Can a Trademark or Patent Licensee Sue in Turkey? Article 158 Enforcement Rules

An exclusive trademark or patent licensee can, unless the contract provides otherwise, bring the right holder’s infringement actions in its own name under Article 158 of Turkish Industrial Property Code No. 6769. A non-exclusive licensee follows a different route: unless the agreement expressly restricts the right to sue, it must request action from the right holder. Refusal, failure to bring the requested action within three months after notification, and urgent interim relief are governed by distinct parts of the statute.

Have a general question about this article? Ask anonymously

For an overseas brand owner, technology licensor or Turkish operating subsidiary, these rules determine who should act when unauthorised products enter the market. Commercial exclusivity, ownership of the registered right and legal authority to sue are not interchangeable. This guide explains the contract review, notifications and evidence needed for an Article 158 claim. It concerns industrial property rights under Code No. 6769, not a general rule for every copyright, software or confidential-information dispute.

Identify the licensed right and the person seeking to enforce it

Start with the Turkish registration or application and the licence agreement. Identify the owner, the actual licensee, the covered territory, the licensed goods or technology and the period of permission. An agreement with a foreign parent company does not automatically make every local subsidiary a licensee. The legal person named as claimant must connect its own rights to the asserted Turkish protection.

A distributor’s exclusive sales territory is not necessarily an exclusive trademark or patent licence. The contract may give preferential purchasing rights without granting an industrial property licence at all. Conversely, a manufacturing agreement can contain a genuine patent licence even though its main commercial label is technology supply. Read the operative grant and enforcement clauses rather than deciding standing from the document’s heading.

The nature and scope of the right also matter. A trademark licence concerning specified goods is different from a patent licence for a manufacturing process. The registration and the alleged infringing acts must correspond to the protection being enforced. Our trademark registration guide explains the underlying registration framework; the existence of a commercial brand relationship does not substitute for that rights analysis.

Exclusive licensees: Article 158(1) starts with the contract

Article 158(1) of Code No. 6769 gives an exclusive licensee the ability to bring, in its own name, the actions the right holder could bring under the Code against a third-party infringer, unless the contract provides otherwise. The contract qualification is part of the rule. It should not be omitted from an English enforcement clause or a litigation memorandum.

Inspect whether the agreement reserves enforcement to the licensor, requires approval or otherwise changes the default. Also check later amendments and side letters. A company should not rely on an earlier draft granting unrestricted enforcement if the signed agreement adopts a different allocation. Preserve the complete executed contract and the evidence of the persons authorised to act for the companies involved.

For patents, Article 125(2) supplies an important classification rule: a licence is non-exclusive unless the agreement provides otherwise. In a non-exclusive arrangement, the licensor can use the invention and grant other licences. An exclusive licence prevents further licensing and prevents the licensor’s own use unless that use is expressly reserved. A reservation of the owner’s own use therefore requires careful reading; it should not automatically be confused with unrestricted rights to license competing businesses.

The practical enforcement question is narrower than whether the licensee has suffered a commercial loss. It is whether this claimant holds the relevant licence and has the procedural authority claimed under Article 158. Evidence of lost sales does not repair an absent licence grant. Equally, the absence of a separate assignment of ownership does not defeat the statute’s express ability of a qualifying licensee to sue in its own name.

Non-exclusive licensees: the request to the right holder

Article 158(2) permits a non-exclusive licensee, whose right to bring infringement proceedings has not been expressly limited by the contract, to notify the right holder and request the necessary action. That request is not the same as a demand sent to the alleged infringer. Keep the two communications separate: one concerns the statutory relationship between licensee and licensor; the other may concern the alleged infringement itself.

The request should identify the right, the suspected infringer, the acts complained of and the action sought. Include the evidence needed for the owner to understand the matter, without unnecessarily disclosing unrelated confidential records. This is a recommended way to make the statutory request clear, not a claim that Article 158 prescribes a particular standard letter or a mandatory list of attachments.

Preserve reliable evidence of notification and its date. The three-month period is measured from notification, not from the licensee’s internal discovery of the problem or the date an unsent letter was drafted. Article 158 does not itself prescribe a universal notarial form for this request. The notification method, contractual communication provisions and proof of delivery must nevertheless be considered in the actual file.

An agreement expressly limiting the non-exclusive licensee’s right to sue requires legal review before this route is used. The statute does not say that merely sending a request deletes the contractual restriction. Do not conceal an enforcement clause from the litigation team or assume that a general promise to cooperate has the same effect as an express right to institute proceedings.

Refusal and three months of inaction are alternative triggers

Under Article 158(2), the licensee can proceed if the right holder does not accept the request or does not bring the requested action within three months after notification. An actual refusal and a period of inaction are alternatives in the wording. The statute should therefore not be summarised as requiring every non-exclusive licensee to wait three months after a clearly established refusal.

Where the case relies on inaction, calculate the statutory period as three months, not an invented ninety-day period. Preserve the notification record and check whether the requested case was actually filed. A statement that the owner is considering action is not the same thing as a filed lawsuit. Conversely, a licensee should not plead total inaction without checking information supplied by the owner or the relevant court record.

The claim must attach the notification and be brought in the licensee’s own name to the extent required by its own interests. That express limit matters when formulating the requested relief and damages. A non-exclusive licensee cannot simply assume that every loss suffered throughout the owner’s global licensing network belongs to it. The claim needs to explain the connection between the infringement, the licence and the claimant’s protected interest.

There is a second notification duty: the licensee bringing proceedings under this paragraph must inform the right holder that it has sued. The initial request to the owner and the later notice of filing serve different purposes. Record both in the case chronology so that proof of the first is not mistakenly treated as compliance with the second.

Urgent interim measures before the period expires

Article 158(3) addresses a danger of serious harm. Before the specified period has expired, the licensee can ask the court for interim measures. If the court grants the measure, the applicant licensee is also authorised to bring the action, and the requirements in paragraph 2 are completed while the proceedings continue. The statute links that litigation authority to the court’s granting of interim relief, not simply to the licensee describing a situation as urgent.

The application should explain the threatened harm and the evidence supporting it. A shipment timetable, identified market launch or documented threat to the licensed business can help explain the commercial chronology, but none of those documents guarantees relief. The court must assess the statutory conditions and the measure actually requested.

Article 159 supplies the general interim-measure framework. It requires proof of infringing use in Turkey or serious and effective preparations for such use, with relief directed at preserving the effectiveness of the judgment. The statute identifies prevention or cessation, seizure and safekeeping of relevant products or means, and security-related measures, while protecting production unrelated to the infringing goods.

Do not describe an interim application as an order already in force. Equally, do not assume that filing a request removes all contractual restrictions or permanently replaces the Article 158(2) requirements. The court order, the licence terms and the continuing procedural obligations need to be read together. A precise enforcement plan distinguishes what has been requested, what has been granted and what must still be completed.

Writing and registration are separate from the enforcement clause

Article 148(4) makes legal transactions concerning industrial property rights subject to written form and separately requires notarised form for the validity of assignments. It would be inaccurate to state that every licence needs the same notarised form as an assignment merely because both appear in that paragraph. Determine what transaction the document actually performs before applying its form requirements.

Article 148(5) addresses recording transactions in the register and publication. Subject to its Article 115 reservation, rights arising from unrecorded transactions cannot be asserted against good-faith third parties. The significance of registration therefore needs to be assessed separately from whether the parties signed a written agreement. Do not reduce the law to either unrecorded licences never exist or registration never matters.

In a cross-border licence file, obtain the current register entry and the signed agreement together. Explain any difference in company names, changes in ownership or missing record of the transaction. A certificate printed years earlier is not sufficient to show every current recorded interest. Office recordal and court representation also involve different professional functions; a litigation lawyer is not automatically a registered trademark or patent attorney.

Coordinate relief, evidence and settlement authority

Article 149 identifies the remedies available for infringement, including determination, prevention, cessation, removal and compensation, together with specified measures concerning infringing goods. A claim should select relief that matches the licensed right, the infringement alleged and the claimant’s statutory position. Requesting every conceivable measure without explaining its connection to the dispute does not strengthen standing.

Financial evidence should distinguish the licensee’s sales, margins and losses from the licensor’s royalty position. Articles 150 and 151 govern compensation and the statutory methods for assessing lost profit. Avoid double counting the same economic harm under different company names. Where both owner and licensee are involved, the pleadings and accounting evidence should make each claimed interest clear.

For a process patent, technical disclosure can be especially sensitive. Our process-patent evidence guide explains Article 141(2) and the protection of manufacturing and business secrets. An enforcement clause does not remove the need to establish infringement through the correct technical material.

Review settlement authority separately from the authority to file. A commercial manager’s ability to negotiate an account does not establish authority to surrender a registered right, grant a new licence or bind every group company. The settlement must identify the parties, acts covered, territory and any continuing permission. A decision to resolve one infringement dispute should not accidentally rewrite a worldwide licensing arrangement.

A practical file for foreign licensors and Turkish licensees

Keep a rights section containing the registration, the licence, amendments and any recordal documents. Keep a procedural section containing the first notification, delivery evidence, the owner’s answer, the period calculation, the filing record and the later notice to the owner. Keep infringement and damages evidence separately so that commercial documents do not obscure the proof of standing.

Where an agreement chooses foreign law, distinguish contractual interpretation from the Turkish statutory enforcement route. The guide to international IP licences and MÖHUK Article 28 addresses governing law. A choice-of-law clause should not be treated as a substitute for analysing Article 158 or as automatically binding an alleged infringer who is not a party to the licence.

The useful final product is a dated enforcement decision: the claimant’s identity, the licence classification, the relevant contract qualification, the notification history and the remedy sought. This is more reliable than an internal label such as exclusive partner. It also gives the owner and licensee a clear basis for coordinating costs, evidence and communications without promising that registration or commercial importance guarantees a court outcome.

Legal sources

Primary provisions: Industrial Property Code No. 6769, Articles 125, 148–151 and 158–160. The TÜRKPATENT legislation directory links official legislation and implementing rules. This is an English explanation, not an official translation or a determination that a particular licensee has standing.

Istanbul and Mersin offices

Bakırcı & Keskin Law Office is Mersin-based and works throughout Türkiye with an Istanbul and Mersin focus.

Istanbul — Polaris Plaza

Maslak Ahi Evran Caddesi, Polaris Plaza No:21, Floor 9, 34475 Sarıyer/İstanbul. Istanbul office directions.

Mersin — Profit İş Merkezi

İhsaniye Mahallesi, 4903. Sokak, Profit İş Merkezi No:23, Floor 3, Office 14, 33070 Akdeniz/Mersin. Mersin office directions.

Call +90 552 224 43 66. An enquiry does not establish representation or suspend a legal deadline.