As it is known, the New Industrial Property Law numbered 6769 (“New IP Law”) has been published in the Official Gazette dated 10.01.2017 by introducing several changes to the Turkish trademarks law. Under these new rules in the event of an opposition filed against a trademark application on the basis of an earlier trademark that has been registered at least for 5 years on the application or priority date, the applicant is entitled to request proof of use of the subject trademark for the goods covered by the opposition.
Within this framework, the Turkish Patent and Trademark Office (“TPTO”) has published the Guideline to Proof of Use (“Guideline”) in accordance with the practices of the EUIPO and CJEU. The Guideline consists of clarifications for the purpose of guiding both the applicants who shall claim proof of use and the opponents who shall present evidence of use. In addition to these explanations, a new “Proof of Use Evidence Presentation Form” has been published for use.
The applicant shall request proof of use within one month as of being officially notified of the opposition by specifying the goods or services that the use is requested to be proved. The opponent shall also have one month period for submission of the evidences by filling the recently published form which shall include a list of the evidences numbered and classified pursuant to their sorts.
The Guideline evaluates potential documents and information to be submitted as evidence and categorizes them in accordance with their probative effective. Invoices, product visuals, signs or visuals from the premises where the sales of the goods or provision of the services are performed, product packages, advertising and promotion images or videos, information on the commercial activity in relation to the subject trademark are considered as strong evidences of use. On the other hand, catalogues, price lists, product codes, market research results, public opinion research results, awards, screenshots of the websites on which the trademark is used via online sales, declarations regarding the evidences are rather ranked as auxiliary evidences.
The Guideline further provides details on the necessary content and form of the documents and information to be submitted as evidence including without limitation the following:
- Registration number of the relevant trademark should be written on every document to be presented and it is recommended not to exceed 100 pages.
- All the invoices submitted shall be dated and all the relevant parts to a specific trademark or good/service should be highlighted for ease of reference. If the invoices are issued only with product codes, additional information explaining the relevant of the product codes to the subject trademark and goods should be given.
- If there is information regarding more than one trademark in document, parts relevant to the particular trademark should be specified and highlighted.
- In relation to product packaging, presenting evidences by demonstrating any change on the packaging in time is important.
- Advertising and promotion visuals, videos or recordings shall be submitted with a flash memory device.
- With regards to evidences demonstrating commercial activity, only the information and documents related to the subject trademark should be provided instead of information on the trademark holder. Financial turnover, profit, distribution channels, branches, franchises, export amounts, dominance in the market in relation to the trademark are evaluated under this category.
With the Guideline and the relevant forms, standardization of the content and form of the evidences to be submitted has been targeted. In the upcoming days, we will see how the TPTO evaluates the evidences of use under the Guideline and shape the Turkish practice.