Mediation was first practised in Turkey following publication of the Code on Mediation in Civil Disputes no. 6325 on June 22, 2012. Since January 10, 2017 when the IP Code No. 6769 entered into force, the Turkish Patent and Trademark Office (TurkPatent) has been authorised to invite parties to mediation in opposition cases.
In mediation during opposition cases the articles of the Code on Mediation in Civil Disputes no. 6325 are applied (our article published in the March/April issue of WIPR gives general information and mediation principles).
The mediation type which is practised for opposition cases is ‘discretionary’, ie, TurkPatent shall not force parties to apply to mediation and also parties are free to initiate, continue, or terminate it.
This process works as follows: TurkPatent’s examiner issues its decision about an opposition filed against an application. If the party who is not happy with this decision appeals it, the file is conveyed to TurkPatent’s Appeal Board.
The Appeal Board, before examining the file, notifies the other party of the appeal by granting this party one month to respond to this appeal. The Appeal Board, by the same notification, also invites the parties to mediation by granting them again one month to respond to this invitation.
“WE RECOMMEND THAT CLIENTS WHO WISH TO FIND AN AMICABLE SOLUTION BY THIS METHOD ENSURE THAT THEIR ATTORNEY AT LAW IS SPECIALISED IN IP.”
The trademark attorneys of the parties are strictly obliged to inform their clients of such notification, including TurkPatent’s invitation to mediation.
To start the mediation process, TurkPatent’s invitation must be accepted by both parties and that acceptance must be submitted in writing to TurkPatent.
If both parties accept TurkPatent’s invitation to mediation, the opposition case is suspended for three months. Upon joint will of the parties during this three months, suspension of the opposition case may be extended for three more months.
The parties can attend the meetings in person or through their attorneys at law. The attorneys at law must be appointed with power of attorney that clearly expresses authorisation for mediation.
As per the code, the trademark attorneys have no power to represent the parties in these meetings. Nevertheless, upon the parties’ consent, they can attend the sessions as experts.
In the mediation process, the parties can agree only upon the points which they can freely dispose on. For example, if the parties agree upon amendment of the trademark sample or addition of goods/services to the list, technically such agreement shall not be viable.
After the process
At the end of the mediation process, a protocol recording the result of the negotiations is signed by the mediator and the parties. Unless otherwise agreed, the mediation fee and costs are shared equally by the parties.
The trademark attorneys of the parties are strictly obliged to follow up the mediation process and submit the original or a notarised copy of the protocol within one month to TurkPatent.
If the parties have come to an agreement, the Appeal Board issues its decision in accordance with the parties’ agreement. Otherwise, the opposition case resumes.
Since the mediation period is not taken into account in respect of the final terms, the party which has not responded to the other party’s appeal by then can proceed in the remaining time.
In the case that one of the parties clearly or implicitly (ie, by remaining silent) refuses TurkPatent’s invitation to mediation, again, the opposition case resumes and the Appeal Board issues its decision in light of the existing arguments and evidence in the file.
For the proper execution of this process, we recommend that clients who wish to find an amicable solution by this method ensure that their attorney at law is specialised in IP, and that their trademark attorneys are competent to lead the meetings.
First published on WIPR’s website on 21 May 2019.