Customs applications can be filed for intellectual and artistic works (copyrights), topographies of integrated circuits, breeders’ rights of new plant varieties, patent and utility model rights, industrial design rights, geographical indications, trademarks, supplementary protection certificates and other intellectual and industrial property rights.

The customs applications can be filed electronically at the Turkish customs authorities by using a specific form, namely Ek-13, or by using an electronic data exchange system. If the rights holder is located abroad, a representative specifically appointed by an attorney or authorised person (licensee, distributor, etc) can file a request on behalf of the rights holder.

The rights holders can file centralised applications for customs applications at the Turkish Customs Directorate. All the Turkish customs authorities can access the database every day.

The application should cover information enabling the customs authority to identify the goods requiring IP protection. In this regard, it is important for the rights holder to provide any information to allow the customs authorities to easily recognise the goods during their routine checks.

• Technical details of the goods (eg, pictures of the products on a CD);
• Any information regarding the type of counterfeiting actions;
• The contact information, including name and address, of the rights holder;
• Registration or grant certificate proving that the right is registered and protected in Turkey (letters patent, registration certificate for trademarks, etc); and
• The requested term during which the customs authority should take action. The term cannot be more than one year.

Customs applications last no more than one year and are renewable at the end of the one-year surveillance period. Any customs application is concluded within one month of the application date by the customs authorities.
If the application is refused by the customs authorities, the applicant for the customs action can object to the refusal of the application.

When the goods are identified as counterfeit, the customs authorities stop processing the goods and detain them. The customs authorities notify the rights holder or its representative, as well as the holder of the detained goods, within one day following their detention, by facsimile or email.

The rights holder has the option to check the suspected fake goods, and demand a sample to determine whether they are actually infringing its IP rights. Any analysis or expert fees to determine the infringement of rights, as well as fees to supervise the customs officers, should be paid by the rights holder and the rights holder must declare its consent where the application is filed.

When the rights holder has been notified of the suspended goods, there are two ways to prevent their entry into Turkey:

• Applying for the simplified destruction procedure; or
• Taking court action for the IP infringement.

The simplified destruction procedure is very effective and cost-saving for fighting against counterfeit actions as it doesn’t require filing any court action, and thus removes the burden of court costs.

• A written letter stating that the detained goods infringe IP rights, with the reasons the detained goods should be identified as counterfeit; and
• A letter of consent from the owner of the detained goods declaring that the goods have been abandoned for destruction.

If the rights holder or the owner of the detained goods does not raise any objections, the customs office can apply the same procedure to destroy the goods, presuming that the parties agree on their being destroyed. The letter of consent can be directly submitted to the customs authorities by the declarant or the owner of the detained goods within the same specified time limit, as long as the customs authorities accept the letter of consent from the declarant or the owner covering the destruction of the detained goods.

If the rights holder does not use the simplified procedure, the rights holder can file a request to seize the goods and initiate legal procedures upon the notification of the counterfeit goods. If such a request is lodged, the customs procedures can be suspended for 10 working days after filing a request. The rights holder can ask a criminal or civil court to implement a preliminary injunction, or file court action directly without ordering a preliminary injunction. If a preliminary injunction is ordered, the rights holder should file court action within 10 days from the date of a preliminary injunction.

If the rights holder cannot obtain a preliminary injunction from the court or does not take direct court action within 10 days from the request, and the customs formalities have been already completed for the detained goods, the customs authorities can release the goods against a reasonable security to protect the rights of the IP owner and to enable the rights holder to take legal action.

The detained goods are stored by the customs authorities for the identified time and all the risks and costs for the storage are the responsibility of the rights holder.

If the authorised court rules that the detained goods are counterfeit, there are three possibilities for the destiny of the counterfeit goods:

If the court rules that the counterfeit goods be destroyed, the goods are disposed of by an authorised customs officer, provided that all the costs for destruction are paid by the owner of the goods.

If the court rules that the counterfeit goods should be handed over to the rights holder after altering their essential character, the character of the counterfeit goods should be substantively changed such as not to restore the old form. Dismantling the marks and labels on the counterfeit goods is not suffcient to change the essential characters of the goods.

If the court rules that the counterfeit goods should be confiscated, the goods are reclaimed after change of their essential character is made.

Customs applications specifically filed by the rights-holders to detain infringing goods are not necessarily required in all cases. The customs authorities can take ex offcio actions to prevent counterfeit activity without needing any customs applications, in cases where there is clear evidence that the goods are fake. For ex offcio actions for detaining the goods, the customs authorities can request the rights holder to provide detailed information and documents to recognise the suspected goods.

This article first appeared in An Effective Tool Against Counterfeit And Pirated Goods: Customs Measures In Turkey, a supplement to World Intellectual Property Review Annual 2013, published by Newtonmedia. To view the issue in full, please go to www.worldipreview.com