Introduction
Mediation under Industrial Property Code
Comment


Introduction

The Patent and Trademark Office has been empowered to propose an alternative dispute resolution mechanism: mediation during the trademark opposition procedure under the new Industrial Property Code 6769, which entered into force on January 10 2017. The regulation issued to implement the Industrial Property Code provides details on how the mediation should be conducted.

Turkey also enacted the Mediation Act on Civil Disputes, which entered into force on June 23 2013. The New Industrial Property Code refers to this legislation in the regulation to implement the mediation procedure.

Mediation under Industrial Property Code

Under the Industrial Property Code, during an opposition examination, the Patent and Trademark Office may invite the parties to solve the dispute through mediation.

On receipt of a mediation invitation, the parties must inform the Patent and Trademark Office within one month from the date of notification whether they would like to avail of this option. If one party fails to respond within the granted period, the office will deem that the invitation has been refused and will therefore continue its evaluation of the opposition.

If the trademark applicant is represented by a trademark attorney, the attorney must report the mediation invitation to the applicant immediately.

If the parties agree on mediation, the Patent and Trademark Office will adjourn the opposition examination for three months. The office is entitled to grant an extension of up to three months on the parties' mutual request.

When the mediation process has been completed, the parties will inform the office with original or notarised minutes within one month from the date of completion of the mediation process.

Should the parties fail to settle or deliver the minutes within the specified time, the Patent and Trademark Office will continue the opposition evaluation by itself. In the case of settlement, the office will conclude the matter consistent with the parties' agreement. If the dispute is resolved through mediation and the court endorses the settlement agreement it will be deemed a court verdict and will have the same effect in execution. Further, the period of mediation will not be counted in the calculation of prescription period.

Comment

Mediation is a cost-effective and efficient procedure to solve industrial property disputes while preserving, and at times even enhancing, the relationship between the parties.(1) A 2016 survey showed that the mediation settlement ratio in industrial property disputes is 70%.(2)

As mediation is now available for trademark disputes before the Patent and Trademark Office, it is believed that this will provide a great opportunity for settling the complex and multiple oppositions between the same parties and therefore trigger successful coexistence agreements, given that settlement agreements may have the effect of a court verdict if they are endorsed by a court.

For further information on this topic please contact Okan Can or Sarper Sever at Deris IP Attorneys by telephone (+90 212 252 6122) or email ([email protected] or [email protected]). The Deris IP Attorneys website can be accessed at www.deris.com.tr.

Endnotes

(1) World Intellectual Property Organisation, 'What is Mediation?', available here.

(2) The Centre for Effective Dispute Resolution 'The Seventh Mediation Audit - A survey of commercial mediator attitudes and experience', available here.