Gün + Partners - Turkey
A recent district court decision has held that courts should consider either the evidence or the request of the claimant when deliberating whether to grant a preliminary injunction in IP rights.
Preliminary injunctions play a key role for rights holders, particularly for patent holders that operate in IP courts in urgent matters, for reasons such as the very technical nature of their cases, commercial reasons and time pressure. They can be requested before an action is filed, as per Article 390 of the Code of Civil Procedure (CCP), or else after filing.
A preliminary injunction can be defined as temporary, broad or limited depending on the likely damages once a final decision has been made. However, recently Istanbul civil courts have taken to rejecting preliminary injunction requests without examining them, contrary to the legal regulations in place.
In addition, IP courts have rejected applications for the determination of evidence and preliminary injunctions on the grounds that these requests require a full trial, without setting a date for one or undertaking examination and evaluation.
In patent disputes and, in particular, pharmaceutical patent disputes, where technical examination and evaluation are critical and considerable information has been made public, it is obvious that there is a need to evaluate the evidence in order to reach a decision on whether to file the main action in the first place.
Further, while it is stipulated in law that a preliminary injunction can be granted before filing an action, it is not lawful to issue a rejection by stating that a main action should be filed without an evaluation having been made, as if there was no such provision and it was not possible to grant a preliminary injunction without filing the main action.
There is no difference between filing an application for a preliminary injunction or filing a main action together with a preliminary injunction, since for both, the court should make use of the expert report when making its decision, considering that technical examination is inevitably required in these cases.
In one recent instance, an IP court’s rejection of a request for a preliminary injunction was recently appealed before the district court. The district court dismissed the decision on the grounds that "while the preliminary injunction conditions should be evaluated in line with IP Code Article 159 and CCP Article 389 and the following articles, the decision to reject the preliminary injunction request on the grounds that it requires a full trial" was not correct. It sent the file back to the court of first instance for consideration of the request upon receiving an expert report regarding both the conditions of the preliminary injunction and the request.
This decision sets a valuable precedent for IP courts of first instance. To reject a request for an injunction, on the basis that the decision on this matter will be made at the end of the trial, without any examination and evaluation, is inconsistent with the purpose and nature of both preliminary injunction protection and patent protection.
On the other hand, Turkey’s Industrial Property Code also states that “persons who have the right to file a lawsuit pursuant to this Code may request from the court to grant a preliminary injunction to ensure the effectiveness of the final decision to be given, provided that they prove that the use subject to the lawsuit is taking place in the country in a way that constitutes an infringement of their industrial property rights or that serious and effective studies have been carried out for in this way”.
Ignoring the provisions of the relevant codes as a result of not considering either the evidence or the request of the claimant, who collects and submits the evidence based on a request for a preliminary injunction, is not acceptable practice, which makes this latest decision highly significant.