Non-use defense within the framework of oppositions filed against the
Turkish designations of IRs has been among the controversial issues in the Turkish
IP world since the enactment of the Industrial Property Law. No. 6769 (“Law”)
As detailed in our article of 4 November 2019, the practice of the TPTO so far has been to evaluate non-use defense raised by applicants of both national and IRs only during the response term within the opposition stage. The non-use defense that is not raised within this term has been deemed not filed.
This practice of the TPTO was criticised since holders of national applications enjoyed this opportunity, as they were notified by the TPTO and were asked to submit their response to an opposition, whereas the holders of the Turkish designations of IRs faced a risk to miss this opportunity, since they did not receive a similar notice from the TPTO.
Recently on 23 December 2019, the Board of Re-Examination and Re-Evaluation ("Board") has cancelled a decision of the Trademarks Department (“TD”), which had accepted an opposition against an IR application without notifying its holder or WIPO. In its decision, the Board transferred the file back to the TD for re-evaluation of the opposition in the light of the proof of use request – filed during the appeal – and for issuance of a new decision.
This is a pioneering decision that indicates a change of practice of the TPTO in connection with opposition proceedings filed against the Turkish designations of IRs.
Last but not least, another important change has taken place in the practice of the TPTO. This very recent practice change is that the TPTO has started to notify WIPO of the oppositions filed against Turkish designations of IRs, which would enable applicants to not only submit response against opposition arguments, but also raise a non-use defense at the opposition stage, if applicable.
These long-awaited changes in the practice of the TPTO are expected to prevent loss of righs in favour of the holders of Turkish designations of IRs in connection with the opposition proceedings in Turkey.
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