Is Partial Victory a Real Victory? - July 2023
Upon reviewing two decisions rendered by the Ankara Regional Court of Appeal (“the RCA”) in 2021 and 2023 in independent cases (the cases will be referred as “the 1st case” and “the 2nd case”), it is concluded that if an argument is rejected during the opposition proceedings before the IP Office and no appeal is filed against the non-acceptance of this argument before the Higher Board of the IP Office (even though the decision is in favour of the opponent), the IP Court should not consider that argument for cancellation claim of the Office decision.
In both cases subject to the RCA’s decisions, the discussion is that an opposition against publication before the IP Office was partially accepted by the Trademarks Department (“the TD”) based on one of the arguments alleged and no further appeal was filed by the opponent against refusal of other arguments before the Higher Board of the IP Office. However, upon the applicant’s appeal, the Higher Board reversed TD’s decision. The opponent filed an action against the IP Office’s decision and requested (i) cancellation of the Office’s decision, (ii) invalidation of the contested trademark relying upon all the arguments. The developments were provided in the table below in both cases:
| 1st case | 2nd case |
Arguments | Likelihood of confusion Well-known status | Likelihood of confusion Well-known status Bad-faith |
Claims | Partial invalidation of the trademark Cancellation of the Office’s decision | Invalidation of the trademark Cancellation of the Office’s decision |
The IP Court’s decision | Accepted the case for both arguments for both claims | Accepted the case for well-known status and bad-faith grounds for both claims |
The RCA’s decision | IP Court’s decision was incorrect as no appeal was filed by the plaintiff/opponent before the IP Office against the non-acceptance of the well-known status argument by the TD, so the IP Court should have considered that argument only for invalidation claim instead of the cancellation claim of the IP Office’s decision. Date: November 17, 2021 | IP Court’s decision was incorrect as no appeal was filed by the plaintiff/opponent before the IP Office against the non-acceptance of the bad-faith argument by the TD, so the IP Court should have considered that argument only for invalidation claim instead of the cancellation claim of the IP Office’s decision. Date: April 25, 2023 |
It is understood from these two decisions that the RCA keeps its stands as the same for the question “whether an argument can still be raised for cancellation claim even though no appeal was filed against rejection of such argument during the administrative proceedings before the IP Office”. Since the answer is “No” from the RCA’s standpoint, it can be interpreted that the opponent will have to appeal anyway if one of its arguments has not been accepted in order to secure that it will be taken into consideration at the (probable/possible) Court action stage, even if the decision given by the IP Office is favourable (so the goods/services are removed). In other words, this assessment reveals that if one of the arguments has not been accepted, the opponent would have to appeal if the argument is crucial for possible cancellation claim or if the opponent aims to have total victory in a possible action.
Despite the RCA’s steady decisions, it worths to underline that the IP Office’s implementation is contradictory. If one of the opposing arguments is accepted, the IP Office rejects appeals filed before the Higher Board against rejection of other arguments due to lack of interest – since obviously the application is already rejected. In fact, even in cases where the opposition of a third party is accepted and the application is rejected upon this, the Higher Board stands that there is no need to review the appeal of an opponent – whose opposition was rejected – in its essences, since the application is already and ultimately rejected. So it is generally pointless to appeal a decision if the application has been rejected based on one of the arguments. In this context, if the point of view that an argument will not be taken into consideration at the trial since it was not brought before the Higher Board will take roots -which seems likely-, the IP Office would be expected to change its implementation. Indeed, in view of the current implementation, the opponent stays together between appealing the decision just for the refused arguments (even if the application is rejected) and facing the refusal of that argument in a possible court action against the Office decision.
If the RCA’s approach becomes steadier in the upcoming period, it is expected to create unnecessary appeals and court proceedings, which have an adverse impact on enforceability and consistency between administrative and court decisions while seriously increasing the workload in each step.
Despite such adverse impacts, every case should be examined in its own conditions. Indeed, the parties may abstain from having a negative valid administrative IP Office decision. Therefore, a strong strategy must be built to decide on the importance of entering into appeal/court proceedings for rejection of one (crucial) argument – even if the opposition was successful.
Tagged with: Gün + Partners, Güldeniz Doğan Alkan, Ayşenur Çıtak Bozdağ, Intellectual Property, Fikri Mülkiyet, Patent
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