FAQs: Assignments of Design Registrations in Turkey
FAQs on Design Registrations in Turkey
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 .
Is there any requirement for legalization or notarization for recording an assignment?
Assignment Agreement should be notarized . Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. Legalization by Apostille or Turkish Consulate is not required.
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 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 (on a case-by-case basis) 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 Turkish Patent and Trademark Office.
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.
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