Cancellation of Board Decisions in Turkey: Challenging TPTO’s Final Decisions
- May 13
- 4 min read
In the trademark, design, or patent registration processes conducted before the Turkish Patent and Trademark Office (“TPTO”), the final administrative stop for oppositions against the decisions of relevant departments (such as the Trademarks Department or Designs Department) is the Re-examination and Evaluation Board (“the Board”). Pursuant to the Industrial Property Code No. 6769 (“Code 6769”), these decisions rendered by the Board are the final administrative decisions of TPTO. Once a Board decision is issued, all administrative remedies within the TPTO are exhausted. The only remaining legal option for rights holders is judicial review, specifically, filing a lawsuit for the Cancellation of the Board Decision.
Nature and Scope of the Lawsuit
A lawsuit for the cancellation of a Board decision is essentially a judicial review of an administrative decision. Final decisions of refusal or registration (rejection of an opposition) regarding trademark, design, or patent applications under Code 6769 are brought before independent courts through this action. The primary objective is to retroactively nullify the decision performed by the Board that is alleged to be unlawful.
One of the most critical aspects of this process is the limitation period. Pursuant to Art. 15/C of Law No. 5000, a lawsuit for the cancellation of a Board decision must be filed within 2 months of the notification of the decision to the relevant party. After this period, the TPTO decision becomes final, and no further judicial recourse can be sought against that specific decision on the same grounds.
Competent and Authorized Court: Exclusive Jurisdiction of Ankara
Art. 156/2 of Code 6769 stipulates an exclusive jurisdiction rule: The Ankara Civil Courts for Intellectual and Industrial Property Rights have exclusive jurisdiction over all lawsuits filed against decisions taken by the TPTO. Accordingly, lawsuits for the cancellation of Board decisions must be initiated specifically in Ankara.
Parties to the Lawsuit and Standing
When determining the parties, it must be remembered that the lawsuit is filed against the final decision of TPTO. Therefore, the TPTO must be named as a defendant.
However, intellectual property disputes usually involve conflicting interests between two parties. If there is a third party whose registration rights are affected by the Board's decision (e.g., the party whose trademark application was refused) or whose interests are otherwise harmed, that party will be directly affected by the outcome of the lawsuit and must also be named as a defendant.
In such cases, it is a strategic necessity to file the cancellation lawsuit against both TPTO and the third party/parties whose interests are involved. In cases of absolute grounds for refusal or Board decisions that do not concern a third party, only TPTO is named as the defendant. During the proceedings, the court examines the Board's decision in light of the relevant articles of Code 6769, established precedents of the Court of Appeals (Yargıtay), and expert reports.
Principle of Binding Arguments from the Administrative Stage
The court reviews the Board's decision based on its legality, not its expediency. One of the most critical legal restrictions here is that the scope of the lawsuit is generally limited to the grounds raised during the opposition stage before TPTO. Whether it involves an opposition to a trademark publication, a design, or a patent, parties are considered bound by the arguments they submitted at the Board stage.
Since the cancellation lawsuit is a review of the legality of an administrative act based on existing evidence and oppositions, raising a ground for refusal for the first time before the court, which was never mentioned during the administrative process, is generally considered improper. For instance, if a party opposed a mark solely based on the "likelihood of confusion" (Art. 6/1 of Code 6769) during the administrative stage, they cannot introduce "prior rights" (Art. 6/3) or "bad faith" (Art. 6/9) as new grounds in the cancellation lawsuit. Such a move would violate the prohibition on expanding the scope of the case and the nature of administrative review. Therefore, the opposition strategy devised during the TPTO stage effectively sets the boundaries for a potential cancellation lawsuit.
Relationship Between Cancellation and Invalidation Lawsuits
A common question is whether failing to file a cancellation lawsuit against a Board decision prevents a subsequent Invalidation Lawsuit. While a cancellation lawsuit is a review of an administrative final decision, an Invalidation Lawsuit is an independent legal action aimed at terminating a registered right on its merits. Therefore, the fact that an opposition path was not exhausted before the TPTO, or that a cancellation lawsuit was not filed despite exhausting the opposition path, does not change the fact that a trademark or design may be unlawful. Consequently, rights holders may always (subject to statutory periods) request the invalidation of the relevant right from the court.
Conclusion
If the court finds the Board's decision to be unlawful upon examination, it decides to cancel the relevant administrative act. Once this judgment becomes final, the file is returned to the TPTO, and the TPTO is obliged to perform the necessary registration or refusal procedures in accordance with the court’s ruling.
Navigating this delicate process, which determines the future of your brand, design, or patent, requires a professional roadmap to prevent the loss of rights. You may contact us at info@goklulaw.com for strategic guidance.
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