts/