Turkey: Non-Use Defence In Opposition Proceedings In Turkey

Last Updated: 18 June 2019
Article by Güldeni̇z Doğan Alkan and Dicle Doğan

In 2017, both the Industrial Property Code No. 6769 (the IPC) and the Regulation on the Implementation of the IPC (the Regulation) were published and entered into force, uniting all IP rights in one Code which were previously regulated by different decree-laws.

The non-use defence in opposition proceedings was introduced with the IPC. According to the IPC if the trade mark claimed to be similar to the application is registered for more than 5 years as of the application date (or priority date) of the opposed application, upon request of the applicant, the Turkish Patent and Trademark Office (the Office) shall ask the opponent to prove the effective use in Turkey on the relevant goods and/or services within the scope of the trade mark relied upon the opposition.

Upon an opposition to an application, the Office has to notify the applicant that an opposition has been filed.The applicant is entitled to submit responses within one month as of the notification date of the opposition.Together with the responses, the applicant may also request the proof of use of the opponent's trade marks, if the opposition is based on likelihood of confusion argument (Article 6/1 of the IPC).The Office shall then notify the opponent and inform that such proof of use can be submitted within one month.

The trade marks for which use could not be proven will not be taken into consideration in the evaluation of the opposition based on similarity. If it is proved that the trade mark is used only for some goods/services within the scope of the registration, the opposition will be reviewed only on the basis of goods/services for which use has been proven.

Since the counter non-use claim in opposition proceedings is a whole new concept, to clarify the use and role of the concept, the Office published the Proof of Use Guidelines (the Guidelines) on 28 April, 2017 and updated it on 30 September, 2017. In the Guidelines, among other explanations, the Office explains the qualifications of proof of use evidence and lists the evidence materials which can be used to prove the genuine use of a trade mark in Turkey.

According to the Guidelines : invoices, price lists, catalogues, product codes, products, packaging, signboard visuals, advertisements, promotions and their invoices, marketing surveys, opinion researches, information about the commercial activity and any additional documents/statements regarding Turkey can be submitted to prove the genuine use of the trade mark.While assessing the genuine use, the following factors are taken into account by the Office: time, place, nature, extent of use and use for the goods/services for which the trade mark is registered.

All evidence should be linkable with the trade mark, should be dated and should demonstrate the genuine trade mark use in Turkey in the last 5 years (retrospective from the date of application/priority of the opposed trade mark).

Under Turkish regulations no medicinal product for human use can be sold and marketed unless it obtains a marketing authorization from the Turkish Ministry of Health. Such applications can be made only by real or legal persons residing in Turkey. In addition, it is strictly forbidden to advertise all type of drugs to the general public. Only authorized products can be promoted to healthcare professionals. Drugs cannot be sold directly from the pharmaceutical company to patients. Pharmaceutical companies sell their drugs to warehouses, which then sell to pharmacies.

Due to these special regulations, pharmaceutical trade mark owners face some difficulties to prove the genuine use of their trade marks in Turkey, when requested.As it is mentioned above, among other materials, the genuine use of a trade mark may be proven by catalogues, advertisements and promotions. The Guidelines state explicitly that submitting visuals or videos of advertisements and promotion materials and the invoices thereof constitutes great importance.

Pharmaceutical trade mark owners cannot submit any evidence showing the advertising of their products to the general public in Turkey. It is possible however to submit promotional materials intended for healthcare professionals and information and documentation regarding scientific meetings held in relation to their products.

Due to this legal impediment faced by trade mark owners to prove the genuine use of the trade mark, submitting other types of documentation will be particularly important. However, since in most of the cases the trade mark is registered on behalf of the foreign entity, the link between the Turkish entity holding the marketing authorization of the product and the foreign trade mark owner should also be explained and supported by documents. If the invoices and other documents proving the use of the trademark are issued by another entity, even if this entity is affiliated to the trade mark owner, we see that the Office does not directly accept such evidence and seeks license or sublicense agreements as well as franchise and/or merchandising agreements in order to accept the relationship between the companies and the use of the trade mark.Therefore, submitting documentation which will satisfy the Office showing the link between the entities is very important to prove the use of a trade mark. Hence evidence showing the sale of the product by the marketing authorization holder to a warehouse might not suffice to prove that the trade mark has been genuinely used by the trade mark holder or by an authorized representative.

The maximum sale prices of pharmaceuticals are set by the Ministry of Health and are published in the Ministry's official website as well as the number and date of the marketing authorization of the product.This information is available to the public and may be used as evidence supporting the retrospective use claim.

In a recent case where the trade mark relied on in the opposition was used on pharmaceuticals, the Office accepted that the trade mark was used based on invoices and other evidence showing the use of the trade mark and did not seek further documentation showing the advertisement or promotion of the goods. It was explained in the proof of use petition that due to regulatory reasons, only invoices and documents regarding the proceedings before the Ministry of Health such as MA, price listings, etc. could be submitted.This decision also proves that the Office will tailor the proof of use implementation, depending on the type of goods and taking into consideration other laws and relevant legislation.

Although the proceedings and examinations related to the non-use defence can still be considered as quite new, we see that the Office has already adapted its examination procedures according to different industries and their specific regulatory requirements.The Office accepts that evidence related to the advertising of pharmaceuticals is not available due to regulatory prohibitions. Therefore any other kind of evidence showing the retrospective use of the trade mark is accepted; thus allowing pharmaceutical companies to benefit from a fair examination made by the Office which relies on the knowledge of the specific conditions and requirements related to the industry.

First published by PTMG – Law Lore & Practice May 2019, 31.05.2019

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Gün + Partners
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Gün + Partners
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions