Trademark Use Requirement in Türkiye, the US and the EU: A Comparative Overview

Introduction

Upon registration, a trademark grants its owner exclusive rights. However, alongside these rights come with certain legal obligations. One of the most important is the obligation of “genuine use.”

            This article provides a comparative analysis of the trademark use requirements in Türkiye, the United States, and the European Union. It examines how different legal systems, shaped by their unique cultural and economic dynamics, ensure that trademarks go beyond mere registration and play an active role in the market economy.

     2. Use Requirement in Türkiye

    To prevent trademark owners from harming competitive markets, certain restrictions and obligations are imposed in addition to the rights conferred by trademark protection. Article 9/1 of the Turkish Industrial Property Code No. 6769 (“the Code”) provides that, “If, within a period of five years following the date of registration, the trademark has not been put to genuine use in Türkiye by the trademark proprietor in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be revoked, unless there are proper reasons for non-use.”

    Accordingly, the trademark must be put to genuine use within five years from the date of registration. Otherwise, third parties may file cancellation request due to non-use. While cancellation is the primary legal consequence of non-use, the issue is not limited to cancellation proceedings and may also have implications in other legal contexts. For instance, non-use of a trademark may be invoked as a defense in infringement and invalidation actions. Similarly, in opposition proceedings against a trademark application, the applicant may request the opponent to prove that their trademark has been genuinely used within the past five years for the goods and services it is registered for. This type of objection is referred to as a “defence of non-use”. Such defenses may arise in various disputes, including opposition, infringement, and invalidation cases.

Evidence of Trademark Use

    When facing cancellation proceedings due to non-use, trademark owners must prove that they have genuinely used the trademark during the five-year period. In such cases, they are required to submit evidence such as invoices, brochures, product packaging, and advertisements.

    The concept of genuine use refers to acts that are specific to the trademark, carried out in relation to the goods or services for which it is registered, consistent with its intended function, and on a continuous basis. Each case must be evaluated on its own merits, and decisions should be made accordingly.

Paragraphs 2 and 3 of Article 9 of the Code provide the following:

“(2) The cases set out below shall also be deemed as use of the trademark within the meaning of the first paragraph:
 
a) Use of the trademark with additional elements that do not alter its distinctive character;

b) Use of the trademark on goods or their packaging solely for export purposes.

(3) Use of the trademark by a third party with the consent of the trademark proprietor shall be deemed as use by the proprietor.”

    In this regard, using the trademark with minor alterations, such as punctuation changes or different color tones, may still qualify as genuine use, as long as the overall consumer impression remains intact.

    Furthermore, the Code recognizes the use of a trademark by a third party as valid, provided that it is done with the consent of the trademark owner. In other words, a registered trademark can either be used directly by the owner or by third parties through proper authorization. The owner may assign usage rights through licensing agreements, including sublicenses, and such use will fulfill the use requirement.

In summary, trademark owners in Türkiye are required to ensure the genuine use of their trademarks within five years from the date of registration. The law recognizes both direct use by the trademark owner and use by third parties with the owner’s consent. Minor design variations are also accepted, provided the distinctive character of the mark is preserved. Therefore, it is of critical importance for trademark owners to actively use their marks and to be able to submit appropriate evidence of such use (e.g., invoices, brochures, advertising materials, etc.) when necessary, to protect their trademark rights.

      2. Use Requirement in the United States

    In the United States, trademark owners must comply with certain procedural requirements in order to maintain the active status of their registered trademarks. Although these procedures may initially appear complex or burdensome, they serve a critical role in the U.S. trademark system. Failure to meet these requirements may result in the ex-officio cancellation of the registration by the United States Patent and Trademark Office (USPTO).

    The use-related procedures required for maintaining trademark registrations in the U.S. are primarily governed by Section 8, Section 9, and Section 71 of the U.S. Trademark Act, as summarized below:

Section 8: Declaration of Use and/or Excusable Nonuse

    A Declaration of Use must be filed between the fifth and sixth years following the registration date. After this initial filing, further declarations are required between the ninth and tenth years, and every ten years thereafter. If these deadlines are missed, a six-month grace period is available, though late fees apply.

    This declaration is a formal, signed statement asserting that the trademark is still in use in connection with the goods/services listed in the registration. Evidence of use must be provided for all classes claimed. Any goods or services no longer in use must be deleted from the registration.

    Acceptable evidence of use includes dated invoices, promotional materials, product packaging, website screenshots, and similar documentation clearly showing when, where, and how the trademark has been used. Failure to provide adequate proof may result in rejection of the declaration.

    An Excusable Nonuse Declaration must explain when the trademark was last used in commerce and provide a projected timeline for resuming use. It should identify the goods/services that are not currently in use and set out the reasons for the temporary suspension, as well as steps taken to resume commercial activity.

    Circumstances that may justify excusable nonuse include natural disasters, government trade restrictions, or serious health issues affecting essential personnel, provided such events are beyond the control of the trademark owner.

Section 9: Trademark Renewal

     Under Section 9, a renewal application must be filed between the ninth and tenth years after registration, concurrently with the second Declaration of Use to be submitted under Section 8. Thereafter, trademark owners are required to file a combined Section 8 Declaration of Use and Section 9 Renewal Application every ten years. This renewal process is essential for preventing cancellation. If the application is not filed within the prescribed period, or within the additional six-month grace period with penalty fees, the trademark will be deemed abandoned, and protection will be lost.

Section 71: Use and/or Excusable Nonuse for International Registrations

    Section 71 declarations apply to international registrations made under the Madrid Protocol that designate the United States. Trademark holders must submit a Declaration of Use or Excusable Nonuse to maintain protection in the U.S.

    Like Section 8, Section 71 declaration must be submitted between the fifth and sixth years following the date U.S. protection was granted, and again between the ninth and tenth years, and every ten years thereafter. A six-month grace period is also available, subject to additional fees.

    An excusable nonuse declaration under Section 71 must justify the absence of use, affirm that there is no intent to abandon the trademark, and provide an estimated date for resumption. It must also state when use ceased and the reasons behind the nonuse.

    The table below summarizes the deadlines for filing use/excusable nonuse declarations and renewal application required to maintain trademark registrations in the United States:

     3. Use Requirement in the European Union

    According to Article 18 of the EU Trademark Regulation, if the proprietor of a European Union Trade Mark (EUTM) has not genuinely used the trademark within the European Union in connection with the goods and/or services for which it is registered within five years following its registration, or if such use has been suspended for an uninterrupted period of five years without a valid reason, the trademark becomes subject to the sanctions prescribed in the Regulation.

The Regulation also provides that certain specific scenarios shall be deemed to constitute use, provided they meet defined conditions. These include:

• – Use of the trademark in a form that does not alter its distinctive character, even if elements have been added or modified;
  
  
• – Use of the trademark solely for export purposes, where it is affixed to goods or packaging within the EU;
  
  
• – Use of the trademark by third parties with the consent of the trademark owner.

    Proof of use is generally required in revocation (cancellation) proceedings initiated by third parties, or in opposition proceedings where the earlier EUTM is relied upon as a prior right. The European Union Intellectual Property Office (EUIPO) does not request such proof ex officio; rather, it is required in the context of legal disputes.

    Examples of acceptable evidence include invoices, catalogues, price lists, packaging, labels, product photographs, printed advertisements, documentation of advertising expenditures, and market research reports.

    When assessing whether genuine use has taken place, EUIPO considers not how many Member States the trademark has been used in, but whether the use has created a commercial presence in the EU market. In other words, use in just one Member State, or even in a single city within that state, may be sufficient, depending on the nature of the goods or services and the context of the case. Each matter is evaluated on a case-by-case basis, considering the totality of the evidence submitted.

Conclusion

    In both the European Union and Türkiye, trademark owners are required to ensure genuine use of the trademark within five years following registration. At the end of this period, whether the trademark has been used may be raised in the context of cancellation actions or opposition proceedings initiated by third parties. In both systems, no ex officio review is conducted by the respective trademark offices; proof of use is only required when a dispute is initiated.

    In contrast, in the United States, trademark owners are subject to statutory obligations to file use declarations at specified intervals (e.g., between the 5th–6th and 9th–10th years). If these declarations are not submitted, the USPTO may cancel the registration ex officio, without the need for any third-party challenge. In this respect, the U.S. system differs significantly from those of the EU and Türkiye.

    These differing frameworks reflect the distinct legal and economic priorities of each jurisdiction. Consequently, trademark owners operating in these territories must exercise due diligence to comply with the relevant use requirements to protect their rights and avoid potential cancellation of their trademarks.