The Turkish Patent and Trademark Office’s Genuine Use Assessment for Software Distributed Free of Charge
29 Oct 2026 | Newsletter
Software is no longer sold only as a stand-alone product. Numerous devices are now accompanied by software that enables users to utilize the device, access additional features, manage data, or improve the overall user experience. While some software is embedded in the device itself, some is distributed by the trademark owner as a mobile application through major online application stores or as a desktop application directly from the trademark owner’s website. In many instances, software is distributed free of charge and can be downloaded and used by users without a subscription. Software is usually crucial to fully utilizing the device’s functions, and therefore users who own the device typically also download and use the software. Many trademark owners have a commercial benefit in providing software free of charge rather than selling it separately, thereby increasing customer satisfaction and preference for their physical products. This raises a relevant question in trademark law: If software accompanying a device is offered under the same trademark but is not sold separately and is distributed free of charge, how should genuine use be assessed?
A Recent Turkish Patent and Trademark Office (“TPTO”) Decision
In an opposition proceeding before the TPTO Trademarks Department, the owner of an earlier trademark was required to prove its genuine use for both “medical devices” in Class 10 and “software” in Class 9. Within the scope of the earlier trademark, both “medical devices” and “software” were limited to a specific purpose/medical condition. The trademark owner had been selling the device in Türkiye for many years and was able to produce invoices and other materials demonstrating extensive use in relation to the medical device.
The device was accompanied by software, which was also extensively downloaded and used. The software was designed to enable users to view, monitor and manage data generated by the device and utilize its other functions. The software was developed separately from the device and was not embedded in it. Users with a compatible device could download the software free of charge to a computer, smartphone, or tablet through major online application stores, or directly via the owner’s website. The owner also owned the copyright to the software.
To prove genuine use of its earlier trademark, the owner submitted invoices demonstrating sales of the device, together with retail sales figures, advertising and promotional materials, user guides, and other (secondary) evidence. The software was not sold as a stand-alone product; therefore, the owner was unable to produce any separate invoices for the software. However, comprehensive materials, including software download links, download and usage figures, application visuals, customer feedback, and other evidence demonstrating the distribution and use of the software in Türkiye, were submitted.
In the proof-of-use petition, the owner explained that the materials should be deemed sufficient to demonstrate that the software was separately made available to users and intended to be used in connection with the device. The figures showed that most users who owned the device also downloaded and/or used the software. Even though no invoice specifically related to the software was available because the owner preferred not to charge users separately for it to facilitate user convenience and increase sales of and preference for the device, there was no doubt that the software was distributed for commercial purposes, just like the device itself.
Following its review of the proof-of-use petition and evidence, the TPTO Trademarks Department ruled that genuine use had been established only for “medical devices” in Class 10. By contrast, genuine use was not accepted for “software” in Class 9. The Trademarks Department’s decision did not include any reasoning as to why genuine use was not accepted for the software. Subsequent conversations with TPTO examiners suggested that the main reason was the absence of any invoice relating to the software. No appeal was filed against the Trademarks Department’s decision before the TPTO Re-Examination and Evaluation Board based on commercial considerations at the time.
A Practical Challenge in Proof-of-Use Proceedings in Türkiye
The outcome raises an important question as to the type of evidence required where software is not sold as a stand-alone product but is offered as part of a product ecosystem. The TPTO deems invoices the most important piece of evidence in proving genuine use of a trademark. Invoices were specifically emphasized in the Guideline[1], and the TPTO regularly deems any material that is not an invoice insufficient to prove genuine and commercial use. Where software is distributed free of charge, traditional sales evidence may simply not exist, making it more difficult to prove genuine use than in the case of physical products.
In this instance, the TPTO’s strict approach creates another important issue for the owner of the earlier trademark. The contested application was found to be confusingly similar to the earlier trademark and rejected for medical devices in Class 10, whereas registration was allowed for software in Class 9. The owner may potentially lose its trademark rights over software in Class 9 if it encounters a separate non-use revocation action before the TPTO, which has been the competent authority for non-use revocation actions since 10 January 2024, and the TPTO adopts the same approach. The owner may be unable to prove its vested rights for software in Class 9 since proving use is required for successfully claiming vested rights in accordance with the most recent case law[2]. The owner of the later-dated application may use a confusingly similar sign for software targeting the same medical condition, particularly since the “software” covered by the later-dated application was not subject to any limitation.
EUIPO Practice Is Not Limited to Invoice Evidence
The EUIPO Guidelines[3] call for a broader assessment of whether the materials submitted, taken as a whole, demonstrate that “the owner has seriously tried to acquire a commercial position in the relevant market”. The Guidelines specifically address advertising and internet use and recognize that genuine use may be established through different forms of objective evidence, including catalogues, brochures, advertisements, website materials, and product documentation (EUIPO Guidelines, Part C, Section 6, Proof of Use). This approach is consistent with the principles established by the Court of Justice in Ansul BV v. Ajax Brandbeveiliging BV (C-40/01). According to the judgment, the assessment of genuine use must take account of all relevant facts and circumstances, including the nature of the goods or services, the characteristics of the market concerned, and whether the use reflects real commercial exploitation of the trademark in the relevant economic sector.
Assessing Genuine Use Beyond Sales Evidence
As products increasingly combine hardware and software, this question is likely to arise more frequently in trademark practice. Physical devices are ordinarily sold and supported by invoices, whereas accompanying software is usually provided free of charge under the same trademark.
Where software is provided free of charge for use with a device under the same trademark, the lack of separate invoices should not, in itself, preclude a finding of genuine use. Other materials may also be relevant, including website and app-store pages, user manuals, promotional materials, download or access data, release notes, and screenshots showing the commercial use of the trademark. Taken together, such materials may help show that the software was made available and commercially used under the trademark.
[1] TPTO, Kullanım İspatı Kılavuzu [Guidelines on Proof of Use] (2017).
[2] For instance, the Court of Cassation, 11th Civil Chamber, Merits No. 2018/3344, Decision No. 2020/543 and dated 20 January 2020 and Merits No. 2019/2269, Decision No. 2020/16 and dated 06 January 2020.