Following the introduction of Turkey's New IP Law earlier this year, Ozlem Futman of OFO VENTURA brings news of updated guidance from the Turkish Patent and Trademark Office (TPTO) on non-use of trade marks:
Turkey has had a New IP Law no 6769 since 10th January 2017. Under the New IP Law, an applicant can request their opponent(s) to prove serious and genuine use of their mark in Turkey in the last five years or submit justified reasons for non-use, if the opponent's mark had passed the five-year use term on the filing/priority date of the opposed mark.
If this use cannot be proven, then the opposition would be dismissed as far as the argument based on the opponent's earlier registered mark is concerned. Other arguments (such as bad faith, whether the mark is well known and company name) can still be examined.
On 6th June 2017, we informed readers about the TPTO's published Guideline indicating how the "request for proof of use" can be claimed by applicants, and "evidence of use" should be submitted by opponents (see TPTO publishes guidelines for use requirements in opposition proceedings).
On 29th September 2017, the TPTO published an updated version of the Guideline giving more detailed information about non-use as a defence practice.
This time the TPTO clearly indicated that the new practice aims to align the Turkish practice to the laws and practice of the EU where the same defence is stated in article 44 of EU Trade Mark Directive no 2015/2436 and article 42 in EU Community Trade Mark Regulation no 207/2009. With that, the TPTO discloses one more time its intention to follow the EU practice.
Main points in the updated Guideline
1- Non-use as a defence can only be applied to applications filed after 10th January 2017. If the mark is partially/entirely refused by the TPTO after examination, the applicant cannot request proof of use from the owners of cited marks; so non-use as a defence can only be asserted when the mark is opposed by a third party upon its publication.
2- An applicant cannot assert non-use as a defence if the opponent based their claims on their mark being well known according to the Paris Convention (Article 6/4 in IP Law) and/or if dilution is claimed (Article 6/5 in IP Law) .
3 -When a mark is opposed, the TPTO informs the applicant and gives them one month to submit their counter arguments and evidence; within this one-month time frame, the applicant cannot only submit their counter arguments but with the same form can also ask the opponent to prove use of the mark upon which the opposition is based. The updated Guideline clearly states that if within this period proof of use is not requested, then the applicant cannot request proof of use later on during the TPTO appeal proceedings.
4- If the opponent does not submit any evidence to prove serious use or the evidence submitted does not relate to the opposition, and if there are no other grounds than the opponent's earlier registered mark(s), then the opposition would be refused.
5- After being notified, the opponent has one month to provide evidence of use. After this month expires, the opponent cannot submit any evidence; any evidence submitted after expiry of this one-month time shall not be taken into account by the TPTO. However, should the TPTO see any deficiencies in the evidence submitted then it will allow the opponent one extra month to comply.
6- The evidence submitted should be clear, understandable, trustable and should consist of enough information as to place, time and extent of use of the opponent's mark.
7- If use can be proven only for some goods/services, then the opposition will be examined only for those goods/services. If the applicant does not request proof of use, the opposition will be examined by taking into account all goods/services in all marks upon which the opposition is based.
8- The opponent can submit evidence of use either at the time of filing the opposition, or on the request of the applicant.
9 -Evidence submitted should show genuine use in Turkey by the opponent directly or through third parties with the permission of the opponent.
10- If the mark on which the opposition is based has been assigned to the opponent but had not been used by the previous owner, then the opponent cannot argue that this is a justified reason for non-use of the mark.
11- The opponent should prove that the mark is used as it is registered or in a way not altering the mark's distinctive character, and that it is used according to its main function. In the updated Guideline, the TPTO dedicated a big section to "use not changing the mark's distinctive character" by giving examples to guide what could be understood as changing/not changing the distinctive character of a mark (see illustration). Some of those examples are taken from EU case law.
In general, adding to or removing some elements from the characters of the mark; changing some simple motifs; using the mark with capital letters even though it is registered with lower case letters; changing the writing style of the mark in use; adding some descriptive words to the mark; or using the mark with different colours than those in the registration would be considered as use not changing the distinctive character. It is not easy to set precise rules as to what does or does not change a mark's distinctive character but the criteria remains the same: even though there are some changes in the use of the mark, would the consumers still point out the same product and the same entity?
12- The updated Guideline, by referring to the CJEU Minimax case (C-40/01), explains what should be understood by "serious use/genuine use" and how this term needs to be interpreted. It also clearly states that "token use" is not acceptable. If there is a well-known mark among the marks upon which the opposition is based, evidence proving serious use still needs to be submitted on the applicant's request.
In terms of quantity, what shall be taken into account is the related market and characteristics of the goods/services in discussion. For instance,according to the updated Guideline, 10 packages of waffles (approximately 1,000 pieces) cannot be considered as serious use because selling such amount of products would not be enough to have a commercial place in the related sector. However, if the opponent can prove that they sold one aeroplane during the last two years, this can be regarded as serious use for a mark registered in class 12 for air vehicles.
13- Use in free zones is accepted as use in Turkey: free zones are outside of the customs frontier, but they are politically within the Turkish borders.
According to the IP Code "use of the trade mark on goods or their packaging solely for export purposes shall be understood to constitute use" . The Guideline points out that if the opponent can prove that the mark is put on the product or packaging in Turkey, then this is accepted as use.
14- The opponent should prove that their mark is used directly on the goods/services for which it is registered. If this contact cannot be established then what needs to be sought is evidence showing the relevant public would perceive the sign as a trade mark that distinguishes their goods/services from others in the market.
In this sense, the Guideline says that using the mark only in a company name or a trade name cannot be regarded as direct use.
15 -The Guideline describes "justified reasons" as actual or legal obstacles causing the opponent not to use the mark(s) on which the opposition is based. Such reasons can be war, financial crises, acts of God, changes in Customs Laws and Regulations, import restrictions, embargoes etc. Situations that are out of the opponent's control, such as not being able to obtaining permision from the authorities to put the product on the market or not being able to manufacture the products due to restrictions by the competent authorities, are also regarded as justified reasons.
According to the Guideline, the following cannot be accepted as justified reasons:
--not being in good shape;
--incapacity or sickness of proprietor, because he/she could appoint a commercial representative or deputy. But if the business is strictly based on the personal effort of the proprietor then the situation might be evaluated differently.
--non-use by a licensee. If it is a non-exclusive licence, then the licensor could also use the mark; if the licence is exclusive then the licensor could terminate the contract if the licensee has not used the mark. .
--bankruptcy. However, if the opponent is bankrupt due to a general crisis or if his/her production facility is expropiated, then such can be evaluated.
Preparing for the future
This is the most comprehensive Guideline that the TPTO has prepared so far. According to the New IP Code, in seven years from 10th January 2017, Turkey will have administrative cancellation proceedings and the TPTO will handle non-use cases. Obviously, the TPTO already started getting prepared for this new task!