Opposition to a Trademark Application: Time Limit, Likelihood of Confusion and Proof of Use

A trademark application published in the Bulletin can be opposed before TÜRKPATENT within two months from the date of publication, on the ground that there are obstacles to registration. However, holding a certificate for an earlier-dated trademark is not sufficient by itself. The relationship between the signs and between the goods or services, the earlier right relied on, the evidence and, where necessary, genuine use are assessed together. The grounds for opposition and the fee formalities must also be completed within the time limit. [S1, Arts. 18–19]

This article is prepared for businesses whose applications have been published and for trademark owners who want to protect their earlier rights. It examines the opposition process before registration; an invalidity action that may be filed after registration and infringement claims against actual use are separate legal avenues.

Does publication of a trademark application mean registration?

Publication of an application that has passed TÜRKPATENT’s examination of formalities and of the absolute grounds for refusal does not show that the rights of third parties have been definitively eliminated. Publication starts the opposition process. Upon opposition, the application may be rejected for all goods and services or narrowed with respect to certain items only. Nor does the absence of an opposition mean that the trademark can in no circumstances be invalidated later. [S1, Arts. 16–22, 25]

For this reason, having packaging printed for a new name or logo, buying a domain name, changing the store sign or launching an advertising campaign does not prove that the application is legally free of problems. The research and opposition timetable should be set up before the commercial investment timetable. For the applicant, the main risk is to treat the publication as a guarantee of registration and make investments that are costly to reverse.

The difference between a third-party opinion and an opposition

A third-party opinion under Article 17 of the Industrial Property Law (SMK) is a mechanism that informs the Office about the absolute grounds for refusal specified in the law; a person who submits an opinion does not become a party to the proceedings for that reason alone. It is not safe to use it in place of an opposition to publication based on an earlier trademark, a trade name or another right. The choice of avenue matters in terms of fees, standing as a party, the scope of examination and later options for applying. [S1, Arts. 17–18]

On what legal grounds can an opposition be based?

Likelihood of confusion with an earlier trademark

Under SMK Article 6/1, the similarity of the signs and the identity or similarity of the goods or services are examined together. Likelihood of confusion does not consist only of the consumer thinking that two products are exactly the same. The idea that there is an economic or administrative connection between the businesses may also matter. Visual, aural and conceptual similarity, the distinctive and dominant elements of the signs, and the level of attention of the relevant public and the conditions of purchase are assessed. [S1, Art. 6/1]

A single shared word is not always a ground for refusal. The scope of protection of a descriptive element or one common in the sector is not the same as the effect of an element with high distinctiveness. Conversely, adding a city name, a product type or a weak addition to the application does not in every case remove the likelihood of confusion. The notice of opposition should not break the signs into parts and point only to the similar part; it should explain the overall impression they create.

The class number alone is not sufficient

Classes of goods and services serve administrative classification. Being in the same class does not mean automatic similarity, and being in a different class does not mean definite difference. Purpose of use, target customers, distribution channels, complementarity and competitive relationship should be examined on the specific list of goods or services. Instead of opposing all classes of the application without reasons, it should be shown which items conflict with which earlier right. [S1, Art. 11/4]

Unregistered earlier right, reputation and bad faith

Having acquired a right before the application date in an unregistered trademark or in another sign used in trade may, under appropriate conditions, be a basis for opposition. A trade name, a personal name, a photograph, copyright or another intellectual property right is also examined under its own conditions. The existence of an entry in the trade registry does not give unlimited priority for every good and service; the right, the date, the use and the conflict must be explained. [S1, Arts. 6/3, 6/6]

A claim of reputation requires records such as sales data, advertising activities, market research and awareness in the relevant circles. Registration in a foreign country does not automatically create a right of registration in Türkiye. As regards bad faith, a former distributor relationship, a sign learned during commercial negotiations, the aim of blocking another’s entry into the market, or systematic applications may be assessed. A claim of similarity and a claim of bad faith should not be written as substitutes for each other. Each ground must be built on its own facts. [S1, Arts. 6/4–6/9]

How are the opposition period and the procedural timetable managed?

The first two periods are assessed under SMK Articles 18 and 20; the period for an action against a YİDK decision is assessed under Article 15/C of Law No. 5000. Periods set in months should not be calculated casually as “60 days.” The date of publication, the date of notification and the date on which electronic notification became legally effective should be recorded separately. [S1; S2; S3]

Submitting only an empty form in the belief that the grounds of opposition can be completed later creates a serious risk. SMK Article 18 provides consequences tied to the time limit with respect to the grounds and the fee. Holding settlement talks with the other side does not by itself stop the opposition period. The procedural periods and steps recognized by the Office must also be followed separately.

When does a request for proof of use become decisive?

As of which date is the five-year registration threshold calculated?

If the opposition is based on SMK Article 6/1, and the trademark relied on as the ground of opposition had been registered in Türkiye for at least five years on the filing or priority date of the later application, the applicant may request proof of use. In that case, the owner of the earlier trademark must show genuine use in Türkiye in the five-year period counted back from the relevant date, or proper reasons for non-use. The request must be made in accordance with the Office’s procedure and within its time limit. [S1, Art. 19/2; S2]

Here, the trademark filing date and the registration date are not the same. In addition, the period in an independent revocation application for non-use should not be confused with the period in an opposition to publication. Using the same evidence folder unchanged in two files relating to different dates may leave the required time interval empty.

Which evidence shows genuine use?

Invoices are meaningful to the extent that they can establish the link between the trademark, the product or service, the date and the commercial activity. Packaging, catalogs, online sales records, shipping documents, advertising contracts, trade fair participation and third-party records may be assessed together. That a company is active and that a particular trademark is used for a particular good or service are different facts. Nor does the appearance of the trademark in a company name prove use as a trademark in every case.

The evidence should not merely be large in number; it should show the place, time, extent and nature of the use. Use by a licensee or by a permitted person may also be taken into account under the statutory conditions. Variant uses that do not alter the distinctive character of the trademark should be distinguished from the use of an entirely different sign. If use is proved only for some goods or services, the opposition is examined on that scope. [S1, Arts. 9, 19/2]

Court of Cassation example: genuine use in the construction sector

In the decision of the 11th Civil Chamber of the Court of Cassation dated 26.12.2024, E.2024/777, K.2024/9489, the use of an earlier trademark relating to a housing project was discussed. While the regional court of appeal found the evidence insufficient, the Court of Cassation took into account the production process of the construction sector, which extends over years, and concluded that the concrete evidence was sufficient to prove genuine use; it also assessed the manner in which the later sign approached the earlier trademark and reversed the decision allowing the claim. [K1, V–VI]

The decision cannot be read as meaning that every brochure will be regarded as sufficient. Its contribution in practice is that the intensity of use is not measured detached from the economic reality of the sector. The opponent should submit the project’s development and marketing records with their periods; the applicant should argue with which service and which date those records are connected.

How is the application file prepared?

First, the application number, the sample of the sign, the publication date, the list of goods and services and the dates of the earlier rights are verified. Then each ground of opposition is matched with separate evidence. The comparison of the signs, the comparison of the goods and services and the proof of use should be prepared as separate sections.

• Current register records and the status of earlier applications should be obtained.
• Documents of earlier use should be organized by date, country, and good or service.
• Evidence of reputation and bad faith should be kept separate from the general explanation of similarity.
• The power of attorney, the authority of representation and on whose behalf the application is made should be checked.
• The electronic filing receipt, the payment record and the notifications should be kept.

Procedures can be carried out through the relevant application channel in TÜRKPATENT’s electronic system. Representation before the Office is subject to the special rules on trademark attorneyship; it is not the same as representation by a lawyer in court. The requirement for persons not resident in Türkiye to use a trademark attorney in Office procedures is also taken into account. [S1, Art. 160; S2]

What happens after rejection, partial rejection and settlement?

If the opposition is rejected or accepted only in part, the grounds on which the decision rests are examined and an application to the YİDK is considered. An action against a YİDK decision is not an ordinary annulment action to be filed before an administrative court. Under SMK Article 156/2, the Ankara Civil Court of Intellectual and Industrial Property Rights has jurisdiction. The correct defendants must be named, both the Office and the counterparty benefiting from the decision.

Acceptance of the opposition does not mean that all uses by the other side in the market will stop automatically. If actual use continues, claims based on infringement, unfair competition or other rights are assessed separately. The existence of proceedings or of an opposition does not by itself lead to every kind of injunctive outcome; the protection sought must be justified with its legal interest and conditions.

In a settlement, the narrowing of the list of goods or services, the manner of use, packaging, online advertising, territorial scope and costs should be written out clearly. Saying “we withdraw the opposition” in a simple email may not secure the requested register action or the settlement of all future disputes. A use agreement does not remove the rights of third parties.

Conclusion

An effective opposition to a trademark application does not consist of attaching the earlier certificate. The correct time limit, the correct ground of opposition, a concrete comparison of goods and services and, where necessary, period-specific evidence of use must be prepared together. For the applicant too, a strong defense lies in examining the scope and usability of the earlier right rather than merely saying that the signs are different. The first step is to draw up a file-specific timetable based on the publication in the Bulletin and the notifications.

Related articles: Trademark Infringement: Stopping Unauthorized Use and Compensation; Invalidation and Revocation of a Trademark: Unused Marks and the Right Procedure; Domain Name Disputes: .tr Applications, UDRP and Recovery of a Domain Name.

Frequently Asked Questions

Can I oppose if my trademark is unregistered?

Yes, if there is a statutory basis, such as a right acquired through earlier use. Ownership of the right before the application must be shown with concrete documents; merely having thought of a name earlier is not enough. For details, see the section “On what legal grounds can an opposition be based?”

If I miss the two-month period, do all my rights end?

The possibility of opposing the publication may be lost; however, post-registration invalidity or claims against actual use may be examined under their own conditions. These avenues may be more costly and subject to different risks. Missing the period is not a safe strategy.

Does an earlier trademark being five years old invalidate the opposition?

No. The five-year threshold brings proof of use into play upon an appropriate request. If genuine use or proper reasons are proved, the earlier trademark is assessed within the relevant scope.

Can an action be filed directly when the opposition is rejected?

The appropriate internal objection route against the Office’s decision and the YİDK stage must be followed. The period for an action against the YİDK’s final decision starts separately; a litigation strategy is not built without examining the decision and the notification.

Sources

1. Industrial Property Law No. 6769, in particular Arts. 5–6, 9, 11, 17–21, 25, 156 and 160. TÜRKPATENT official access to legislation; WIPO Lex record of the consolidated Turkish text.
2. TÜRKPATENT, Trademark information, Proof of Use Guide and Regulation on the Implementation of the Industrial Property Law. TÜRKPATENT trademark page; TÜRKPATENT legislation page.
3. Law No. 5000 on Patent and Trademark Attorneyship and Certain Regulations, Art. 15/C. Text of the law.
4. Court of Cassation 11th Civil Chamber, 26.12.2024, E.2024/777, K.2024/9489. Full text.