The Proof of Use Defence in Turkish Oppositions Under Article 19

One of the most significant changes introduced by the Industrial Property Code No. 6769 in 2017 was the proof of use defence in opposition proceedings. Under Article 19(2), a trade mark applicant facing an opposition based on likelihood of confusion can require the opponent to prove that its earlier mark has been genuinely used in Türkiye. If the opponent cannot demonstrate real commercial use, the opposition will be dismissed — regardless of how similar the marks may be. This mechanism, modelled on the EU trade mark framework, prevents dormant registrations from blocking legitimate new entrants to the Turkish market.

When the Defence Is Available

The proof of use defence is available only when three conditions are met:

1. The Opposition Is Based on Likelihood of Confusion

The defence applies only to oppositions filed under Article 6(1) of the IPC — the likelihood of confusion ground. It does not apply to oppositions based on well-known marks under Article 6(4), reputation under Article 6(5), bad faith under Article 6(9), or other relative grounds such as prior rights in a person’s name, trade name, or copyright under Article 6(6). If the opponent relies on multiple grounds, the proof of use defence can neutralise only the Article 6(1) component.

2. The Earlier Mark Has Been Registered for More Than Five Years

The opponent’s mark must have been registered for at least five years as of the application date (or priority date) of the opposed trade mark. If the earlier mark was registered less than five years before the later application was filed, the applicant cannot invoke the proof of use defence. This five-year threshold mirrors the non-use cancellation period under Article 9.

3. The Applicant Requests It Within One Month

The applicant must affirmatively request proof of use within the one-month response period after being notified of the opposition. The request must be specific, identifying which of the opponent’s marks and which goods or services require proof. The defence cannot be raised for the first time at the appeal stage — if it is not invoked in the initial response, the opportunity is lost.

The Opponent’s Burden

Once proof of use is requested, TÜRKPATENT notifies the opponent and grants one month to submit evidence of genuine use. If the Office considers the initial evidence insufficient, it may grant one additional month for supplementary evidence. The opponent bears the full burden of proof: if it fails to submit adequate evidence within these timeframes, its opposition under Article 6(1) will be rejected.

What Constitutes Genuine Use

TÜRKPATENT’s Proof of Use Guidelines, published in 2017, set out the evidentiary standards. Genuine use means use of the mark in commercial life with the aim of creating or maintaining market share. The use must not be merely symbolic or carried out solely to preserve trade mark rights. The evidence must demonstrate:

• Use in Türkiye: The mark must have been used within Turkish territory. Use solely abroad, even if directed at Turkish consumers, is generally insufficient. However, use on goods exported from Türkiye qualifies.
• Use during the relevant five-year period: Evidence must cover the five years preceding the application date of the opposed mark. Dates on all documentary evidence must be clearly visible.
• Use for the relevant goods or services: The evidence must relate to the specific goods or services cited in the opposition. If use can only be proved for some of the registered goods, the opposition will be examined only in relation to those goods for which use is established.
• Sufficient scope: The volume and frequency of use must demonstrate real commercial activity, not token transactions. TÜRKPATENT considers the nature of the goods: expensive, infrequently purchased goods (such as luxury watches) may require fewer transactions than everyday consumer products.

Acceptable Evidence

The Guidelines identify several categories of evidence, including:

• Invoices showing sales of goods or services bearing the mark (considered the strongest evidence)
• Catalogues, brochures, and price lists distributed to Turkish customers
• Packaging and labels bearing the mark
• Advertising materials placed in Turkish media
• Photographs of the mark in use on products or at points of sale
• Business records and customs documentation

All evidence should be clearly dated, reference the relevant trade mark registration number, and be organised and enumerated. The Guidelines suggest that evidence should preferably not exceed one hundred pages. As a practical benchmark, submitting approximately ten invoices per month over the five-year period, spread across the relevant period, is generally considered sufficient for everyday consumer products.

Consequences of Failure

If the opponent fails to submit evidence, or the evidence is insufficient, TÜRKPATENT will dismiss the opposition insofar as it is based on Article 6(1). However, if the opponent has also relied on other grounds (such as well-known mark status or bad faith), those grounds remain unaffected by the proof of use defence and will be assessed independently.

Strategic Implications

• For applicants: Always consider requesting proof of use when facing an opposition based on an older mark. If the opponent’s mark has been registered for more than five years, the defence can eliminate the opposition entirely if the opponent cannot demonstrate genuine commercial use in Türkiye.
• For opponents: Before filing an opposition, audit your use evidence. If your mark has been registered for more than five years, prepare a use evidence file (invoices, advertisements, packaging photographs) before filing, so you can respond quickly if proof of use is requested.
• For both parties: The one-month deadlines for requesting and submitting proof of use are strict. Foreign parties should ensure their Turkish agents are briefed and evidence is readily accessible.

Key Takeaway

The proof of use defence under Article 19 is a powerful tool for trade mark applicants in Türkiye. It prevents unused or dormant registrations from blocking legitimate new marks and aligns Turkish practice with EU standards. However, the defence must be invoked promptly, specifically, and within the one-month response window. For opponents, maintaining organised evidence of genuine commercial use in Türkiye is now essential to sustaining any opposition based on likelihood of confusion.