Actions brought against decisions rendered by the Re-Examination and Evaluation Board (“Higher Board”) concerning trademark applications constitute an important part of Turkish trademark law practice. In practice, particularly in actions brought following the refusal of an opposition filed by the owner of an earlier trademark, it is common for plaintiffs to seek not only the cancellation of the Higher Board decision but also the invalidation of the trademark at issue if it is registered during the proceedings. The underlying reason is that the cancellation of a Higher Board decision, in itself, does not result in the removal from the register of a trademark that has already been registered.
The fundamental issue in such proceedings is that the cancellation of a Higher Board decision and the invalidation of a trademark are legally distinct claims. While an action for the cancellation of a Higher Board decision concerns the judicial review of the legality of an administrative act issued by the Turkish Patent and Trademark Office (“TÜRKPATENT”), an invalidation claim concerns the validity of a registered trademark. The statutory grounds, subject matter, defendants, and courts having jurisdiction over these two types of actions differ from one another.
These differences give rise to certain distinctive practices where the two claims are brought together in the same proceedings. In assessing the legality of a Higher Board decision, the claims and evidence submitted before TÜRKPATENT are, as a rule, taken into consideration. By contrast, with respect to the invalidation claim, new arguments and evidence may also be submitted and considered for the first time during the judicial proceedings. Similarly, the non-use defense may be raised separately during the proceedings in relation to the invalidation claim. Although these two claims differ in terms of the scope of judicial review, they are examined within the same proceedings in practice, and if the trademark is registered during the course of the proceedings, the court may rule on its invalidation.
Another uncertainty concerns the legal nature of the joinder of parties between TÜRKPATENT and the proprietor or opponent concerned. According to the case law, both the person who will be affected by the Higher Board decision and TÜRKPATENT should be named as defendants. However, there is no clear statutory basis for characterizing this relationship as mandatory joinder of parties. This uncertainty gives rise to a number of procedural issues, including attorney’s fees, settlement, waiver, jurisdiction, and the requirements for bringing an action.
To address these uncertainties and inconsistencies, clear statutory provisions should be introduced into the Industrial Property Law. In particular, the law should expressly regulate that, together with an action for the cancellation of a Higher Board decision, the invalidation of a trademark that has not yet been registered may be sought in the event that it is subsequently registered; which courts have jurisdiction over such claims; and whether TÜRKPATENT has standing as a party in respect of the invalidation claim.
Although the relationship between the cancellation of a Higher Board decision and trademark invalidation has largely been shaped by case law in the current system, the distinction between the legal nature of these claims should be preserved while establishing a clear procedural framework that allows them to be resolved effectively within the same dispute. Such a framework would contribute both to procedural economy and to a more predictable practice for the parties and the courts.
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