What is the term of protection for a registered Turkish design and how many times can a registered design be renewed?
A registered Turkish design is valid for five years. It can be renewed for a maximum of 25 years, for five years at a time.
When are renewal fees for a design registration due for payment?
Until January 09, 2018, renewal fee for a registered design falls due every 5 years, up to 25 years, on the last day of the month containing the anniversary of the date of filing and is payable up to 6 months before the renewal due date.
From January 10, 2018 on, renewal fee for a registered design falls due every 5 years, up to 25 years, falls due every ten years on the anniversary day of the date of filing and is payable up to 6 months before the renewal due date.
Is there a grace period for payment of renewal fees?
Yes, if payment of renewal fees are not made in due time, they may still be validly paid within 6 months of the due date, provided that a surcharge (typically 50% of the renewal fee) is paid.
Is it possible to partially renew a design registration?
Yes, a design registration can be partially renewed for some of the designs only.
How are renewal fees calculated?
If a registered design covers only one design, there is one base fee for the renewal. If design registration covers multiple designs, renewal fees are required for each design.
In the case of multiple design registrations, structure of renewal fees are layered, namely a base fee of relatively high amount is required for the first design and further fees of substantively decreased amount are required for subsequent each design.
Does number of views affect the amount of renewal fees?
No, number of views has no effect on the amount of the renewal fees.
Is there any possibility for restoring the rights in case of failure to renew a design registration in the prescribed time limits?
No, if renewal fee for a design registration is not paid in due time and within six-month grace period following the due date, the design rights will be irrevocably terminated.
Is it possible for the entities whose place of business is abroad to request for renewal of a design registration directly, without using a design agent?
No, renewal of a design registration should be paid by a Turkish Patent and Trademark Agent.
Is Power of Attorney required for renewing a design registration?
If a design registration will be renewed for all the registered designs, Power of Attorney (PoA) is not required for renewal. If a design registration will be partially renewed for some of the designs only, a Power of Attorney (PoA) clearly authorizing the Attorney for partial renewal is required.
Where a design registration is renewed by a patent or trademark agent other than Patent or Trademark agent in the design registry, is the patent or trademark agent requesting the renewal is recorded as agent for service?
Not actually unless otherwise requested specifically, i.e. Patent or Trademark Agent in the design registry still remains as agent for service even if renewal is made by another Patent or Trademark Agent.
Upon payment of renewal fee, does TURKPATENT issue any official communication or certificate confirming renewal of design registration?
Yes, TURKPATENT electronically issue a renewal certificate. No printed certificate is provided.
When is renewal certificate expected to be issued and sent by TURKPATENT ?
Renewal certificate is typically issued and sent by TURKPATENT within one month following the request for renewal.
When a design registration is deemed to be renewed duly?
Upon payment of renewal fee, formalities officer examine request for renewal and record renewal request if there is not found any deficiency in respect of the request for renewal.
Is simply payment of renewal fee sufficient for renewing a design registration?
No, request for renewal should be submitted within the prescribed time limits; otherwise, registered design is deemed not to have been renewed in due course and loss of rights occurs.
When will be renewal be effective?
Renewal will be effective from the day following the date on which the previous protection period ends.
Is renewal published in the Design Bulletin?
Yes, the renewal is published in the Turkish Design Bulletin.
Which documents and/or information are required for renewing a design registration?
If a design registration will be renewed for all the designs, a request form for renewal and information regarding the payment of the renewal fee is sufficient for performing the renewal. If a design registration will be partially renewed for some of the designs only, a request form for renewal including numbers of designs for which renewal are requested, information regarding the payment of the renewal fee, a Power of Attorney clearly covering the authorization of the Patent and Trademark Agent for partial renewal should be submitted.
Does the entity status decrease official fee?
No, legal and real entities should pay the same amount of official fees. Furthermore, any reduction is not allowed in terms of the size of a legal entity.
Where can we reach the schedule of the official fees for designs?
TURKPATENT shows the schedule of official fees in its official website www.turkpatent.gov.tr. Please click here to see the official fees.
ASSIGNMENTS
Is there any requirement for disclosing or declaring a consideration in Assignment Agreements?
No, declaration or disclosure of consideration is not necessary in order to validly assign the rights.
Can an assignment be done unilaterally?
No, assignment should be done mutually and the express acceptance of the assignee is required for a valid assignment of the rights. In other words, both Assignee and Assignor should sign Assignment Agreement and their signatures should be notarized and legalized by Apostille.
Is there any requirement for legalization or notarization for recording an assignment?
Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If Apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.
If there are more than one design owner, is there any requirement for co-owner consent if only one of the co-owners will assign its rights? If yes, how is it processed?
As a rule, each co-owner has the right over their design rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over the design rights.
In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or assignee should notify the non-assigning co-owner(s) of the assignment of the rights. Pre-emption right ceases within 3 months from the notification of assignment or within 2 years in any case from the assignment date of the rights. If parties cannot agree, pre-emption right can be used only by filing court action against assignee.
Is it necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights)?
No, it is not obligatory or necessary for the remaining co-owner to be a party to and sign the Assignment (to consent & to waive any rights). TURKPATENT does not investigate the consent of the remaining co-owner(s) when assignment is requested for recordal at the design registry.
Is recordal of an assignment obligatory? If not, are there any negative consequences where the assignment is not recorded duly in the registry?
Recordal of an assignment is not obligatory. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the design registry. In other words, it is not possible to put forward the rights on the design against third parties acting in good faith unless and until they are duly entered in the design registry.
Is a confirmatory/declaratory assignment sufficient to record an assignment in the registry?
Yes, confirmatory/declaratory assignment sufficient to record an assignment in the registry
Is the original of Assignment Agreement required?
No actually, a copy of the Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.
Is the translation of Assignment Agreement required to record an assignment in the design registry?
Yes, a Turkish translation approved by a sworn translator is required for recording assignment.
Is it possible to record an Assignment Agreement comprising multiple design cases by one request for assignment at TURKPATENT ?
Assignments should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at TURKPATENT .
Is Power of Attorney required for recording an assignment in the registry?
Power of Attorney is not required for recording an assignment.
Is there any deadline to record an assignment?
There is no deadline and requirement to record the assignment of the rights in the design registry to keep the design in force. The design remains effective independently from the assignment.
Are official fees payable in order to record a design Assignment?
Yes, official fees are payable for recordal of an assignment. If there are more than one design within Assignment, official fees should be paid for each case separately.
Are two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recordal of the assignment?
Yes, two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recording Assignment.
Is a worldwide Deed of Assignment acceptable?
Yes, it is acceptable provided that Assignment refers to Turkish design application or registration numbers therewithin.
Is Change of Ownership due to Assignment published?
Yes, change of ownership due to Assignment is published in Turkish Design Bulletin.
Can a pending design application be assigned?
Yes, a pending design application can be assigned; there is no requirement for grant or registration of application for assignment.
If a change of ownership takes place due to mergers, demergers, capital investments or transfer of businesses, how assignment of design should be handled and by which documents?
In such case, Assignment Agreement is not required. Instead, an official document duly approved by a governmental or judicial authority of the country, ie. courts, chamber of commerce or industry, finance or tax authority etc., should be submitted. There is no further requirement for notarization or legalization of these kinds of documents. Furthermore, a translation of the document approved by a sworn translator should be provided if the document is not in Turkish.
If a design application or registration seized, is it still possible to assign the rights thereon?
Seizure is not an obstacle to assign the rights of a design.
If design application or registration pledged, is it still possible to assign the rights thereon?
Pledge is not an obstacle to assign the rights of a design.
Is there any statutory requirement for the scope or content of an Assignment Agreement?
There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by Assignee will be sufficient. Furthermore, design application or registration number or numbers subject to Assignment should be listed in Assignment Agreement for validity.
Can a registered or applied-for design be assigned partially?
Yes, a registered or applied-for design can be partially assigned for some of goods or services.
In case of a partial assignment, is there any specific requirement for Assignment Agreement?
Yes, it is obligatory to indicate desing numbers in order as they appear subject to the transfer in Assignment Agreement. Otherwise, recordal of assignment will not be allowed.
In the case of a partial assignment, how does TURKPATENT handle the recordal of the assigned part of design registration or application?
TURKPATENT assign a new application and registration number, open a new registry and issue a new design certificate for the assigned part of the design registration or application. It is not required to pay registration fee for issuing design certificate.
If a design was applied for or registered in Turkey through Hague Agreement, how the assignment is handled?
Designs applied for or registered under Madrid Protocol should be assigned before International Bureau of WIPO by use of DM/2 Form. TURKPATENT does not accept requests for recordal of assignment regarding designs applied for or registered under Hague Agreement if they are not filed by means of International Bureau of WIPO.
LICENSES
Which types of licenses are available for recording?
There are two types of license, exclusive and non-exclusive. A license is not exclusive if it is not agreed so in License Agreement. In the case of non-exclusive License Agreements, licensor can use design too and Licensor can grant sub-licenses for the same design. In the case of exclusive License Agreements, licensor cannot grant further licences to third parties, and cannot use design unless it reserves its rights obviously.
Can licensees assign their license rights to third parties?
No, licensees cannot assign their license rights to third parties unless any clause is available for right to assign in License Agreement.
What is the scope of rights for licensee in using licensed design?
Licensee can take any action, unless otherwise agreed, in respect of the use of design during the term of design registration. If licensee does not act in compliance with the terms and conditions of License Agreement, licensor can put forward its rights of design against licensee.
Should a design application have been granted for granting and recording license?
No, license can be granted and recorded for a pending design application.
Is there any requirement for disclosing or declaring consideration in License Agreement?
There is no requirement to disclose or declare consideration in order to validly license the rights.
Should term of license be indicated in License Agreement for recording a license?
Yes, term of license should be clearly indicated in License Agreement. Otherwise, it will not be possible to record license in the registry.
Can license be granted unilaterally?
No, license should be done mutually and the express acceptance and declaration of the Licensee is required. In other words, both licensee and licensor should simply sign License Agreement.
Is there any requirement for legalization or notarization for recording license?
There is no requirement for notarization or legalization of a License Agreement. Simple signatures of licensor and licensee on License Agreement are sufficient to record license in the design registry.
Is it possible to partially grant a license for only some of goods and/or services?
Yes, license can be granted for only some of goods and/or services
Is the recordal of license obligatory? If not, is there any negative consequences where license is not recorded duly in the design registry?
Recordal of license is not obligatory. Licenses can only have effect against third parties, who are acting in good faith, as from the date of their entry in the design register. In other words, it is not possible to put forward the rights on design against third parties acting in good faith unless and until they are duly entered in the design register.
Is the original of License Agreement required?
Not actually, a copy of the License Agreement is sufficient provided that Patent or Trademark Attorney declares that the copy is same as the original.
Is the translation of License Agreement required to record a License in the registry?
Yes, a Turkish translation approved by a sworn translator is required for recording License.
Is it possible to record License Agreement comprising multiple design cases by one license request at TURKPATENT ?
License should be individually handled for each case (case by case).
Is Power of Attorney required for recording license in the design registry?
Power of Attorney is not required for recording a license.
Is there any deadline to record license?
There is no deadline and requirement to record License Agreement in the design registry.
Are official fees payable in order to record design license?
Yes, official fees are payable for recordal of license. If there are more than one design within License Agreement, official fees should be paid for each case separately.
Is two separate license documents of the same content signed and legalized in two different countries are acceptable for recordal of license?
Yes, two separate license documents of the same content signed and legalized in two different countries are acceptable for recording license.
Is a worldwide License Agreement is acceptable?
Yes, it is acceptable provided that license refers to Turkish design application or registration number(s) therewithin.
Is recordal of license published?
Yes, license is published in Turkish Design Bulletin.
Can a pending design application be licensed?
Yes, a pending design application can be licensed; there is no requirement for grant or registration of application for license.
If a design registration or design application seized, is it still possible to license the rights thereon?
Seizure is not an obstacle to license the rights of a design.
If a design registration or design application pledged, is it still possible to license the rights thereon?
Pledge is not an obstacle to license the rights of a design.
Is there any regulatory requirement for the scope or content of License Agreement?
In a License Agreement, design registration or design application number, name of design subject to license, design numbers in order in case of multiple design registration and term of license are required within License Agreement; otherwise, recording license will not be allowed in the design registry.
CHANGE OF NAME
Is evidence is required for recording a change of name?
Yes, an official document, i.e. an extract from Chamber of Commerce or Industry, Court or any officially authorized institution, should be submitted for recording change of name. The document should expressly mention the change of name and both old and new names of the applicant/registered owner.
Should official document be notarized or legalized by Apostille?
No notarization or legalization by Apostille is required.
Is a copy of official document sufficient for recording change of name?
Yes, a copy is sufficient for recordal, no original is required.
Are company minutes or proceedings of similar decision for a change of name acceptable?
No, company minutes or proceedings of similar decision for change of name are not acceptable.
Is official certification of notary public regarding change of name is sufficient to record change of name?
Official certification of notary public is not sufficient to recording a change of name.
Is it possible to request name change for an entity in respect of specific cases only while excluding the others?
No, it is not possible to record change of name for some cases only while excluding some other cases registered in the name of same applicant or registered owner.
Is a translation of official document for recording change of name required?
Yes, Turkish translation of official document approved by a sworn translator is required for recording change of name.
Does request for a change of name affect all registries of industrial property rights or just the specific registry of patent, trademark or design?
A request for change of name affects all industrial property rights of same applicant or registered owner in all registries, namely patent, trademark and design registries. Specifically, request for change of name changes name of same applicant or registered owner in respect of all the patent, trademark and design applications and registrations.
Is Power of Attorney required for recording change of name?
No, Power of Attorney (PoA) is not required for recording change of name.
Does TURKPATENT provide a certificate of change?
Yes, a certificate of change of name is provided within 1 month approx. following request of change of name.
Is it possible to record change of name whilst design application is pending but not yet registered?
Yes, it is possible to record a change of name without waiting for registration.
Is there any official fee required for change of name?
For change of name, there is no required official fee.
CHANGE OF address
Is evidence is required for recording a change of address?
No evidence is required for recording change of address.
Is it possible to request address change for an entity in respect of specific cases only while excluding the others?
No, it is not possible to record change of address for some cases only while excluding some other cases registered in the address of same applicant or registered owner.
Does request for a change of address affect all registries of industrial property rights or just the specific registry of patent, trademark or design?
A request for change of address affects all industrial property rights of same applicant or registered owner in all registries, namely patent, trademark and design registries. Specifically, request for change of address changes address of same applicant or registered owner in respect of all the patent, trademark and design applications and registrations.
Is Power of Attorney required for recording change of address?
No, Power of Attorney (PoA) is not required for recording change of address.
Does TURKPATENT provide a certificate of change?
No, a certificate of change of address is not provided. Recordal of change of address can be easily confirmed through the online system of TURKPATENT .
Is there any official fee required for change of address?
For change of address, there is no required official fee.
In what aspect is updating address in the registry important?
Change of address is not mandatory issue. In one aspect, it is important for the right holder or applicant whose residence of business is abroad, which is that in the case of any court action against the right, the court will directly serve notice of court action to the address of right holder registered in TURKPATENT's registry without servinge the same to Turkish Patent or Trademark Attorney of the related right.
MERGER AND ACQUISITION
Is an evidence is required for recording a merger and acquisition?
Yes, an official document, i.e. an extract from Chamber of Commerce or Industry, Court or any officially authorized institution, should be submitted for recording merger and acquisition. The document should expressly mention the merger and acquisition and both old and new entities.
Should official document be notarized or legalized by Apostille?
No notarization or legalization by Apostille is required.
Is a copy of official document sufficient for recording merger and acquisition?
Yes, a copy is sufficient for recordal, no original is required.
Is company minutes or proceedings of similar decision for a merger and acquisition are acceptable?
No, company minutes or proceedings of similar decision for merger and acquisition are not acceptable.
Is official certification of notary public regarding merger and acquisition is sufficient to record merger and acquisition?
Official certification of notary public is not sufficient to record a merger and acquisition.
Is a translation of official document for recording merger and acquisition required?
Yes, Turkish translation of official document approved by a sworn translator is required for recording merger and acquisition.
Is Power of Attorney required for recording merger and acquisition?
No, Power of Attorney (PoA) is not required for recording merger and acquisition.
Are official fees payable in order to record merger and acquisition?
Yes, official fees are payable for recordal of merger and acquisition. If there are more than one design, official fees should be paid for each case separately.
Is it possible to record merger and acquisition whilst design application is pending but not yet granted?
Yes, it is possible to record a merger and acquisition without waiting for grant or registration.
Is the recordal of a merger and acquisition obligatory? If not, are there any negative consequences where the merger and acquisition is not recorded duly in the registry?
Recordal of a merger or acquisition is not obligatory. Mergers or acquisitions can only have effect against third parties, who are acting in good faith, as from the date of their entry in the design registry. In other words, it is not possible to put forward the rights on the design against third parties acting in good faith unless and until they are duly entered in the design registry.
Is it possible to record merger or acquisition comprising multiple design cases by for request for recording merger or acquisition at TURKPATENT ?
Merger or acquisition should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of merger or acquisition even if requests for recordal of merger or acquisition are simultaneously filed at TURKPATENT .
Is there any deadline to record an merger and acquisition?
There is no deadline and requirement to record merger or acquisition in the design registry to keep the design in force. The designs remain effective independently from merger or acquisition.
If a design or design application seized, is it still possible to record merger and acquisition?
Seizure is not an obstacle to record merger and acquisition.
Is Change of Ownership due to merger or acquisition published?
Yes, change of ownership due to merger or acquisition is published in Turkish design Bulletin.
Does TURKPATENT provide a certificate of change?
Yes, a certificate of merger and acquisition is provided within 1 month approx. following request of merger and acquisition.
PLEDGES (SECURITY INTEREST)
Can designs be subject of a pledge?
Yes, designs can be pledged.
What kinds of documents are required for recording a pledge?
Pledge Agreement is required for recording a pledge.
If there are more than one pledgee, should pledge be recorded for each pledgee separately?
Yes, pledge should be recorded for each pledgee and official fee for each pledgee should be paid.
Should a design application have been granted for granting and recording a pledge?
No, pledge can be registered for a pending design application.
Should term of pledge be indicated in a Pledge Agreement for recording a pledge?
No, it is not necessarily required to be indicated in Pledge Agreement.
Is there any requirement for legalization or notarization for recording pledge?
There is no requirement for notarization or legalization of Pledge Agreement. Simple signatures of Pledgor and Pledgee on Pledge Agreement are sufficient to record Pledge in the registry.
Is the recordal of a pledge obligatory? If not, are there any negative consequences where pledge is not recorded duly in the design registry?
Recordal of a pledge is not obligatory. pledges can only have effect against third parties, who are acting in good faith, as from the date of their entry in the design registry. In other words, it is not possible to put forward the rights on the design against third parties acting in good faith unless and until they are duly entered in the design registry.
Is the original of Pledge Agreement required?
No actually, a copy of the pledge Agreement is sufficient provided that Patent and Trademark Attorney declares that the copy is same as the original.
Is the translation of Pledge Agreement required to record a pledge in the design registry?
Yes, a Turkish translation approved by a sworn translator is required for recording pledge.
Is it possible to record Pledge Agreement comprising multiple design cases by one pledge request at the Turkish design and design Office?
Pledge should be individually handled for each case (case by case).
Is Power of Attorney required for recording a pledge in the registry?
Power of Attorney is not required for recording a pledge.
Is there any deadline to record a pledge?
There is no deadline and requirement to record pledge.
Are official fees payable in order to record a design pledge?
Yes, official fees are payable for recordal of a pledge. If there are more than one design within pledge, official fees should be paid for each case separately. Furthermore, if there are more than one pledgees, official fee should be paid for each pledgee.
Is a worldwide Pledge Agreement is acceptable?
Yes, it is acceptable provided that pledge refers to Turkish design application or registration number(s) therewithin.
Is recordal of pledge published?
Yes, pledge is published in Turkish Design Bulletin.
Can a pending design application be pledged?
Yes, a pending design application can be pledged; there is no requirement for grant or registration of application for the pledge.
Is there any regulatory requirement for the scope or content of an pledge Agreement?
In Pledge Agreement, design or design application number subject to pledge are required; otherwise, recording pledge will not be allowed in the design registry.
In which conditions does a pledge cease?
Pledge ceases in the following conditions:
- Extinction or termination of the debt due to any reasons,
- If pledge is bound by a condition or a term, when that condition is realized or not realized or its possibility of realization of that condition disappear, and that term is lapsed,
- Sales of design by compulsory execution.
In the case of cease of pledge, is it necessary to take any action for removal of pledge in the design registry?
Yes, cancellation of a pledge in the design registry is only possible if pledgee or pledgees request the removal of pledge from the design registry. If pledgee or pledgees refrain from removing pledge, pledgor can file a court action in respect of cancellation of pledge and can file request for removal of pledge based on the court decision.
Is pledge of rights obstacle to assign those rights?
No, pledge of rights is not an obstacle to assign those rights.
Does TURKPATENT issue a certificate or letter of pledge?
Yes, a certificate or confirmation letter of pledge is issued.