The assessment of accuracy of the Office’s decisions has always been a controversial issue under Turkish trademark law. A recent decision issued by the 2nd IP Court of Ankara that opposed the Court of Appeal’s (“CoA”) decision, constitutes a remarkable precedent, illuminating the issue.
The owner of earlier trademarks, which are also recorded as a well-known trademark by TÜRKPATENT, filed a lawsuit in opposition against a later-dated, and confusingly similar application.
The Office ultimately refused the opposition and decided to register the application. The opponent filed a cancellation action against the Office's final decision. The 2nd IP Court of Ankara agreed with the Office’s approach and rejected the action with the reasoning that the applicant has priority over the opponent, and that even if the applicant’s earlier trademarks have been cancelled due to non-use (retrospectively), they were valid at the time the Office decided on the opposition; thus, they should be considered as vested rights enjoyed by the applicant.
The local IP Court's decision was appealed by the opponent. The CoA upheld the opponent’s appeal by stating that although the opponent argued that the applicant’s earlier registrations had been cancelled during the appeal examination before the Office, the Trademark Office did not request additional information and documentation from the parties regarding this invalidation proceeding, and dismissed the opposition at the final administrative stage.
Further to the CoA’s decision to overturn, the case was re-recorded before the local Court. As a result, the 2nd IP Court of Ankara decided to insist onts first decision (in favour of the applicant) not to abide by the dismissal decision of the CoA. The local Court explained that the applicant’s earlier trademarks were valid at the time the Office decision had been issued and, therefore, the Office was correct to take those trademarks into consideration, as well, although they had been cancelled (even retrospectively – dating prior to the Office’s decision) afterwards. The local Court added that the Office is not required to await the finalization of Court decisions, and/or request information from the parties in that regard.
Through this decision, the 2nd IP Court of Ankara established that the accuracy of the Office’s decisions shall be assessed according, and strictly limited, to the circumstances of the date of decision in dispute. This means that the Office is not required to await the outcome, or to investigate the status, of pending lawsuits that may substantially affect the validity of the earlier trademarks cited as grounds for opposition.
This ruling of the local Court is not final, and the case will be examined by the General Assembly of the CoA so that a final verdict will be given.
The final ruling of the General Assembly of the CoA holds great importance as this unit serves to ensure unification of judgments and to eliminate nonconformities between the opinions of different chambers of the CoA, as the decisions issued by the local Court are not binding, so long as they have not yet been finalized.
Until a final ruling is given by the General Assembly, we expect that the Office’s practices will remain the same, and it will continue to render its decisions pursuant to the circumstances of the dates of decision, without requesting information from the parties, in terms of the validity of the related trademarks.
Considering the approach of the CoA, it is advisable to submit the finalized Court decisions regarding invalidation of a trademark to the Office without delay, in an attempt to have the relevant trademark removed from the registry. Even though the concerned mark is no longer valid, the registry records of the Office may be of great importance in terms of the accuracy of the Office decisions, in cases where it maintains its presence in the trademark registry – such as in the present case.