“ On the way to success in opposition proceedings...”
Just as in other legal disputes, INVOKAT takes active role in oppositions of patents, trademarks and designs. Our firm can assume representation before the Turkish PTO, EPO and other relevant authorities. Running a successful procedure in oppositions is important for the sake of eliminating costly, lengthy and complicated procedures of litigations. A successful opposition also elimanates potential damages that may be caused by the competitors.
Challenging Patentability of Turkish Patent Applications:
The present legislation in Turkey does not allow a post-grant opposition to the granted patents. The only way to challenge validity of a patent available for the third parties is filing an invalidity action before the competent courts. However, it is possible to serve third party observations at certain points of the application procedure. In other points of the procedure, third party observations have no effect at all, and therefore timing has the particular importance for challenging a patent application. The first time point is that, observations can be filed within six months after publication of the search report in the official bulletin. This would have no substantial effect if the observations are not filed in two languages (i.e. Turkish and the language of the competent Examination Authority), in case the examination authority is a foreign patent office, simply because the foreign Examination Authority should be able to interpret the observations. Observations may be considered by the applicant and can be regarded as a warning pushing the said applicant to restrict the claims’ scope or even withdraw the application depending on pertinence of the cited prior art. However, the applicant has also the chance to ignore the observations and request an unexamined patent. This request is published in the official bulletin giving a chance to third parties to request examination of the application, and along with this request, file their observations As noted, examination request is made by the third parties and therefore the relevant fees must be paid by this party.It should be borne in mind that there is no other chance to file observations in subsequent stages, such as in the examination procedure.
Opposition Against a European Patent:
We represent our clients before the EPO Opposition Divisions and Boards of Appeal both in written proceedings and oral proceedings.
opposition against a European patent may be filed within 9 months after publication of the mention of the grant in the European Patent Bulletin (Art. 99-EPC). Outcome of these proceedings is binding over states where the European patent has taken effect. Thus, it is sometimes more attractive to initiate opposition proceedings before the EPO rather than initiating a nullity action in national level. Grounds for revocation before the EPO are somewhat more limited as compared to the national legislation.
These can be summarized as;
- Art. 100(a) EPC: Subject matter of the European patent is not patentable (Art. 52-57 EPC),
- Art. 100(b) EPC: The European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art,
- Art. 100(c) EPC: The subject-matter of the European patent extends beyond the content of the application as filed.
Decisions of the EPO Opposition Divisions can be appealed (EPC-Art. 106). At the end of the proceedings, the Boards of Appeal may submit the case back to the opposition division for further deliberations or may assume responsibility of the first instance and conclude with grant of the patent in amended/unamended form or revocation of the patent in its entirety. The national courts in Turkey may consider the parallel opposition proceedings before the EPO as a reason to suspend the court proceedings in national level. The courts consider some basic parameters on the basis of the case such as if the parties are the same in the legal dispute at national level and before the EPO, and if the expected decision would take longer than the proceedings in national level. Sometimes it may happen that EPO opposition proceedings take about 4-5 years along with the appeal proceedings which brings the judges to the conclusion that proceedings in national level may be finalized earlier than the EPO, and in this case, proceedings regarding nullity are not suspended. Controversially, if the EPO proceedings could be expected to end up with a decision in near future, proceedings are suspended for the sake of procedural economy.
Opposition to a Trademark in Turkey:
Trademark applications are published in the official bulletin of the Turkish PTO once the formal requirements are met and the Turkish PTO does not raise objections after an examination “Absolute Grounds for Refusal” according to Art. 7, DL 556.
Third parties may file an opposition against a trademark application within 3 months after publication, on the basis of the following grounds;
- Inappropriate signs used in the trademark,
- trademarks identical or confusingly similar with a trademark registered earlier or with an earlier date of application for registration in respect of an identical or same type of product or services,
- trademarks which consist exclusively of signs or indications which serve in trade to indicate the kind, characteristics, quality, intended purpose, value, geographical origin, or designate the time of production of the goods or of rendering of the service or other characteristics of goods or services,
- trademarks which consist exclusively of signs and names used to distinguish specific groups of craftsmen, professionals or tradesmen or have become customary in the current and established practices of the trade,
- signs containing the shape of the product which results from the nature of the good, which is necessary to obtain a technical result or which gives substantial value to the good,
- trademarks which are of such a nature as to deceive the public, such as to the nature, quality, place of production or geographical origin of the goods and services,
- trademarks which have not been authorised by the competent authorises and are to be refused pursuant to Article 6ter of the Paris Convention,
- trademarks containing badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention which have not been authorised by the competent authorises and are of particular historical and cultural public interest,
- trademarks which have not been authorised by their owners, well known marks according to 6bis of the Paris Convention,
- trademarks which contain religious symbols,
- trademarks which are contrary to public policy and to accepted principles of morality.
- if the trademark applied for this identical with a registered trademark or a trademark which has an earlier application date and the protection is sought for the identical goods and services,
- if because of its identity with or similarity to a trademark which has an earlier application date or a registered trademark and because of the identity or similarity of the goods and services covered by the trademarks there exists a likelihood of confusion on the part of the public and the likelihood of confusion includes the likelihood of association with the registered trademark or with the trademark which has an earlier application date,
- where in the case of a registered trademark or of a trademark which has an earlier date of application for registration the trademark has a reputation and where the use without due cause of trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark or of the trademark with an earlier application date, upon opposition by the proprietor of the earlier trademark, the trademark applied for shall not be registered even to be used for goods and services which are not similar to those for which the earlier trademark is registered,
- if the trademark applied for contains the name, photograph, copyright, or any industrial property rights of the third parties,
- the trademark which is identical or similar to a collective or a guarantee mark shall not be registered within three years from the date of expiry of the collective or of the guarantee mark,
- Trademark applied for which is identical or similar and which is to be registered for the identical or similar goods and services of a trademark which has not been renewed, upon opposition shall not be registered within two years of the expiry date.
Opposition to an Industrial Design in Turkey:
Once the formal requirements are met, designs are published in the official bulletin of the Turkish PTO along with a decision to grant.
Third parties may oppose to a published design within 6 months once the publication takes effect. Grounds for an opposition may include;
- The design is not novel,
- It does not involve an individual character according to the view of an informed user,
- Entitlement to the rights conferred by the design.
In an opposition, particular care should be spent to provide sworn translation of the evidences if they are in a language other than Turkish. Among the evidences, relevant pages of books, brochures and catalogs can be provided as long as noterization is made in such a way that the relevant pages actually belong to the corresponding document. Additionally, payment of the opposition fee and serving a Power of Attorney are the crucial requirements.