The following information has been received from Turkey:
TURKISH PTO PUBLISHED A GUIDELINE FOR USE REQUIREMENTS IN OPPOSITION PROCEEDINGS
Since 10 January 2017, Turkey has had a New IP Law, No.6769, in force. One of the important points in the New Law is that, in opposition proceedings, the applicant has the right to invite its opponent(s) to prove serious and genuine use of its mark in Turkey in the past 5 years or submit justified reasons for non-use, if the opponent’s mark passed the 5 year use term on the filing/priority date of opposed mark.
Very recently the Turkish Patent and Trademark Office (TPTO) published a Guideline on how the request for use should be submitted by applicants and how opponents shwould submit their evidence of use.
The Foreword states that the Guideline is prepared based on EUIPO and CJEU precedents, but the TPTO is open to hear any further interpretations.
After a mark is opposed, the TPTO informs the applicant, while giving one month for submission of counter arguments and evidence. The Guideline says, within the same one month time frame, that the applicant can file the related part in the necessary Form, asking the opponent to provide evidence of use while submitting his counter arguments, or such use can be sought by letter where the wording alternatives of it are stated in the Guideline, if the applicant does not submit any counter arguments.
The applicant invites the opponent to prove genuine and serious use of the mark on which the opposition is based in Turkey within 5 years from the filing/priority date of the opposed mark. Then the process starts and opponent has one month to provide use evidence.
In accordance with the Guideline, the applicant can ask the opponent to prove use
- for some particular goods/services in his based mark (applicant needs to indicate these goods/services in his request)
- for a specific sub-class, by writing the sub-class number
- for all goods/services in a class , by writing the class number
- for all goods/services where the based mark is registered for.
My gut feeling is that Turkish applicants will go with the last of these options.
TPTO requires the use evidence be submitted as follows:
- with a list where the evidence is classified according to their type and enumarated,
- for each item of evidence, registration number of the relevant mark is indicated,
- it is advised that the total number of pages submitted does not exceed 100 pages
- evidence that cannot be submitted in writing can be provided in magnetic, optic etc format
- page numbers and total page numbers should be indicated,
- documents and attachements should be scanned in A4 format,
- information and documents must not be sent in hardcover or stapled,
- for each item of evidence, the parts showing the based mark be marked,
- not the physical product samples but their pictures should be submitted.
TPTO will then give one month (extra) to the opponent to comply with the requirements for the evidence that are not clear, illegible, inappropriately classified, not indicated on the list, where its relation with the opponent’s mark is not apparent and could not be linked to the matter, If such deficiencies are not made good, then that evidence will be disregarded. One point should be kept in mind: when repairing the deficiencies, the opponent should not expand scope of his opposition.
In the Guideline, the TPTO gives information on which points should be taken into account while providing evidence of use. Obviously, it places special importance on invoices since they directly proof commercial activity. It is indicated that the invoices should
- prove use in Turkey,
- include information linked to the based mark,
- indicate a readable date,
- make sure that the amounts stated on them are consistent with the goods/services indicated,
- relate to each specific mark if more than one mark is stated on the invoice,
- if goods are not stated clearly, provide any additional information.
- make sure that invoices should be in order and showing a continuous commercial effect.
Having a date on catalogues and price lists is important; they may not prove genuine use, but can be supportive, if submitted along with invoices. If only the product codes are stated on them, then an extra explanation stating which code refers to which product is expected.
Pictures of products, packages and signboard samples should be submitted in scanned format. They can be helpful, particularly if they bear a date.
Since packaging might be updated during the time in question, illustrations showing old and new versions of packages would be useful.
As for advertisements, publicity and promotion materials, the mark and the goods/services provided should be seen clearly on them. Videos, visuals and sound recordings need to be submitted in electronic format.
Pictures of promotion materials (key holders, calenders, notebooks, agendas etc) are welcome. Invoices showing promotion and advertisement costs would be helpful.
Visuals, pictures, video recordings etc showing attendance to the fairs,Certificate of Attendance, documents showing costs to attend the fairs are another category.
Evidence showing commercial activities with regard to the brand such as documents showing distribution channels in Turkey and abroad, branches of the brand owner, profit, service network, number of stores, awards, quality certificates etc will be considered as supportive evidence. The point is this; do not focus on the brand owner but on the relevant mark for this evidence.
In terms of online sales, as long as the the brand and good/services can be linked and seen, visuals from the website are accepted.
If the brand is the main element of the opponent’s domain name, then hit/entry numbers/statistics about website visits can be supportive evidence.
Affidavits and statements taken from experts, suppliers/sellers/distributors etc.can be useful; however the TPTO requests them written with clear and concrete wording rather than being general and abstract.
The opponent can submit other types of evidence, as long as they are provided in an appropriate way and are indicated on the list.
We offer our thanks to Özlem Fütman of MARQUES member firm OFO VENTURA for preparing this piece for Class 46. She adds: "It is so exciting to see how IP practice in Turkey is evolving!"