The Supervisory Power of The Re-Examination and Evaluation Board

It is observed that the supervisory power of the Re-examination and Evaluation Board (“Higher Board”), which is in charge of examining and finalizing appeals against the decisions taken by the Turkish Patent and Trademark Office (the “Office”) regarding the registration of IP rights, is in the form of a review of expediency. This issue is regulated in paragraph 4 of Article 6 of the Regulation on the Turkish Patent and Trademark Office Board of the Re-examination and Evaluation Department (“the Regulation”). This article clearly states that in the event of a procedural error or deficiency that prevents the Higher Board from conducting a sound and complete examination and evaluation of the merits or that seriously affects its final decision and resolution of a dispute, the file can be sent back to the department that made the initial decision by stating its reasons[1].

As far as encountered in the practice, the Higher Board does not apply its power arising from the Regulation in every matter. In fact, taking example of two recent disputes we have encountered, it has been seen that the examinations of the Higher Board have differed and that the use of this power has not yet gained consistency. Although we have seen different decisions, it is still possible for the Higher Board to send the decision to the department that rendered the decision in order to remedy a procedural deficiency affecting the merits of a previously rendered decision.

A similar practice is being applied at the EUIPO. As regulated under Article 71 of the European Union Trademark Regulation and Article 60 of the Community Design Regulation, the Board of Appeal may request the remedy of deficiencies by sending the decision to the department that issued the decision.

To give concrete examples, in a dispute we have undertaken, the Higher Board concluded that the dispute could not be examined properly at this point since it was not clear which trademarks were accepted as basis for the partial refusal decision of the Trademarks Department (“TM Department”) and there was a discrepancy between the text of the basis trademarks and the conclusion of the decision, and sent the decision back to the TM Department to remedy this deficiency. Although the relevant decision of the TM Department stated that there was no likelihood of confusion with respect to any of the trademarks that were the basis for the opposition, the opposition was partially accepted. Based on the decision of the Higher Board, the TM Department made a reassessment and issued a new decision where it was stated that the previous decision was sent inadvertently and should be disregarded.

In another dispute, the Higher Board deemed that there was likelihood of confusion between the parties’ trademarks, despite the fact that no evidence was submitted in response to the request for proof of use for the trademark subject to the request for proof of use. Such that; two separate oppositions were filed against the application for Trademark X on the basis of Trademark Y belonging to person A and Trademark Z belonging to person B. Proof of use was requested for Trademark Y belonging to A. However, the TM Department decided that there was likelihood of confusion between Y and X without any evidence of use of Y. Furthermore, it was also determined that there was likelihood of confusion between B’s application X and Z relied upon for the opposition and decided to reject the trademark application. Following the appeal of this decision of the TM Department, the Higher Board also examined the likelihood of confusion with respect to the trademarks of B that were not subject to proof of use. Since the scope of Z belonging to B, which was not subject to proof of use, also included the same/same type of goods within the scope of Y (which was subject to proof of use), the Higher Board decided that there is no need to re-examine in terms of revoking the rendered decision and that there was likelihood of confusion, despite no evidence of use had been submitted.

However, there were two separate trademarks belonging to two different persons (A and B) and two separate oppositions. Since it has been considered that there is a likelihood of confusion with one of the party’s trademarks, it cannot be said that there is a likelihood of confusion by taking into account the trademark in question, even though no evidence has been submitted regarding the other party’s trademark. This is because each party and its trademarks and the existing dispute (likelihood of confusion) are unique and since only one is admissible, it is not rightful not to examine the other, or to take into account the trademark of the party who has not submitted any evidence despite the request for valid proof of use. However, the did not return the decision to the TM Department, the department which had not issued a decision which would have normally stated that the trademark for which no use evidence was submitted, should be disregarded.

In fact, in this concern, the TM Department’s procedural deficiency led to an erroneous decision on the merits of different oppositions. Even though no proof of use was submitted for a trademark belonging to a different opponent, and despite the goods and services covered by this trademark and the other applicant’s trademark are the same/same type of goods and services, the erroneous Higher Board decision on the existence of likelihood of confusion in respect of the trademark for which no proof of use has been submitted was found to be correctly rendered and continues to exist. As a result, the applicant who has not submitted evidence of proof of use may reference this decision as a precedent in different disputes and may assert that the use of their trademark in the goods and services for which it is registered has been previously established by the Office.

Therefore, it has been observed that the Higher Board should have sent the decision back in accordance with the specific circumstances of the case, but rather issued a final decision without returning it. However, this practice, which has not become consistent practice of the Higher Board yet, may prolong the appeal processes, affect the predictability of decisions and the legality of decisions, as explained above. Moreover, in the event that there is a procedural error or deficiency that prevents a sound and complete re-examination and evaluation of the merits, or that seriously affects the final decision and the resolution of the dispute, the department that issued the initial decision actually now renders a new decision and a new appeal against this decision arises. This, in turn, gives the party that did not challenge the initial decision in the first instance the right to re-appeal (and the right to appeal the unit’s decision before the Higher Board). Indeed, there is no provision in the Industrial Property Law that prevents appealing this second “corrected” decision.

On the other hand, the fact that the person against whom the decision was rendered and who did not appeal at the first stage is given another chance to appeal against the decision and this leads to the detriment of the procedural vested right of the person succeeded in the first decision. For example, one party’s failure to appeal to the expert report constitutes a procedural vested right in favor of the other party. Similarly, if the court gives a new deadline to the party who has not appealed to the expert report in due time, this will also damage the procedural vested right of the other party.

It should also be noted that it is possible to file a cancellation action against the decision of the Higher Board where it is determined that there is a procedural error or deficiency in the decision. Therefore, one of the parties may argue that there is no deficiency in the initial decision and request the annulment of the decision of the Higher Board, which sent the decision back due to the deficiency. This is also a matter of a separate debate as to whether, in the event where an application to the courts is filed requesting an annulment of the decision, this would prevent the first instance department from making a decision, or whether the two processes would continue in parallel.

In our opinion, under any circumstances whatsoever, in the event that a procedural deficiency that would affect the merits of the dispute is identified and a request for this procedural deficiency to be remedied, the Higher Board should examine this request to resolve the matter in a manner which leaves no question as to any procedural deficiency that would affect the merits of the dispute. However, as can be seen, the existence of unanswered questions remains to have an impact on the uncertainty in implementing the power to return decisions by the Higher Board, granted by Article 6 of the Regulation.

[1] The relevant Article 6 of the Regulation titled “Board Decisions” reads as follows “The Board may make a final decision on an objection that does not contain any formal deficiencies, or may decide to send the file to the unit that made the initial decision, stating the reasons, in case there is a procedural error or deficiency that prevents a sound and complete examination and evaluation on the merits or that seriously affects the final decision and the resolution of the dispute.”