Turkey: What are the rules around the non-use defence in oppositions?
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Turkey: What are the rules around the non-use defence in oppositions?

The new IP Code came into force on January 10 2017 in Turkey. One of the major changes in the new IP Code is a non-use defence in opposition proceedings.

According to the IP Code, if the ground trade mark was registered more than five years from the application date (or priority date) of the opposed trade mark application, upon request by the owner of the trade mark application, the Office is obliged to ask the opponent to prove effective use of the ground trade mark(s) on the relevant goods and/or services in Turkey.

The Office prepared Proof of Use Guidelines and published them on April 28 2017. In relation to these, the Office stated that the effective use of ground trade marks can be proved with, in particular, invoices, price lists, catalogues, product codes, products, packaging, signboard visuals, advertisements, promotions and their invoices, marketing surveys, opinion research, information about commercial activity and any additional documents/statements regarding Turkey. Furthermore, the submitted evidence must contain sufficient information on the nature, location, time, scope and use of the trade mark in relation to the goods and services within its scope of registration.

In a recent decision, an opposition filed against a trade mark application covering goods in Class 9 relying on a trade mark which was registered for more than five years for goods in Classes 7 and 9 was rejected by the Office. The Office stated that "on the submitted invoices it was written 'disassembled cereal dressing machines' and the components and parts of these machines are listed under this explanation. Since the goods were intended to form parts of another product in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose, the parts and components mentioned in the invoices should be considered in class 7. Considering the goods in class 7 and 9 are not the same or similar, the opposition should be rejected."

Although the policy around evaluation of submitted evidence has not been sufficiently established yet, it seems that the most important documents for proving use of a trade mark will particularly be invoices. Moreover, if the opponents fail to prove use of their trade mark or the evidence submitted is unrelated to the relevant goods, and if there are not any other claims i.e. a well-known status argument, the Office will refuse the oppositions.


Mutlu Yıldırım Köse

Gün + PartnersKore Şehitleri Cad. 17Zincirlikuyu 34394İstanbul, TurkeyTel: + (90) (212) 354 00 00Fax: + (90) (212) 274 20 95gun@gun.av.trgun.av.tr

more from across site and ros bottom lb

More from across our site

An intimate understanding of a client’s sector is essential to winning new business, a survey of over 28,000 corporate counsel reveals
Counsel say a Federal Circuit ruling on the obviousness test for design patents may increase the time IP owners spend defending their rights
While the INTA Annual Meeting is over for another year, here are a few things Managing IP learned after attending IP’s biggest party
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Four sources reveal which tools they have been using – or building – to help them with a range of tasks from invention generation to claim sufficiency
Managing IP reveals Wednesday's highlights, including a discussion on how AI is helping lawyers improve their "gut instinct" trademark decisions
Managing IP reveals Tuesday’s highlights, including an illuminating discussion celebrating women in the workplace and the challenges that remain
Dana Northcott, INTA’s 2024 president and associate general counsel for Amazon's IP team, talks about her work for the association
Managing IP reveals highlights from the INTA Annual Meeting, including law firms’ diversity and ESG concerns and a new beginning for a Chinese firm
Firms with a broad geographic reach are more likely to win work, especially from global companies with high turnovers, according to survey data of nearly 29,000 corporate counsel
Gift this article