Intellectual property rights related to design infringement and the legal consequences of such infringement are regulated in Law No. 6769 on Industrial Property. In this article, we will provide information on acts constituting infringement of design rights, design infringement and penalties, and compensation rights in the event of design infringement.
Design Infringement
According to Article 59 of Law No. 6769 on Industrial Property, the rights arising from design will exclusively belong to the design owner. Third parties cannot produce, market, sell, import, commercially use, or possess a design-protected design or a product in which the design is applied without the permission of the design owner, or propose a contract related to it without authorization.
Acts Constituting Design Infringement
Design infringement is regulated in Article 81 of Law No. 6769 on Industrial Property under the title “Acts Considered as Design Infringement,” and these acts are limited in number. According to the relevant provision, these acts include:
- Producing, marketing, proposing a contract for, using for commercial purposes, or possessing, for these purposes, an identical or indistinguishably similar product that falls under the protection scope of a design without the permission of the design owner according to the provisions of Law No. 6769 on Industrial Property.
- Marketing an identical or indistinguishably similar product.
- Selling or proposing a contract for an identical or indistinguishably similar product.
- Using or possessing an identical or indistinguishably similar product for commercial purposes.
- Subjecting an identical or indistinguishably similar product to the import process.
Producing an Identical or Indistinguishably Similar Product
Under this provision, the first instance of design infringement is producing an identical or indistinguishably similar product without the permission of the design owner, falling under the protection scope of Law No. 6769 on Industrial Property. The act of production alone is sufficient for infringement, and there is no need for the product to be introduced or marketed separately.
Marketing an Identical or Indistinguishably Similar Product
The second instance of design infringement under this provision is marketing an identical or indistinguishably similar product that falls under the protection scope of Law No. 6769 on Industrial Property. Legally, there is no statutory form requirement for the permission granted by the design owner for the introduction of the product to the market. Therefore, the design owner can provide this permission in written, oral, or implicit forms. However, in the absence of such permission, design infringement will occur. In this context, introducing the product into commercial circulation is sufficient, and the location of production is not crucial.
Selling or Proposing a Contract for an Identical or Indistinguishably Similar Product
The third instance of design infringement under this provision is selling or proposing a contract for an identical or indistinguishably similar product falling under the protection scope of Law No. 6769 on Industrial Property. In addition to the act of selling, according to the relevant provision, proposing a contract for the product will also be considered an act of design infringement, and the unilateral declaration of intent by the proposing party will constitute infringement.
Using or Possessing an Identical or Indistinguishably Similar Product for Commercial Purposes
The fourth instance of design infringement under this provision is the unauthorized use or possession of an identical or indistinguishably similar product for commercial purposes. Using or possessing an identical or indistinguishably similar product falling under the protection scope of Law No. 6769 on Industrial Property without permission for commercial purposes will constitute design infringement. Here, the person or persons violating this design right must perform this act for commercial purposes.
Subjecting an Identical or Indistinguishably Similar Product to the Import Process
The last instance of design infringement under this provision is subjecting an identical or indistinguishably similar product to the import process. This import process must be carried out for commercial purposes.
The instances of design infringement mentioned above are independent of each other, and the realization of all instances together is not required. The occurrence of one of these instances is sufficient for design infringement.
- Expanding the rights granted through a license by the design owner without authorization or transferring these rights to third parties.
According to Article 148 of Law No. 6769 on Industrial Property, all intellectual property rights except for geographical indications and traditional product names can be subject to a license. A license agreement must be made in writing, and the validity of this transfer agreement depends on being notarized. However, if the license expands the granted rights or transfers them to third parties contrary to the provisions of the agreement, it will be considered a reflection of design infringement.
- Usurping Design Rights
The act of usurping design rights is specifically addressed in Article 71 of Law No. 6769 on Industrial Property.
Concept of Usurpation of Design Rights
The act of usurping design rights is specifically regulated in Article 71 of Law No. 6769 on Industrial Property. According to the relevant provision, if a design application has been made or the design has been registered in the name of a person who is not the real right holder, or an unregistered design has been made public by a person who is not the real right holder, these acts will constitute the usurpation of the design.
If multiple people jointly own a design, registering or claiming the design in the name of one or more of the design owners can be considered partial usurpation.
Regarding the usurpation of the design, the person claiming to be the real right holder can request the transfer of design ownership or recognition as the design owner from the court, with the reservation of other rights and claims arising from design rights. Similarly, if there is partial usurpation of the design, the court may be requested to recognize ownership based on shared ownership principles.
However, if these claims are not raised within three years from the date of publication of the registered design or the date the unregistered design is made public, the rights will be extinguished. However, in cases where the person who is not the real right holder is in bad faith, the statute of limitations will not apply.
Design Infringement and Penalties
In case of infringement of design rights through the mentioned acts, the right holder whose rights are violated can first file a lawsuit for the determination of infringement. The lawsuit for the determination of infringement is filed to determine whether the act claimed to constitute infringement is indeed an infringement and is filed when the infringement has ended but its effects continue.
Furthermore, the design right owner has the right to file a lawsuit to stop and prevent the infringement. The lawsuit to stop infringement is filed against the party committing the infringement. The lawsuit to stop infringement also covers the possibility of preventing infringement, and as a rule, it should be filed before the infringement ends. For the lawsuit to prevent infringement, there must already be a concrete risk of infringement.
According to Article 149 of Law No. 6769 on Industrial Property, the design right owner also has the right to file a lawsuit to remove the infringement. With this lawsuit, the design right owner requests the elimination of the unlawful consequences created by the act constituting infringement.
In addition to the claims mentioned above, the owner of the right also has the right to request measures to be taken to prevent the continuation of infringement, especially the seizure of products, devices, machines, and other tools used exclusively in the production of infringing products. The court may be requested to grant ownership rights over the seized products, devices, and machines to the design right owner, with the expenses belonging to
the infringer.
In addition to the above-mentioned measures, the right holder can request additional measures from the court, such as changing the appearance of seized products, devices, and machines, erasing trademarks on them, or, if necessary, their destruction, with the expenses borne by the opposing party.
Design Infringement and Compensation
In case of infringement of design rights, right holders can claim lost profits as material compensation from individuals who commit acts considered as infringement. The calculation of lost profits takes into account factors such as the economic importance of industrial property rights, the number, duration, and type of licenses related to industrial property rights during the infringement, and the nature and extent of the violation.
Lost profits are calculated using one of the following assessment methods, at the discretion of the damaged right holder:
1. The potential income the right holder could have obtained if there were no infringement of industrial property rights.
2. The net profit obtained by the infringing party.
3. The license fee that the infringing party would have had to pay if they had used the right in question through a license agreement in a lawful manner.
In addition to material compensation, the design right owner can also claim moral damages. The purpose of claiming moral damages is to eliminate all negative consequences in the commercial and personal existence of the right holder due to the infringement of design rights.
If the reputation of the design right owner is harmed due to the improper use, production, acquisition, or improper release of products or services related to the infringed right, the design right owner, in accordance with Article 150 of Law No. 6769 on Industrial Property, can also claim reputation damages in addition to the compensation items mentioned above.
The topic of “Design Infringement and Legal Consequences” outlined above is a general framework and has legal implications. The topic is crucial and requires legal consultation. For more information and consultancy, you can contact our law firm.
