How to File a Trademark Opposition: Deadline, Grounds and Process

What is a trademark opposition?

A trademark opposition is a request that a trademark application not be registered. In practice, the word "opposition" is used for two different situations:

• Opposition to publication: When someone else's trademark is published, you rely on your own right to ask that the application not be registered.
• Appeal against a refusal decision: When your own application is refused in whole or in part by the Turkish Patent and Trademark Office (TÜRKPATENT), referred to below as "the Office," you file a challenge against that decision.

The two procedures involve different parties, time limits and grounds. The table below summarizes the difference between them:

Who can file an opposition to publication?

The right to oppose generally belongs to the earlier rights holder. For example, a person or company that has previously registered or applied for an identical or similar trademark can oppose a newly published application. Authorized licensees, or those who hold the right to use the trademark, can also use this route within the scope of their authority. The person filing the opposition must submit documents and grounds showing their right.

How long is the opposition period?

The time limit for opposing a published trademark application is 2 months from the publication date. This period is generally not extended; an opposition filed after it has expired is, as a rule, not treated as an opposition to publication. For this reason, monitoring applications similar to your trademark (a watching service) is very important. Knowing the publication date of your own application, in turn, helps you plan the process in light of the possibility of an opposition.

What grounds can be raised for an opposition?

The grounds depend on the opponent's right and the nature of the application. The common ones are:

• Identity or similarity with an earlier trademark: The likelihood that consumers will confuse the marks for identical or similar goods and services.
• Taking advantage of the reputation of a well-known trademark: The possibility of unfairly benefiting from the reputation of a very well-known trademark, or of harming its distinctiveness.
• Bad faith: The allegation that the application was made to benefit from someone else's effort or to block a competitor.
• Filing by an agent or representative: An application made by the trademark owner's commercial representative without the owner's permission.
• Absolute grounds for refusal: Reasons such as the sign lacking distinctiveness or being descriptive or misleading can also be raised. For details, see our article on grounds for refusing a trademark application.

How is an opposition to publication prepared?

1. Examine the application: The image, classes and list of goods and services of the opposed trademark are compared in detail.
2. Document your right: The registration certificate or application record, evidence of use and, if available, documents showing well-known status are gathered.
3. Prepare a comparison table: Visual, phonetic and conceptual similarity, as well as the similarity of the goods and services, are explained with concrete examples.
4. Write a reasoned petition: State clearly on what ground you are opposing and for which goods and services you are opposing.
5. File within the time limit: The petition and the required fee are submitted to the Office before the 2-month period expires. Confirm the current opposition fee in the TÜRKPATENT fee schedule.

Weak and undocumented oppositions may fail. For this reason, the grounds should be concrete and the documents should be presented in an orderly way.

How does the process work after an opposition?

When an opposition is filed, the applicant is notified. After this stage, the following steps typically follow:

1. Defense: The applicant responds to the opposition in writing and explains why their trademark will not be confused with the earlier one.
2. Request for proof of use: If a certain period has passed since the earlier trademark was registered, the applicant may ask the opponent to prove that it has actually used its trademark. This requires the opponent to submit evidence of use.
3. Settlement: The parties may reach an agreement to narrow the application, change the trademark, withdraw the opposition or enter into a coexistence arrangement.
4. Decision by the Office: The Office accepts the opposition, partially accepts it, or rejects it.
5. Remedies against the decision: A party dissatisfied with the decision may use the routes provided for in the legislation.

How do you respond to an opposition?

If your trademark has been opposed, you need a calm and orderly response strategy. In your response you can: set out the visual, phonetic and conceptual differences between the trademarks; show that the goods and services are genuinely different; narrow the list if necessary; request proof of use if you have information that the earlier trademark is not being used; and start settlement talks if a commercial solution is possible. Not missing the deadline is the most important point.

What are the settlement options?

Not every opposition has to go all the way to a decision by the Office. A commercially reasonable solution can noticeably reduce time and cost. The main forms of settlement seen in practice are:

• Narrowing the list: The applicant removes the conflicting goods and services from the list.
• Coexistence arrangement: The parties agree in writing on how the trademarks will be used in different fields or forms.
• Changing the trademark: The applicant proceeds with a new sign.
• Assignment or license: The trademark is consolidated under one party's name, or permission to use is granted. For these transactions, you can look at our trademark assignment and licensing service.

Having the settlement in writing and clearly worded prevents different interpretations later on.

How do you appeal a refusal decision?

When your own application is refused by the Office, you need to examine the grounds of the decision in detail. If there is an absolute ground for refusal, the options may include documents showing that distinctiveness has been acquired, narrowing the list, or arguing that the sign has been differentiated in another respect. Time limits start from the date of notification, and when they are missed, some routes close. The safest approach is to calculate the deadline on the day you receive the notification and to assess the file immediately.

What happens if you miss the opposition deadline?

If the time limit for opposing after publication has passed and the application has been registered, different legal routes come into play. The legislation provides routes that, under certain conditions, allow a request for invalidation or cancellation of a registered trademark. These require more detailed evidence preparation than the opposition process, as well as different time limits and procedural rules. For cancellation for non-use, see our article on trademark renewal and cancellation for non-use. In every case, the easiest and most economical solution is not to miss the publication period.

How do you monitor similar applications?

Because the publication period is short, you need to monitor applications similar to your trademark regularly. Monitoring can be done for your trademark's name, spelling variations, phonetic look-alikes and the relevant classes. That way, when a similar application is published, you learn about it at the start of the 2-month period and gain time to assess the grounds, the documents and the commercial importance. Monitoring is useful not only for oppositions but also for seeing where your trademark stands in the market.

Common mistakes in oppositions

• Missing the two-month deadline or miscounting the publication date,
• Leaving the grounds as general statements without making a concrete comparison,
• Submitting incomplete documents showing the right,
• Opposing every similar application and losing cost and time, without regard to commercial importance,
• Ruling out the possibility of a settlement from the start.

Note: The outcome of an opposition cannot be guaranteed in advance for anyone. The result depends on the similarity of the trademarks, the relationship between the goods and services, the documents submitted and the Office's assessment.

Conclusion

A trademark opposition is a critical process, both for protecting your own trademark and for managing an opposition filed against your application. In an opposition to publication, the 2-month period is firm; the quality of the grounds and the documents directly affects the result. If you would like process-management support for preparing an opposition, responding to an opposition, or cancellation proceedings for your trademark, you can look at our trademark opposition and cancellation service or reach us through the quote form.