I.
Legal Framework and the Purpose of the Proof of Trademark Use

The Industrial Property
Law with Number 6769 ("IP Law") has been published in the Official Gazette of
January 10, 2017, introducing several changes to the Turkish trademarks law.
Proof of use of a trademark is one of these changes brought by the IP Law.

According to Article 19/2, the applicant is entitled
to request opposing party to submit evidence proving that he/she had genuinely
used his/her trademark on the goods and services relating to the opposition
during the five-years period before the date of application or the date of priority
of the latter application or he has a proper reason for not using his trademark
during that period. This provision is only valid for the oppositions based on
likelihood of confusion which is set forth under Article 6 of the same law.
Besides, Article 19/2 will be valid on the condition that the trademark, which
is the ground for opposition, has been registered for at least five years at
the date of application or date of priority of the application for which the
opposition is filed. If the opposing party fails to prove the aforesaid,
opposition shall be refused. If it is proven that the trademark, which is the
ground for opposition, has been used only for some of the goods or services
which are covered by registration, then the opposition shall be examined by taking
into account the goods or services whose use is proven.

As stated above, proof of use is only valid for the
oppositions set forth under the first paragraph of Article 6 of the IP Law which
reads as follows:

"If
the applied mark is identical or similar with a registered or previously
applied mark and if it covers the same or similar goods and services with the
registered or the applied mark, if the registered or the applied mark has the
possibility of being confused by the public and if this possibility for
confusion also involves a possibility that it is associated with a registered
or applied mark, then the trademark application should be rejected upon
opposition".

In other words, proof of use will not be valid for the
well-known trademarks which are set out under Paris Convention, for the
trademark which consists of a person's name, trade name, photography, copyright
or any other intellectual property right of another and for the trademark which
can be harmed due to its reputation in Turkey.

The provision regarding proof of use aims to prevent
new entrepreneurs come across with an unreal entry barrier to the market and
the registered trademarks to be used effectively in the market. Besides, the European
Union Trademark Directive and European Union Trademark Code include similar
provisions as "Non-use as defense in opposition proceedings". Therefore, one
could say that this provision is brought for aligning with the European Union
Regulations.

 

II. Turkish Patent and Trademark Office's Guideline on
Proof of Use

The Turkish Patent and Trademark Office has published
a Guideline for Proof of Use ("Guideline") which consists of clarifications for
the purpose of guiding both the applicants who can claim proof of use and the
opposing parties who can present evidence of use. The Guideline evaluates
potential documents and information to be submitted as evidence and categorizes
them. It also provides details on the necessary content and form of the
documents.

The Guideline explains the conditions for the proof of
trademark use. These conditions are as follows:

- This provision under the IP Law is effective for the
applications made after January 10, 2017. On the other hand, for the
applications made before January 10, 2017, Decree Law on Trademark Protection
with number 556 will be valid.

- As stated above, proof of use is valid only for the
oppositions set forth under the first paragraph of Article 6 and a trademark
should be registered at least for five years as of the date of application or
priority in order to be subject to proof of use claim.

- The applicant can use the proof of use argument during
the opposition period. If the applicant
did not request for a proof of trademark use during the opposition period, this
request cannot be made during the opposition which will be reviewed by
Reexamination and Evaluation Board.

- The opposing party should submit evidences which
demonstrate that he/she has been using the trademark seriously in Turkey, 5
years prior to the date of application or priority upon the request of
applicant. If the opposing party does not submit evidences upon request of the
applicant, his/her opposition will be rejected, unless there are other reasons
for opposition.

- Except for the ones requested by Turkish Patent and
Trademark Office, evidences cannot be submitted after the periods regulated
under the Regulation on the Implementation of IP Law, and if the applicant
submits the evidences after these periods, Turkish Patent and Trademark Office
should not accept it.

- If it is proved that the trademark subject to the
opposition has been used only for some of the goods or services, the opposition
will be reviewed only for the goods and services which are proved to be used.

 

III.
Evidences that Demonstrate Trademark Use in Turkey

The applicant shall request proof of use within one
month as of being notified of the opposition by specifying the goods or
services that the use is requested to be proved. The Guideline also includes
the form (M116 Counter View Form) which the applicant should be fill for
requesting proof of trademark use. If this form cannot be used, the applicant
should request proof of use in a clear way, and in accordance with the
conditions set forth under the Guideline.

According to the Guideline, the evidences should be
clear, comprehensible and reliable enough. The evidences submitted by the
opposing party should indicate enough information regarding the quality, place,
time and scope of trademark use.

The opposing party should submit the evidences by
enumerating and listing them, and he/she should write the registration number of the relevant trademark on every document,
which preferably does not exceed one hundred pages. The opposing party should
also indicate the total number of pages and submit the evidences which cannot
be submitted in a written format via magnetic or optic transporters. The
information and documents should not be stapled. The evidences can include
every kind of supportive documents (e.g. package, label, price list, catalog,
invoice, photograph, etc.). If such documents exist, the opposing party should
highlight the parts where demonstrate the use of the trademark subject to the
opposition in order to show the use clearly.

According to the Guideline, invoice
is a very strong evidence for proving the use of trademark, as it directly
refers the commercial activity and as it includes date, the goods and services
and the prices of such goods and services.

The Guideline also states that
catalogs, price lists and product codes are supportive documents for the
invoices even though they do not prove exactly that the trademark is subject to
commercial activities. The images of products and packages and the signboards
which demonstrate where the goods and services are sold are also some of the
significant evidences.

Advertisements, promotions, marketing
researches are also considered as important evidences according to the
Guideline.

Authors: Gönenç Gürkaynak, Esq., İlay Yılmaz and Noyan
Utkan, ELIG Attorneys-at-Law

(First published by Mondaq on
February 6, 2018)