Parties are bound by arguments raised in opposition

The Trademarks Department Directorate of the Turkish Patent Institute (TPI) has reviewed the scope of the arguments that can be raised on appeal in opposition proceedings (Decision 2008-M-3394, July 2 2008).

 

Under the Turkish Trademark Law, the owner of an earlier registered trademark may file an opposition against an application for the registration of a trademark on the grounds that the trademark applied for is confusingly similar to the earlier trademark within three months of publication of the application in the Official Trademark Bulletin. If the opposition is dismissed by the Trademarks Department Directorate of the TPI, the trademark owner may appeal to the Re-examination and Evaluation Board of the TPI within a two-month period. The decision of the board is final and binding in the administrative proceedings, and may be challenged only by filing an action before the IP courts.

 

In a recent decision, the TPI has clarified that an argument raised in the appeal petition cannot be taken into consideration if it was not raised in the original opposition proceedings.

 

Such an approach was first taken by the courts in actions seeking the annulment of decisions of the TPI. Although such actions must be filed before the IP courts (which are civil courts), they are commonly considered to be a continuation of the administrative proceedings. In keeping with this approach, the Court of Appeal ruled that the parties in such actions are bound by the "arguments raised at the opposition and appeal stages before the TPI". Accordingly, the parties cannot raise new arguments on appeal before the court. It is now understood that the TPI has adopted this practice in opposition proceedings.

 

As a consequence, opponents are advised to: