Withdrawn Trademark Cannot Escape Infringement Liability: Court Awards 150000 TRY in Damages

In its decision No. E.2023/12 K.2024/249, Bakırköy 1st Intellectual and Industrial Property Rights Court held that defendants who withdrew their registered trademarks during proceedings could not escape liability for infringement that had already occurred.

Case Summary

The plaintiff owned registered trademarks in Classes 26 and 44. The defendants registered similar signs in the same classes and used them commercially. The plaintiff sought invalidation, infringement injunction, and damages. During proceedings, the defendants withdrew their marks.

Court's Assessment

The invalidation claim became moot as the defendants withdrew their marks. The court awarded costs and attorney fees against the defendants for causing the lawsuit. On infringement, the court found visual, phonetic, and conceptual similarity between the marks in the same classes. In the consolidated case, since exact profits could not be established, the court awarded 100,000 TRY in material damages and 50,000 TRY in moral damages under Articles 50-51 of the Turkish Code of Obligations. Publication of the judgment summary in a national newspaper was ordered.

Key Legal Principles

• Withdrawal is not retroactive: Withdrawing a trademark during litigation does not eliminate liability for prior infringing acts.
• Infringement claim continues independently: Even where the invalidation claim becomes moot, infringement is assessed separately.
• Discretionary damages available: When exact profits cannot be established, courts may award equitable damages under TCO Articles 50-51.

This article is for informational purposes only and does not constitute legal advice.