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29 September 2014TrademarksÖzlem Fütman and Damla Duyan

Does 'fast' always mean 'good'?

Previously, in Turkey, when an opposition against a published trademark application was filed, it sometimes took between eight and ten months to receive a decision from the Turkish Patent Institute (TPI). This relatively long time scale was disturbing for clients as in many cases it was affecting their business plans for the Turkish market, especially if the opponent had been considering entering the market but they were afraid of facing legal action against them. Therefore, they wanted to know their position in opposition cases quickly and know if they could get rid of the ‘problem’.

Some while ago, the TPI speeded up the opposition process and started giving decisions in much shorter time periods, sometimes just a couple of months after the filing. At first sight this new situation might seem like an improvement, but is it really?

Is the new situation always advantageous for opponents? If the decision is in the opponent’s favour, the answer would be yes. But what if the opposition is refused?

Opposing forces

The opposition process in Turkey basically works as follows. An opposition indicating all the arguments and grounds is filed. The opposition might include relative grounds such as likelihood of confusion, prior use, dilution, etc, and/or absolute grounds such as well-known-ness of the opponent’s mark, identical/similar nature of the marks, etc.

After the filing, in most cases, the TPI informs the opposition to the applicant by giving it one month to submit responses and evidence, if any. Then the file is examined and a decision is granted. Any party that is not happy with the decision has the right to appeal within two months of the notification date.

"after waiting such a long time to get such a decision, and with no explanation as to why the grounds were not justified, this was not making clients happy."

The process explained above has not changed. What has changed is the time line for the examiners to give their decisions and the content of the decisions. Before, it was taking longer to get decisions and, even though you had, let’s say, five grounds for opposition you would get just a two-line decision saying “Your opposition has been examined and the grounds indicated are not justified; therefore the opposition is refused.”

Obviously, after waiting such a long time to get such a decision, and with no explanation as to why the grounds were not justified, this was not making clients happy.

The new situation

Now, examiners send their decisions in a much shorter time period, meaning the process has speeded up.

The decision reports are much longer. By stating the relevant articles of the Turkish Trademark Decree Law, the examiners indicate clearly which grounds are accepted or refused, such as “since the marks are not found confusingly similar, your arguments under Article 8/1-b are not justified”. However, still there is no real discussion in the decisions as to why and how the examiner came to that conclusion.

This looks like a positive development because now at least you know which of your grounds have not been accepted but, when delving deeper into the issue, we see the following problems:

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