Transfer Of Trademarks Under Turkish Law
Under Turkish law, the transfer of trademarks is basically the transfer of all or part of the goods or services in which the trademark is registered to another real person or legal entity. The competent authorities in charge in Turkey is Public Notary and Turkish Patent and Trademark Authority, respectively.
The transfer of the trademark is carried out by a contract to be executed by and between the parties taking over and transferring the trademark. This contract is defined as a trademark transfer contract. The trademark transfer contract must be in writing and a formal validity requirement must be complied with as laid down in Paragraph 4 Article 148 the Industrial Property Law published in the official gazette dated January 10, 2017 numbered 29944 (Industrial Property Law). In accordance with the relevant provision, the validity of the trademark transfer contracts only depends on the fact that they have been made in a manner approved by the public notary. The establishment of a trademark transfer contract is a saving transaction and the trademark is removed from the assets of the party transferring the trademark and transferred to the assets of the party taking over. The transfer of the trademark may not only be limited to the transfer of the completed or registered trademark. It may also include the trademark that has just been applied for and is still pending.
The trademark may be transferred for all or part of the goods or services for which it is registered. In Article 125 of the Regulation on the Implementation of the Industrial Property Law (Industrial Property Regulation) published in the official gazette dated April 24, 2017, numbered 30047, it is stated that in the case of partial transfer of the trademark, it will be mandatory to specify the transferred goods or services and class numbers in the transfer contract. In the continuing provisions of the Industrial Property Regulation, for the partially transferred goods and/or services, the Turkish Patent and Trademark Authority shall create a new trademark file on behalf of the partial transferee and shall issue a new Trademark Registration Certificate and Trademark Registration number containing the goods and/or services within the scope of the transfer.
Considerations During Trademark Transfer;
- Trademark to be transferred should be examined whether there is any foreclosure or pledge on.
- Invalidity status should be examined, whether there is another same or similar registered trademark.
- Trademark transfer contract should be prepared as a draft.
- Legal support must be obtained during the transfer process in notary public.
- The transfer process must be registered in the Turkish Patent and Trademark Authority registry on behalf of the transferee, the new owner.
Trademark transfer can be carried out in the form of all classes within the scope of protection of the trademark or in the form of some classes to be left out. If the trademark is registered in several classes, some classes may be excluded from the transfer process. In this case, both the transferor of the trademark and the transferee of the trademark can use the trademark in different classes of goods and services. However, if the goods and services produced in the transferred class and the goods and services in the remaining class are close enough to be mixed, the Turkish Patent and Trademark Authority rejects the transfer process.
It is not possible to transfer the trademark by limiting it to a certain region or city of the country. The trademark can only be transferred to the whole of Turkey. The owner of the trademark cannot transfer his trademark to different persons for different regions within the country. The point this rule regarding the transfer of the trademark is to be granted license rights. With usufruct and license the trademark can be used in different regions of the country.
The transfer of the trademark can be carried out in the form of sales, donations or swap which states contractual transfer. However, trademark transfer contracts are usually in the form of sales contracts. A certain transfer fee is determined in each sale contract. Party wills are considered in determining this price which shall be computable.
The person who is transferee of the trademark can take over the trademark alone or with a commercial enterprise. With the realization of commercial enterprise transfer, the trademark transfers to the assets of transferee if otherwise is not specified in the transfer of commercial enterprise process. As a result, there is no need for a separate written agreement in case of transfer of the enterprise, whereas, a written contract is required for the transfer of the trademark separately from the business.
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