Challenging a Board Decision in Court: The Final Avenue of Appeal

Your trademark application was refused, you appealed the decision, and your appeal was refused too. At this point, the internal remedies within the Office are exhausted. But the process does not end there: a judicial route remains open against the decision of the Re-examination and Evaluation Board (the Board). In this article we look at how this final stage works, which deadlines apply, and which questions you need to answer before filing suit.

What Is the Board, and Where Does It Sit in the Process?

In the Turkish trademark system, an application passes through several decision points. It first undergoes examination by a specialist; an application found acceptable is then published in the bulletin and opened to opposition. Decisions made at these stages — whether a refusal, or the acceptance or rejection of an opposition — can be appealed within the Office. The body that reviews these appeals is the Board.

The Board is the Office's final decision-making body. Once it rules, the administrative process is closed — there is no further authority within the Office you can apply to.

Which Decisions Can Be Challenged in Court?

A Board decision can concern different situations, and the party filing suit changes accordingly:

• Your application was refused and your appeal was also refused: As the applicant, you file suit.
• You filed an opposition, it was refused, and the other party's mark proceeds to registration: As the opposing party, you file suit.
• You were opposed, the opposition was upheld, and your application was rejected: Again, you file suit.
• A partial refusal was issued: Suit can be filed for the refused portion.

In short, any party adversely affected by a Board decision has the right to bring an action.

The Two-Month Deadline: The Most Critical Detail

An action against a Board decision must be filed within two months of notification of the decision. This is a strict statutory deadline — it cannot be extended, and holidays or workload are not accepted as an excuse. Once it expires, the decision becomes final and the matter is closed.

That is why three tasks need to start the moment the decision is notified: reading the reasoning of the decision in detail, reviewing the state of the evidence in the file, and quickly deciding whether to file suit. Where notification goes to a representative, any delay in informing the trademark owner can eat into the deadline — which is why a disciplined system for tracking correspondence from the Office matters. We covered this tracking mechanism in our article EPATS Guide.

The Competent Court

The action is heard before the civil courts for intellectual and industrial property rights. Where no such court exists locally, the civil court of general jurisdiction designated to handle these matters has authority. In practice, actions against TÜRKPATENT decisions are concentrated in the Ankara courts, since that is where the defendant Office is headquartered.

This has a practical consequence for choosing who will run the case: keep in mind that the file requires both trademark-law expertise and experience appearing before these particular courts.

The Parties to the Action

The action is filed against TÜRKPATENT, since what is being challenged is the Office's administrative decision. If the decision was issued on the opposition of a third party, however, that party must also be joined to the case. Otherwise the case proceeds without the party who genuinely has an interest in the outcome, creating a procedural problem.

This detail is one of the most frequently overlooked technical points in these cases. Failing to join the opposing party can result in the case being dismissed before it is even examined on the merits.

What Gets Argued in Court?

The court reviews whether the Board's decision was lawful. The typical issues argued include:

• Distinctiveness assessment: Does the mark genuinely lack distinctiveness, or did the Office set the bar too high?
• Likelihood of confusion: Was the similarity between the signs and the goods/services correctly assessed? We covered the criteria in our article on Likelihood of Confusion.
• Proof of use: Is the opposing party genuinely using its mark, and is the evidence submitted sufficient?
• Prior rights: Was the priority of unregistered use correctly assessed?
• Bad faith: Where bad faith is alleged in the other party's application, is the evidence sufficient?
• Well-known status: Was the mark's reputation properly taken into account?

An expert examination is usually carried out during the proceedings, and the expert report carries significant weight in determining the outcome. This is why any objections raised against that report need to be technical and detailed.

Can New Evidence Be Submitted?

This is the most critical question in litigation strategy. Submitting for the first time, at the court stage, evidence you did not present during the administrative phase is not always given the same weight. In matters bound to a specific procedure, such as proof of use in particular, whether evidence not submitted at the administrative stage can be taken into account later is a genuinely contested question.

The practical consequence is clear: build a strong evidence file from the very start. The "we'll just submit it in court" approach is, more often than not, an irreversible mistake. For preparation at the appeal stage, see our article Appealing a Refusal Decision.

Possible Outcomes

Having the decision annulled does not mean your mark is automatically registered. The file returns to the Office, and the process continues from where it left off, in line with the court's ruling. That is why the overall timeline can still stretch out even if you win the case.

Alternatives to Consider Before Filing Suit

Litigation carries time, cost and uncertainty. Before deciding, the following options are worth putting on the table:

• Differentiate the mark and file a new application: Adding a distinctive element and reapplying is, in most cases, faster and cheaper than litigation.
• Narrow the scope and reapply: Removing the overlapping classes to secure the remaining scope.
• Obtain a letter of consent: Reaching an agreement with the owner of the blocking mark. See Trademark Registration with a Letter of Consent.
• Have the blocking mark revoked: Filing a revocation request if the opposing mark has been unused for five years. See Trademark Use Requirement.
• Acquire the mark: In some cases, buying out the blocking mark is the cleanest solution.

In most cases, the right approach is to run one of these alternatives in parallel with the lawsuit. Securing your commercial activity through a new application while the case proceeds means your business is not left unprotected even if the process drags on.

How Long Does It Take, and What Does It Cost?

The length of proceedings varies with the complexity of the file, the scope of the expert examination, and the court's workload. In trademark cases, it is common for first-instance proceedings alone to take more than a year; once appeals come into play, the process can stretch to several years.

On the cost side, the items involved include court fees, expert witness fees, service and inspection costs, and legal fees. You should also factor in that if you lose, you may be ordered to pay the other side's legal costs as well.

This means the decision to litigate should not be made on the question "am I right?" alone, but together with the question "are this timeline and this cost reasonable for this particular mark?"

Can You Keep Using the Mark While the Case Is Ongoing?

This is one of the most frequently asked practical questions. A refusal decision means you cannot register the mark — it does not directly prohibit you from using it. Unregistered use, however, carries the risk that the owner of the blocking mark takes action against you.

While the case is pending, you therefore have three options: continue using the mark and accept the risk, temporarily change your use, or operate under an alternative mark while the litigation runs in parallel. The third option is the safest route for most businesses, since it does not interrupt commercial activity.

Is It Worth Filing Suit? Decision Criteria

1. The mark's strategic value: Is this name your business's identity, or an interchangeable sub-product name?
2. The basis of the decision: Does it stem from a difference of interpretation, or is there a clear legal obstacle? Your chances are higher where it comes down to interpretation.
3. State of the evidence: Can you document your use and your priority?
4. Time tolerance: Will you be able to keep using the mark throughout the proceedings?
5. Cost-benefit: Is the cost of litigation higher or lower than the cost of building a new brand?

Manage the Whole Process with Webx

For most trademark owners, the Board's decision is the most critical turning point in the process. Making the right call requires an honest assessment of the file's real strength — both legally and commercially.

At Webx, we review refusal and opposition files, give you a realistic assessment of your chances in court, and plan alternative strategies together with you. Explore our legal protection service or get a free assessment of your decision.