The aims and conditions connected with proof of genuine use of the Community or national trade mark are different from those relating to proof of use, in the course of trade, of the sign referred to in Article 8(4) of Regulation No 40/94. First, unlike Article 43(2) of Regulation No 40/94, Article 8(4) of that regulation does not require proof of ‘genuine use’ of the sign relied on in support of the opposition. (T-430/08 Grain Millers, Inc. v OHIM (GRAIN MILLERS) [2010]). Next, it should be noted that a sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter (C-206/01 Arsenal Football Club [2002], C-48/05 Adam Opel [2007], T-430/08 Grain Millers, Inc. v OHIM (GRAIN MILLERS) [2010]).
Although Article 43(2) and (3) of Regulation No 40/94 may be applied in opposition proceedings under Article 8(1)(b) of that regulation, in opposition proceedings under Article 8(4) of Regulation No 40/94, the opposing party must show that the sign on which he relies gives him the right, according to the legislation of the Member State concerned, to prohibit the use of a subsequent trade mark. Moreover, unlike the provisions of European Union law in respect of a Community trade mark, European Union law did not provide for any consequences in the event of absence of use without due cause of a business name during a certain period, that question thus being governed by the national law applicable. Lastly, although Article 43(2) and (3) of Regulation No 40/94 provides that genuine use of the earlier mark must be proved in the territory of the Member Sate of which the law is invoked, it is not apparent from the wording of Article 8(4) of the regulation that the sign at issue must also be put to use in the Member State of which the law is invoked. The signs covered by that provision may be the subject of protection in a specific territory, even though they were not put to use in that territory but only in another territory. (T-430/08 Grain Millers, Inc. v OHIM (GRAIN MILLERS) [2010]).
According to Article 19(1) of the Industrial Property Code No. 6769 (IPC), which regulates the examination of oppositions against publication, the Turkish Patent and Trademark Office requests the applicant to submit observations regarding the opposition within the prescribed period. Where deemed necessary, the Office may request the parties to submit additional information and documents. If the observations or the requested additional information and documents are not submitted within the prescribed time limit, the opposition is evaluated on the basis of the available information and documents.
Article 19(2) of the IPC introduces the proof-of-use mechanism in opposition proceedings. In oppositions filed under Article 6(1), provided that the earlier mark invoked as a ground for opposition has been registered in Türkiye for at least five years as of the filing or priority date of the contested application, the Office may, upon the request of the applicant, require the opponent to submit evidence demonstrating that the earlier mark has been put to genuine use in Türkiye in connection with the goods or services on which the opposition is based during the five-year period preceding the filing or priority date of the contested application, or that there are proper reasons for non-use. If the opponent fails to prove these circumstances, the opposition must be rejected. Where it is demonstrated that the earlier mark has been used only for a portion of the goods or services for which it is registered, the opposition is examined only with respect to those goods or services for which genuine use has been proven.
Pursuant to Article 29(1) of the Regulation on the Implementation of the Industrial Property Code No. 6769, the applicant must clearly and explicitly request proof of use in writing within the period allocated for submitting observations on the opposition. Requests for proof of use that do not meet these requirements or that are not submitted within the prescribed time limit are deemed not to have been filed.
According to Article 19(1) of the Industrial Property Code No. 6769 concerning the examination of oppositions against publication, “the Office shall request the applicant to submit its observations regarding the opposition within the prescribed period. Where deemed necessary, the Office may request the parties to submit additional information and documents. If the observations or the requested additional information and documents are not submitted to the Office within the prescribed period, the opposition shall be evaluated on the basis of the available information and documents.”
According to Article 19(2) of the Industrial Property Code No. 6769 concerning the examination of oppositions against publication, “in oppositions filed under Article 6(1), provided that the earlier mark invoked as the ground for opposition has been registered in Türkiye for at least five years as of the filing or priority date of the contested application, the Office shall, upon the request of the applicant, require the opponent to submit evidence demonstrating that the earlier mark has been put to genuine use in Türkiye in connection with the goods or services on which the opposition is based during the five-year period preceding the filing or priority date of the contested application, or that there are proper reasons for non-use. If the opponent fails to prove these circumstances, the opposition shall be rejected. Where it is proven that the earlier mark has been used only for part of the goods or services covered by the registration, the opposition shall be examined only with respect to those goods or services for which genuine use has been proven.”
According to Article 29(1) of the Regulation on the Implementation of the Industrial Property Code No. 6769 concerning proof of use, “in order for Article 19(2) of the Code to apply, the applicant must clearly and explicitly notify the Office in writing of the request for proof of use within the period allocated for submitting its observations on the opposition. Requests for proof of use that do not meet these requirements or that are not submitted within the prescribed period shall be deemed not to have been filed.”
According to Article 25(7) of the Industrial Property Code No. 6769 concerning grounds for invalidity and invalidation actions, “in invalidation actions filed pursuant to Article 6(1), the provision of Article 19(2) may be invoked as a defence. In such cases, the relevant five-year period for determining use shall be calculated based on the filing date of the action. If the plaintiff’s mark has been registered for at least five years as of the filing or priority date of the contested mark, the plaintiff must also prove that the conditions set out in Article 19(2) were fulfilled as of that date.”
According to this provision, it is also possible to request proof of use during litigation with respect to marks that were not relied upon during the opposition stage but were introduced as additional grounds during the court proceedings.
“According to the general principles of procedural law, the defendant may freely amend or expand its defences within the framework of these two petitions until the preliminary examination stage. Accordingly, there is no obstacle preventing the defendant from raising the defence of non-use in the second response petition even if it was not asserted in the initial response petition. Similarly, the procedural freedom granted to the defendant also allows the withdrawal of a defence of non-use that was previously asserted in the first response petition.”[footnoteRef:1]
“According to Article 25/7 of the IPC, in invalidation actions filed pursuant to Article 6(1), the provision of Article 19(2) may be invoked by the defendant before the court as a defence by arguing that the plaintiff has not genuinely used the mark for the last five years. In such cases, the relevant five-year period shall be calculated based on the filing date of the invalidation action. The court will examine whether the mark on which the action is based has been genuinely used during the five-year period preceding the filing date of the action. If the mark has not been duly used, the action will be dismissed. However, if the plaintiff has genuinely used the mark during this five-year period, even for a short time, the proceedings will continue.”[footnoteRef:2]
The concept of “genuine use” has largely been defined in practice by the case law of the Court of Justice of the European Union. For example, the judgment of 11 March 2003 in Case C-40/01 concerning the MINIMAX word mark contains important findings and principles. According to that decision, “genuine use” requires the use of the mark in a manner consistent with its function and sufficiently frequent in relation to the goods and/or services for which it is registered.[footnoteRef:3]
“Genuine use does not include token use intended solely to preserve the rights conferred by registration. In determining whether the use of a mark is genuine, all relevant facts and circumstances must be taken into account, including whether the commercial exploitation of the mark is real and the extent and frequency of the use.” (C-416/04 P Sunrider v OHIM [2006]; C-40/01 Ansul [2003]; C-259/02 La Mer Technology [2004])[footnoteRef:4]
With regard to use, the goods or services on which the mark is used and their nature must also be taken into consideration. In particular, the volume of sales may be lower for goods and services considered luxury items than for inexpensive goods or services.[footnoteRef:5] The use of a trademark in domain names may constitute valid evidence of use where the domain name relates to the goods and services for which the mark is registered and depending on the circumstances of the case.[footnoteRef:6] However, where such evidence is insufficient to establish the relevant date of use, it may serve only as supplementary evidence.
In the present case, it must therefore be assessed whether the marks invoked as grounds for opposition have been genuinely used in connection with the goods and services for which they are registered.
“The ‘genuine and serious use’ required by the Directive refers to actual use of the mark consistent with its essential function, namely guaranteeing the identity of origin of the goods or services and enabling consumers to distinguish those goods or services from others which have another origin without any possibility of confusion.” (C-495/07 Sil-berquelle GmbH v Maselli-Strickmode GmbH [2009]; C-144/06 P Henkel v OHIM [2007]; C-304/06 P Eurohypo v OHIM [2008])[footnoteRef:7]
Although trademarks should generally be used in the form in which they are registered, it is well established through various decisions of the Turkish Court of Cassation that uses which remain faithful to the distinctive core element of the mark are considered to constitute use “in the registered form”.
Another issue requiring particular attention in this assessment concerns the significance of additional elements used together with trademarks. In other words, it must be determined whether use only in combination with additional wording may be regarded as use of the earlier marks relied upon in the opposition.
“The genuine use of series marks requires the separate use of each individual mark. In this regard, the decision of the French Court of Cassation dated 16 July 1992 (No. 89-16589) is frequently cited worldwide as a leading example. In that decision, it was stated that by registering both the LOTUS and AU LOTUS marks, the trademark owner acknowledged that the two marks were not identical and that each mark had to be proven to have been used separately. However, the French Court of Cassation later revised this interpretation in three decisions delivered on 14 March 2006.”
The General Court of the European Union adopted a similar approach in its judgment of 26 February 2006 in the Bainbridge case, which was later upheld on 13 September 2007 (T-194/03 Il Ponte Finanziaria SpA v OHIM & F.M.G. Textiles Srl [2006], C-234/06 P Bainbridge [2007]).
“Article 15(2) does not allow the proprietor of a registered trademark to rely on the use of another similar registered mark in order to avoid the obligation to prove use of the first mark.” (C-234/06 P Il Ponte Finanziaria SpA v OHIM & F.M.G. Textiles Srl (Bainbridge) [2007])[footnoteRef:8]
In the same judgment, the Court further stated that “…although a mark may be considered as used where use is proven in a form differing slightly from the registered version, the protection conferred by a registered trademark cannot be extended to another registered mark which has not been proven to be used merely because the two marks differ only partially.” (C-234/06 P Il Ponte Finanziaria SpA v OHIM & F.M.G. Textiles Srl (Bainbridge) [2007])[footnoteRef:9]
“Genuine use does not include token use aimed solely at preserving the rights conferred by registration. When determining whether the use of a mark is genuine, all relevant facts and circumstances must be taken into account, including whether the commercial exploitation of the mark is real and the extent and frequency of such use.” (C-416/04 P Sunrider v OHIM [2006]; C-40/01 Ansul [2003]; C-259/02 La Mer Technology [2004])[footnoteRef:10]
In addition, certain procedural rules concerning the submission of evidence must also be observed. According to Article 30 of the Regulation on the Implementation of the Industrial Property Code concerning evidence to be submitted in proof-of-use cases:
(1) Evidence submitted under Article 29 must be clear, understandable and reliable so as to allow the parties to evaluate the circumstances and form an opinion without requiring additional information. The evidence submitted by the opponent must contain sufficient information regarding the nature, place, time, extent and manner of use of the mark in connection with the goods or services for which the mark is registered.
(2) Evidence may include supporting documents such as packaging, labels, price lists, catalogues, invoices, photographs and newspaper advertisements. In such cases, the parts of the documents demonstrating the use of the mark must be clearly indicated.
(3) Evidence must be submitted in writing together with a detailed list indicating clearly which evidence proves each factual assertion.
(4) Except for evidence specifically requested by the Office, no evidence may be submitted after the expiration of the time limits provided under Article 29.
(5) The responsibility for submitting evidence in a timely and properly organized manner lies with the parties.
(6) These provisions shall apply, where appropriate, to evidence submitted in opposition proceedings against publication or decisions.
At this stage, the nature of the evidence submitted and the relevant dates must also be correctly determined. The period for which use must be proven is the five-year period preceding the filing date of the contested trademark.[footnoteRef:11] It is not necessary for use to have occurred throughout the entire five-year period. It is sufficient that use occurred during any part of that period.[footnoteRef:12]
Deniz Celikel
footnoteRef:1
Tamer, Elanur. Marka Hukukunda Kullanım İspatı. Hacettepe Üniversitesi Sosyal Bilimler Enstitüsü Özel Hukuk Anabilim Dalı, Yüksek Lisans Tezi, s.174 içinde: Merdıvan, Fethi, “Tescilli Marka Hakkına Dayalı Tecavüz Davasında Kullanmama Def’i”.
footnoteRef:2
Bilir, Döndü Deniz. “SMK 25/7 Maddesi Kapsamında Kullanmama Def’i.” Fikri Mülkiyet Hukuku Çalıştayı, 19–22 Aralık 2019, s.242–243.
footnoteRef:3
Çelikel, Deniz. Avrupa Birliği Adalet Divanı (ABAD) Kararları Doğrultusunda SMK Yorumu. Ankara: Seçkin Yayınları, 2024, s.90–91.
footnoteRef:4
Çelikel, Deniz. Marka Hukukunda Avrupa Birliği Adalet Divanı (ABAD) Kararları ve Yorumu. 3. Baskı. Ankara: Seçkin Yayınları, 2024, s.138–139.
footnoteRef:5
Arkan, Sabih. Marka Hukuku, Cilt 2. Ankara: Yetkin Yayınları, s.147.
footnoteRef:6
Yasaman, Hamdi. Marka Hukuku, Cilt 1. İstanbul, s.634–636.
footnoteRef:7
Çelikel, Deniz. Marka Hukukunda Avrupa Birliği Adalet Divanı (ABAD) Kararları ve Yorumu. 3. Baskı. Ankara: Seçkin Yayınları, 2024, s.140.
footnoteRef:8
Çelikel, Deniz. Marka Hukukunda Avrupa Birliği Adalet Divanı (ABAD) Kararları ve Yorumu. 3. Baskı. Ankara: Seçkin Yayınları, 2024, s.139.
footnoteRef:9
Çelikel, Deniz. Marka Hukukunda Avrupa Birliği Adalet Divanı (ABAD) Kararları ve Yorumu. 3. Baskı. Ankara: Seçkin Yayınları, 2024, s.138–139.
footnoteRef:10
Çelikel, Deniz. Marka Hukukunda Avrupa Birliği Adalet Divanı (ABAD) Kararları ve Yorumu. 3. Baskı. Ankara: Seçkin Yayınları, 2024, s.139–140.
footnoteRef:11
Türk Patent ve Marka Kurumu. Marka Yayıma İtiraz İncelemelerinde Kullanım İspatı konulu bilgilendirme toplantısı, 16.06.2022.
footnoteRef:12
Çelikel, Deniz. Avrupa Birliği Adalet Divanı (ABAD) Kararları Doğrultusunda SMK Yorumu. Ankara: Seçkin Yayınları, 2024, s.93.