Following the enactment of the Industrial Property Law No. 6769 (“IP Law“) on January 10, 20171, the secondary regulations and guidelines on implementation of the IP Law have been published.
One of the new procedures brought with IP Law is requesting proof of use in trademark oppositions. Turkish Patent and Trademark Office (“TPTO“) published its “Guidelines for Proof of Use and Its Examination Principles in Trademark Oppositions” (“Guideline“) on April 28, 2017. The Guideline is updated with respect to legal grounds and merits of the procedure on September 30, 2017. The Guideline can be accessed on the TPTO’s website2 and it is published in only Turkish language.
What Does Proof of Use Mean?
As with many IP Law articles, the proof of use regulation was prepared in accordance with European Union Directives3. The regulation provides trademark applicants with a defence mechanism and prevents unjust oppositions based on the unused trademarks of rightful owners who attempt to block other entrepreneurs from entering the market and registering their trademarks.
The trademark applicant who encounters an opposition can request from the opponent proof of genuine use of the trademark in Turkey for the related goods and services providing that the opponent’s trademark is registered in Turkey for five years at the date of application or priority.
What Does the Guideline Regulate?
Since proof of use procedure is newly adapted and became available after January 10, 2017 in Turkey, the practitioners and right holders sought clarification on the procedure and assertion of proof of use. The Guideline clarifies and regulates the procedure for the assertion of proof of use and the evidence right holders may utilize. Even if the evidence are not stated as numerus clasus in the Guideline, invoices, catalogues, price lists and online sales are the leading evidence used in proof of use.
Proof of use is one of the main changes introduced by the IP Law. The industry expects the procedure will be commonly used and have strategic significance both for trademark applicants and opponents. The Guideline constitutes a significant source for non-use defence and the further steps that should be taken against the non-use defence.
2 http://www.turkpatent.gov.tr/TurkPatent/laws/informationDetail?id=102 , http://www.turkpatent.gov.tr/TurkPatent/resources/temp/B4609CED-66A9-4096-A33A-DA99A1A0DE04.pdf
3 Directive (EU) No. 2015/2436 of the European Parliament and the Council of December 16, 2015 to approximate the laws of Member States relating to trade marks.