Under Article 19 of the Industrial Property Code No. 6769 (“IPC”), concerning the examination of oppositions to publication: “The Office shall request the applicant to submit its views on the opposition within the applicable period. Where deemed necessary, the Office may request the parties to submit additional information and documents. If the views or requested additional information and documents are not submitted to the Office within the applicable period, the opposition shall be assessed on the basis of the existing information and documents.”
Under the same Article 19, in oppositions filed under Article 6(1), provided the trademark relied upon has been registered in Turkey for at least five years as of the filing or priority date of the contested application, the applicant may request that the opposing party submit evidence showing genuine use in Turkey — during the five-year period preceding the filing/priority date — of the goods or services on which the opposition is based, or evidence of justified reasons for non-use. If the opposing party fails to prove these matters, the opposition is rejected. If use is proven only for part of the registered goods/services, the opposition is examined solely on the basis of the goods/services for which use has been proven.
Under Article 29(1) of the Implementing Regulation of the IPC, in order for Article 19(2) to apply, the applicant must expressly and in writing notify the Office of its request for proof of use within the period allowed for submitting its views on the opposition. Requests for proof of use that do not meet these conditions, or that are not made within the applicable period, are deemed not to have been made.
Under Article 25(7) of the IPC, concerning grounds for invalidity and invalidity requests: in invalidity actions filed under Article 6(1), the defense under Article 19(2) may be raised. In such cases, the five-year period relating to use is calculated by reference to the date the action was filed. If, at the filing or priority date of the mark whose invalidity is sought, the claimant’s mark had been registered for at least five years, the claimant must additionally prove that the conditions set out in Article 19(2) were met as of that filing or priority date. This provision grants the claimant, in respect of marks not raised at the opposition stage, the right to request proof of use of the marks relied on in its response petition during the litigation stage.
Under the general principles of procedural law, a defendant is free to amend or expand its defenses between the first and second response petitions, up until the preliminary examination phase begins. Accordingly, there is nothing preventing a defendant from raising a non-use defense for the first time in its second response petition — and, equally, nothing preventing the defendant from withdrawing such a defense in that second petition, having raised it in the first.
Under Article 25/7 of the IPC, in invalidity actions filed under Article 6(1), the defendant may raise, as a defense before the court, the claim that the claimant has not genuinely used its mark for the preceding five years. In such cases, the five-year period is calculated by reference to the filing date of the invalidity action. The court will examine whether the mark relied upon has been genuinely used in the five years preceding the filing date; if it has not been duly used, the action will be dismissed. If the claimant has made genuine use of its mark for even a short period within that five-year window, the action will proceed to be examined on the merits.
The concept of “genuine and serious use” has been defined in practice particularly through CJEU case law. For example, the judgment of 11 March 2003 in Case C-40/01 concerning the word mark Minimax contains important findings and characteristics on this point. Accordingly, “genuine and serious use” requires use of the mark consistent with its function and sufficiently frequent for the goods and/or services for which it is registered.
“Genuine and serious use does not cover token use undertaken solely to preserve the rights conferred by registration. In determining whether use of a mark is genuine and serious, all the facts and circumstances must be taken into account — including, among others, whether the commercial use of the mark is genuinely aimed at profit, as well as the degree and frequency of that use.” (C-416/04 P Sunrider v OHIM [2006]; C-40/01 Ansul [2003]; C-259/02 La Mer Technology [2004]).
The nature of the goods/services on which the mark is used is also relevant to assessing use — for example, the volume of sales expected for luxury goods and services may reasonably be lower than for inexpensive ones (ARKAN Sabih, Trademark Law, Vol. 2, p. 147).
Use of a mark in a domain name may, depending on the specifics of the case, constitute valid evidence of use, provided the domain covers the goods/services for which the mark is registered — although, where insufficient on its own to establish the relevant dates, it typically serves only as supplementary evidence.
The “genuine and serious use” of series marks means that each mark within the series must be shown to have been used individually. On this point, the French Supreme Court’s decision of 16 July 1992 (No. 89-16589) is widely cited internationally. In that decision, having registered the marks LOTUS and AU LOTUS, the mark owner was found to have accepted that the two marks were not identical and that a certain distinction existed between them; consequently, although they were series marks sharing a common element, it was held that use of each had to be proven separately.
However, the French Supreme Court subsequently revised its underlying interpretation through three decisions rendered on 14 March 2006 and confirmed on 14 November 2006 (14 March 2006 PLAYBOY ENTERPRISES INTERNATIONAL Inc. / Ets. LAPORTE; 14 March 2006, Sté RADER c/ Sté CENTRALE DIRECTE; 14 March 2006 LOUFRANI c/ PIER IMPORT).
The Court of First Instance of the European Communities, in its Bainbridge decision of 26 February 2006, reached a conclusion parallel to the French Supreme Court’s 1992 approach, and this decision was upheld on 13 September 2007 (T-194/03 Il Ponte Finanziaria SpA v OHIM & F.M.G. Textiles Srl [2006]; C-234/06 P (Bainbridge) [2007]). “Article 15(2) does not allow the proprietor of a registered mark to rely on use of a similarly registered mark in order to escape the obligation to use that mark, in order to establish its use.” (C-234/06 P Il Ponte Finanziaria SpA v OHIM & F.M.G. Textiles Srl (Bainbridge) [2007]).
In the same decision it was also stated that “…while proof that a mark has been used in a form partly different from its registered form can be sufficient to establish that mark’s use, the protection conferred by a registered mark cannot be extended, on the basis that they differ only slightly, to a different registered mark whose use has not been proven” — confirming that proof of use must be furnished separately for each mark, even where marks differ only slightly from each other.
In addition, certain procedural rules must be observed regarding the submission of evidence. Under Article 30 of the Implementing Regulation of the IPC, concerning evidence to be submitted in proof-of-use matters:
(1) Evidence submitted under Article 29 must be clear, comprehensible and reliable, such that the parties can assess and form an opinion without needing further information. Evidence submitted by the opposing party must contain sufficient information regarding the nature, place, time, extent and manner of use of the goods/services for which the contested mark is registered.
(2) Evidence may include any supporting documentation such as packaging, labels, price lists, catalogues, invoices, photographs and newspaper advertisements. Where such documents are submitted, the portions proving use of the mark subject to the opposition must be clearly marked and indicated.
(3) Evidence must be submitted in writing, together with a detailed list of evidence clearly showing which facts are proven by which evidence. Where product samples are requested for examination as evidence, detailed and sufficiently high-resolution photographs — including colour details — must be submitted instead of physical samples.
(4) No evidence may be submitted after the expiry of the periods granted under Article 29, except where requested by the Office, and any evidence submitted after that point will not be taken into account. Where the evidence is in a foreign language, the Office may grant a two-month period for submission of a sworn translation of all or part of that evidence into Turkish. If the translation is not submitted within that period, the evidence will not be taken into account in examining the opposition.
(5) Responsibility for submitting evidence in a timely, orderly and systematic manner lies with the parties. Where evidence is unreadable, disorganized, not submitted in list form, or not clearly connected with the claims — or where its nature, content and connection to the opposed mark are not clearly apparent — the Office will grant a one-month period to remedy the deficiencies. If the deficiencies are not remedied within that period, the evidence will not be taken into account in examining the opposition.
(6) The provisions of this article apply, to the extent relevant, to evidence to be submitted in oppositions to publication and to oppositions against decisions.
At this point, the nature of the evidence submitted and the relevant dates must also be correctly determined. The period for which use must be proven is the five years preceding the filing date of the mark at issue (per the TPTO Guidelines and the informational meeting on “Proof of Use in the Examination of Trademark Publication Oppositions,” 16.06.2022). Use is not required to have occurred throughout the entire five-year period — it is sufficient for it to have occurred at any point within it.
Written by: Deniz Çelikel • Patent and Trademark Attorney
This text is drawn from expert witness reports prepared by Deniz ÇELİKEL since 2010.
