The Turkish Patent and Trademark Office started notifying Applicants of International Trademarks Concerning Incoming Oppositions
20 January 2024
International trademark holders designating Türkiye were deeply disadvantaged by incoming opposition from third parties against published trademarks in Turkey filed through the WIPO.
As known, the new IP code no. 6769 came into force in January 2017, and opposing parties have to prove upon request by the opposed trademark holder to prove use if their trademark has been registered for more than 5 years as of their registration date.
The so-called “counterstatement stage,” which allows trademark holders to ask for proof of use by the opposing party, is only possible after the Turkish Patent and Trademark Office notifies the published trademark holder of an incoming opposition.
Until 2020, the Turkish Patent and Trademark Office did not notify the WIPO about incoming opposition due to internal reasons. Holders were forced to monitor the local part of their trademark in Türkiye to detect incoming opposition and not to lose the right to force counterparts to prove use. Not providing a use upon request by the trademark holder means that opponents will directly reject their opposition without further examination.
Now, the local Office has announced that all incoming oppositions will be officially notified to the WIPO, which allows trademark applicants designating Türkiye to take advantage of the use-requirement regulation.
This is now an important step, and holders of international trademarks designating Türkiye have definitely taken a look at the use-requirement status of opposing parties and their trademarks since this is the only stage during an opposition process to ask for use. Otherwise, only courts are currently responsible for non-use invalidation actions that can be costly and associated with 2-3 years until a final decision to cancel a counterpart’s trademark.
Dilek Zeybel
Trademark and Patent Attorney
