Abstract: This article aims o give an insight of the enforcement of patent rights especially in trade fairs in Turkey. Turkey’s top exporting sectors are automotive, textiles, apparel, machinery and equipment as well as rubber and plastics. Semi-products and spare parts which are subject to patent protection and related to these sectors are commonly infringed by third parties. As a result, patent right holders face infringement of patent rights during international trade fairs which take place in Turkey. Deris developed a fast and effective strategy to fight against the copying of patented products and their display during International Trade Fairs which also builds up IP awareness in the market and eventually increases the market share of the patent rights holder.

INFORMATION ABOUT THE TURKISH MARKET

Turkey is a business hub connecting the European continent with Middle East. This geopolitical position increases the importance of Turkey in the protection of IP rights extending to many jurisdictions.

The top exporting sectors of Turkey are automotive, textiles, apparel, machinery and equipment as well as rubber and plastics in which Turkey takes the role of being a producer, importer and exporter of spare parts, semi-products subject to patent protection.

The end buyers of these infringing products are usually the customers of patent holders. The end buyers are the users of machines, combined products produced and sold by the patent holder and the infringing products are used in these machines and/or with these combined products.
Thus, it is very common for patent holders to face a decrease in the sales of spare parts and/or semi-products in the market which eventually affects their market share as well.

BUILDING UP ENFORCEMENT STRATEGY

Parameters to be considered in an enforcement strategy of a patent, differs according to the sector, the size of the business of the infringer, the way of commercialization of the infringing product and the invented technology.

The evaluation of all these parameters and tailoring the most appropriate enforcement strategy still may not get the patent holder to the point desired. Hence, one of the most efficient ways for building up IP awareness as well as preventing infringing activities in the market is to take actions at Trade Fairs.

It is possible to take quick actions against infringing third parties during Trade Fairs.

These actions are;

Notary Determinations, Evidential Actions, Serving Cease and Desist Letter through the Notary Public

Notary Determinations:

The infringing activities of the attendees may be physically determined via the Notary Public during the exhibition.

The booths of the pre-determined infringers are visited with the Notary Public, who does not disclose his identity and takes pictures of the booth, the infringing products displayed at the booth and takes the samples of the brochures and catalogues during the exhibition. The Notary Public prepares a minute of proceedings indicating the date and time of the visits to the booths of the infringers and the fact whether the signboards and the brochures and catalogues included the infringing products. The minutes of proceedings of the Notary Public is an official document stating the use of the infringers without mentioning whether such use constitutes infringement or not. It is to be noted that in some cases, the infringing product may be also purchased during the Trade Fair.

Any online infringement by the infringers is also determined by the Notary Public. This determination also serves an official minute of proceeding which is official evidence.

Evidential Action:

This action is an ex-parte action wherein the patent holder requests the determination of evidences and actions as to the infringement from the Court. The determination takes place in the presence of court appointed experts which have a technical background at the booth of the infringer. This action finalizes by the submission of the experts report as to the determination of the evidence and actions.

Courts evaluate the request of determination of evidences of the patent holders at Trade Fairs as an urgent matter. The decision of determination may be rendered within one day since the Trade Fair provides a very short time slot to conduct the determination and the risk of the destruction of evidence is higher than normal.

The visit at the booth of the infringer has a wide surprise effect not only on the adverse party but also the rest of the infringers since the news of a court action spreads out among the attendees. Therefore, the timing of the determination by the Court is preferred to be after the physical Notary determinations.

We recommend filing the evidential action against the most well-known infringer company during the exhibition. Such an action against the most well-known infringer would draw the attention to the fact that the patent holder is determined to protect its IP rights. This can contribute to build awareness of your IP rights.

It is possible to organize simultaneous visits to the booths of the infringers in the presence of court appointed experts in cases where there are more than one infringer against which the patent holder wishes to take action.

Cease and Desist Letters:

Serving Cease and Desist Letters to the determined infringers by the Notary Public aims to make sure that all infringing activities have been ceased by third parties.

It is possible to notify third parties with these Cease and Desist Letters at the Trade Fair. The Cease and Desist Letters are served physically by the Notary Public.

The patent holder may request;

• the cease of the actions of the infringers by covering any signboards displaying the infringing product, the removal of catalogues, brochures including the infringing products from the booth, the removal of any infringing product on display at the booth,

• the information of the source of infringing products, the amount of the infringing products in stock,

• the infringer to accept and undertake not to infringe its IP rights in the future.

Infringers served with the Cease and Desist Letter at the Trade Fair may refrain from being notified with the Cease & Desist Letter since the exhibition is not their official premise recorded in the trade registry. In such case, the patent holder may request the re-serving of the Cease and Desist Letter at their premises. Considering that this would delay the notification of the adverse parties we request the organization firm of the Trade Fair to serve the copies of the Letters to the infringers at their booth and simultaneously send the copies to the infringers via e-mail and fax.

Timeline and Action Plan:

Day 1 of the Trade Fair:

Visiting of the booths of infringers in the presence of the Notary Public and the preparation of the minutes of proceedings by the Notary.

Preparation of Cease and Desist Letters to be served during the exhibition.

Filing the evidential action before the Court.

Day 2 of the Trade Fair:

Visiting the booth in the presence of the court appointed experts.

Serving Cease and Desist Letters to the determined infringers.

Day 3 of the Trade Fair:

Checking the Trade Fair and whether all infringing content is removed.

EXAMPLARY CASES

Deris represents patent holders from all over the world in the enforcement of patent rights at Trade Fairs. The preparation, organization and the execution of the enforcement strategy starts with the publication of the attendee list of the concerned Trade Fair.

In many similar cases, 90% of the determined infringers ceased their actions which eventually resulted the increase of the market share of the patent holder.

The success of the enforcement strategy at Trade Fairs depends on the strict and detailed preparations, the investigations conducted about the attendees to the fair and to a precise action plan.

The execution of the action plan is conducted by a dedicated and experienced team in patent matters who understands the technology and easily determines whether the rights of the patent holder are infringed or not.

The close follow up of the Cease and Desist Letters as well as the results of the evidential action is crucial for the success of the enforcement strategy.

CONCLUSION

The Turkish Law enables the patent holder to combine different legal instruments in an effective way providing a desired outcome in a short time period, preventing lengthy and costly litigation procedures.

The policy of Deris is to be a trusted advisor providing its clients with a business approach where the results of actions reflect to the turnover of its client.

Which action against which infringer?

The attendee list of Trade Fairs is closely examined to determine the size and scope of use of the possible infringers.