Introduction
One of the several implementations of the obligations to use trademarks in Turkey is the right granted to the trademark applicants to submit a defense of non-use in trademark opposition proceedings against opponents. In this respect, under certain conditions, trademark applicants facing opposition by a third party based on a similarity claim may request proof that the opponent has used their own trademark. In such event, unless the opponent can prove the genuine use of the trademark, the opposition shall be dismissed and the proceedings for the registration of the trademark shall be continued by the Turkish Patent and Trademark Office (the “Office”). In this article, we will be examining how the Turkish trademark law regulates this right of the applicant to request proof of use from the opponent, i.e., the defense of non-use in opposition proceedings.
General Notes on the Opposition Proceedings of Trademark Applications
When the Office approves a trademark application following a review based on formal deficiencies and absolute grounds for refusal, such application is published in the Official Trademark Bulletin for 2 months for third party oppositions. Unless an opposition is filed by third parties against the respective trademark application based on absolute or relative grounds for refusal, the Office shall issue the decision for the registration of the respective trademark application upon the expiry of said publication period.
However, if an opposition is filed within the respective period, the Office shall notify the trademark applicant about the opposition and grant the applicant the right to file a response petition against the opposition within 1 month from the date of notification. The issue as to whether the trademark application should be registered is to be decided by the Office upon review of both the opponent and applicant’s statements. The respective decisions of the Office can be appealed. Appeals are reviewed by the Re-examination and Evaluation Board (“Board”) of the Office. Parties may file an action for the cancellation of the respective final decision of the Board before the specialized IP courts in Ankara.
How a Trademark Applicant Can Submit a Defense of Non-Use
In the opposition proceedings, both of the following conditions must be met for the trademark applicant to be able to request the opponent to prove the genuine use of their own trademark:
the opposition must be filed on the relative ground for refusal which claims a likelihood of confusion, or at least a risk of association, on the part of the public due to the identity or similarity of trademarks (of both the applicant and opponent) in terms of signs and classes of goods and services (article 6 paragraph 1 of the Industrial Property Code numbered 6769 (“Code”); and
the trademark of the opponent, which the opposition is based on, must be registered for at least 5 years on the date of the trademark application (or the priority date).
Such defense of non-use may only be submitted by the applicant in the response petition within 1 month from the date of notification of the opposition. It is impossible to submit a defense of non-use for the first time at the appeal stage.
The applicant must be very specific on which trademarks of the opponent and which goods and services of the respective trademarks, a proof of use is requested from the opponent. Furthermore, the request for proof of use must always be within the scope of the registered classes of the opponent’s relevant trademark. Otherwise, the applicant’s defense of non-use will be disregarded.
How an Opponent Can Prove the Genuine Use of a Trademark
Upon duly submission of a defense of non-use, the Office shall grant the opponent 1 month to submit their evidence to prove the genuine use of their trademark in Turkey for the goods and services relating to the opposition during a 5-year period prior to the application date (or the date of priority) of the opposed application, or alternatively, a justified reason (i.e., reasons beyond the control of the trademark owner) for non-use.
Article 30 of the Regulation on the Implementation of the Industrial Property Code (“Regulation”) provides a non-exhaustive list of evidence for the proof of genuine use. Accordingly, packages, labels, price lists, catalogues, invoices, photographs and newspaper advertisements may be submitted for purposes of evidence. The respective documents should show the use of the trademark by the opponent (or another person with the consent of the opponent) in Turkey on the relevant goods and services in a “genuine” way.
Please note that neither the Code nor the Regulation provides a definition of the term “genuine” use. However, the Office published a Guideline on the Proof of Use in 2017, which was prepared by also taking the precedents of the EUIPO and the European Court of Justice into consideration, and in this guideline, along with other explanations on the submission of evidence, we can find answers on what the Office interprets as genuine. In the guideline, after certain principles are laid out based on the “Minimax” case of the European Court of Justice, it is summed up that:
It is not possible to determine a general quantitative threshold for the use of a trademark to be deemed genuine; in this respect, a case by case basis examination is necessary;
The general rule is that a minimum use may be sufficient to qualify as “genuine” in the relevant market, as long as such use serves a real commercial purpose; in other words, the trademark owner should prove their serious effort to create a market share or to maintain their share.
Unless the use of the trademark is proven by the opponent, the opposition will be dismissed, and the registration proceedings of the opposed trademark application will continue. If the opponent can prove the use of the trademark only in certain goods and services, the opposition will be examined by the Office limited with those goods and services.
Warning for International Applicants*
In line with the relevant regulations of the Madrid Protocol, for international trademark applications submitted through the Madrid Protocol with Turkey being a designated country, the Office shall not inform WIPO about oppositions made by third parties against respective international applications and examine the opposition of the third parties without having a response petition from the international applicant. Accordingly, the Office shall notify the international applicant through WIPO only after it decides on the merits of the opposition. However, after the receipt of the decision, although such a decision may be appealed before the Board, it would be impossible for the international applicant to submit a defense of non-use against the opponent at the appeal stage. Therefore, the registration of an international application can be prevented due to an opposition based on a trademark not being in use, whilst if the applicant had the opportunity to submit a defense of non-use, the opposition would be dismissed.
However, please note that even if the international applicants have not been duly notified about the opposition, the Office’s policy is to take the defenses of non-use of international applications into consideration if they are submitted before the Office decision on the opposition. Therefore, international applicants may still benefit from the defense of non-use opportunity provided that, without waiting for anyone to notify them of an opposition, they shall monitor their applications in Turkey during the 2-month opposition period themselves or through their local trademark attorneys, and once they identify an opposition filed against their application, they shall submit a defense of non-use in a response petition as soon as possible but before the Office delivers its decisions on the opposition.
*Update (dated 17 June 2020): The Office has recently changed its practice in notifying international applicants about oppositions in Turkey. Click here to access our short article on this change.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63