When is renewal fee for a trademark registration due for payment?
Until January 09, 2018, renewal fee for a Turkish trademark registration falls due every ten 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 Turkish trademark registration 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 any grace period for payment of a renewal fee?
Yes, if payment of a renewal fee is not made in due time, it 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 there any possibility for restoring the rights in case of failure to renew a trademark registration in the prescribed time limits?
No, if renewal fee for a trademark registration is not paid in due time and within six-month grace period following the due date, trademark rights will be irrevocably terminated.
Is it possible for the entities whose place of business are located abroad to request for renewal of a trademark registration directly, without using a Trademark Agent?
No, renewal of a trademark registration should be paid by a Turkish Trademark Agent?
Is Power of Attorney required for renewing a trademark registration?
If a trademark registration will be renewed for all the goods and services, Power of Attorney (PoA) is not required for renewal. If a trademark registration will be partially renewed for some of the goods and services, Power of Attorney (PoA) clearly covering the authorization for partial renewal is required.
Where a trademark registration is renewed by a Trademark Agent other than the Trademark Agent in the trademark registry, is the Trademark Agent requesting the renewal is recorded as agent for service?
Not actually unless otherwise requested specifically, i.e. the trademark agent in the registry still remains as agent for service even if the renewal is made by another trademark agent.
Is it possible to partially renew a trademark registration?
Yes, a trademark registration can be renewed partially for some of the goods or services only.
Upon payment of renewal fee, does TURKPATENT issue any official communication or certificate confirming renewal of trademark 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 trademark registration is deemed to be renewed duly?
Upon payment of renewal fee, formalities officer examine the request for renewal and record the 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 trademark registration?
No, request for renewal should be submitted within the prescribed time limits; otherwise, trademark is deemed not to have been renewed in due course and loss of rights occurs.
When will be renewal effective?
Renewal will be effective from the day following the date on which the previous protection period ends.
Is renewal published in Turkish Trademark Bulletin?
Yes, renewal is published in the Turkish Trademark Bulletin.
Is it possible to renew multiple trademark registrations at once?
No, each trademark registration should be individually renewed.
Does number of classes or number of items of goods and services affect the amount of official fee?
No, official fee is fixed without regarding number of classes or number of items of goods and services.
Which documents and/or information are required for renewing a trademark registration?
If a trademark registration will be renewed for all the goods and services, a request form for renewal and information regarding the payment of the renewal fee is sufficient for performing renewal.
If a trademark registration will be partially renewed for some of goods and services only, a request form for renewal including a list of goods and service for which renewal is requested, information regarding the payment of the renewal fee, a Power of Attorney clearly covering the authorization of Trademark Agent for partial renewal, a declaration confirming the partial renewal by the right holders in the registry should be submitted. If the required documents and information for partial renewal are not duly submitted, the trademark registration is renewed for all the goods and services by TURKPATENT without further notification of deficiency.
In the case of a collective trademark registration, is the renewal request of one of the right holders sufficient for completing the renewal?
If a collective trademark registration will be renewed for all the goods and services, renewal request of one of the right holders will be sufficient. If a collective trademark registration will be partially renewed for some of the goods and services, all of the right holders should take action together for renewal.
If there is any possibility to oppose same or confusingly similar trademark application based on the trademark registration lapsed due to lack of renewal?
Yes, it is possible but only trademark applications filed within two years from the end of the protection period and provided that the lapsed trademark has been genuinely used during those two years.
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 schedule of the official fees for trademarks can be reached?
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 trademark 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 trademark rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over the trademark 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 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 trademark registry.
Is the recordal of an assignment obligatory? If not, are there any negative consequences where 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 trademark registry. In other words, it is not possible to put forward the rights on the trademark against third parties acting in good faith unless and until they are duly entered in the trademark Register.
Is a confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry?
Yes, confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry
Is the original of Assignment Agreement required?
Not actually, a copy of 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 registry?
Yes, a Turkish translation approved by a sworn translator is required for recording assignment.
Is it possible to record Assignment Agreement comprising multiple trademark 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 the trademark Office.
Is Power of Attorney required for recording an assignment in the trademark 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 assignment of the rights in the trademark registry to keep the trademark in force. The trademark remains effective independently from the assignment.
Are official fees payable in order to record a Trademark Assignment?
Yes, official fees are payable for recordal of an assignment. If there are more than one trademark 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 trademark application or registration numbers therewithin.
Is Change of Ownership due to Assignment published?
Yes, change of ownership due to Assignment is published in Turkish Trademark Bulletin.
Can a pending trademark application be assigned?
Yes, a pending trademark 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 trademark 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, i.e. Courts, chambers 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 trademark registration or trademark application seized, is it still possible to assign the rights thereon?
Seizure is not an obstacle to assign the rights of a trademark.
If a trademark or trademark application pledged, is it still possible to assign the rights thereon?
Pledge is not an obstacle to assign the rights of a trademark.
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, trademark application or registration number or numbers subject to Assignment should be listed in Assignment Agreement for validity.
Can a registered or applied-for trademark be assigned partially?
Yes, a registered or applied-for trademark can be partially assigned for some of goods or services.
In the case of a partial assignment, is there any specific requirement for Assignment Agreement?
Yes, it is obligatory to indicate class numbers and goods and services 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 recordal of the assigned part of trademark registration or application?
TURKPATENT assign a new application and registration number, open a new registry and issue a new trademark certificate for the assigned part of the trademark. It is not required to pay registration fee for issuing trademark certificate.
In the case of a partial assignment, is it obligatory to assign same or confusingly similar goods and services?
No, it is not obligatory to assign same or confusingly similar goods and services.
If a trademark was applied for or registered in Turkey through Madrid Protocol, how the assignment is handled?
Trademarks applied for or registered under Madrid Protocol should be assigned before International Bureau of WIPO by use of MM5 Form. TURKPATENT does not accept requests for recordal of assignment regarding trademarks applied for or registered under Madrid Protocol 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 trademark too and Licensor can grant sub-licenses for the same trademark. In the case of exclusive License Agreements, licensor cannot grant further licences to third parties, and cannot use trademark 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 trademark?
Licensee can take any action, unless otherwise agreed, in respect of the use of trademark. If licensee does not act in compliance with the terms and conditions of License Agreement, licensor can put forward its rights of trademark against Licensee.
Should a trademark application have been granted for granting and recording a License?
No, License can be granted and recorded for a pending trademark application.
Is there any requirement for disclosing or declaring consideration in a 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 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 trademark 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 a license obligatory? If not, are there any negative consequences where License is not recorded duly in the trademark 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 trademark registry. In other words, it is not possible to put forward the rights on trademark against third parties acting in good faith unless and until they are duly entered in the trademark registry.
Is the original of License Agreement required?
No actually, a copy of License Agreement is sufficient provided that Trademark Attorney declares that the copy is same as the original.
Is the translation of the 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 a License Agreement comprising multiple trademark 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 a license in the trademark 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 trademark registry.
Are official fees payable in order to record a trademark license?
Yes, official fees are payable for recordal of a license. If there are more than one trademark within the scope of license, 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 acceptable?
Yes, it is acceptable provided that License refers to Turkish trademark application or registration number(s) therewithin.
Is recordal of license published?
Yes, change of ownership due to license is published in Turkish Trademark Bulletin.
Can a pending trademark application be licensed?
Yes, a pending trademark application can be licensed; there is no requirement for grant or registration of application for license.
If a trademark application or trademark registration seized, is it still possible to license the rights thereon?
Seizure is not an obstacle to license the rights of a trademark.
If a trademark application or trademark registration pledged, is it still possible to license the rights thereon?
Pledge is not an obstacle to license the rights of a trademark.
Is there any regulatory requirement for the scope or content of an License Agreement?
In a License Agreement, trademark application or trademark registration number and list of goods and services subject to License, term of license are required; otherwise, recording the license will not be allowed in the trademark 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 is 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.
Is it possible to record this change whilst patent application is pending but not yet granted?
Yes, it is possible to record a change of name without awaiting for grant or registration.
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 there any official fee required for change of name?
For change of name, there is no required official fee.
If a request for change of name for a trademark or trademarks registered under Madrid Protocol designating Turkey is made at the International Bureau of WIPO, will such request affect all the patent, trademark and design registrations in Turkey?
Yes, any request for change of name before WIPO will also change name of same applicant or recorded owner for all its patents, trademarks, and designs registered in Turkey. Therefore, before any request for change, it is advisable to perform a verification for all the patent, trademark and design cases in Turkey.
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 serving the same to Turkish Patent or Trademark Attorney of the related right.
MERGER AND ACQUISITION
Is 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.
Are company minutes or proceedings of similar decision for a merger and acquisition 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 a trademark Assignment?
Yes, official fees are payable for recordal of merger and acquisition. If there are more than one trademark, official fees should be paid for each case separately.
Is it possible to record merger and acquisition whilst trademark application is pending but not yet granted?
Yes, it is possible to record merger and acquisition without waiting for grant or registration.
Is 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 trademark registry. In other words, it is not possible to put forward the rights on the trademark against third parties acting in good faith unless and until they are duly entered in the trademark registry.
Is it possible to record merger or acquisition comprising multiple trademark 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 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 merger or acquisition?
There is no deadline and requirement to record merger or acquisition in the trademark registry to keep the trademark in force. The trademark remains effective independently from merger or acquisition.
If a trademark or trademark application seized, is it still possible to record merger and acquisition?
Seizure is not an obstacle to 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 Trademark 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 trademarks be subject of a pledge?
Yes, trademarks 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 trademark application have been granted for granting and recording a pledge?
No, pledge can be registered for a pending trademark 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 the 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 pedgee on Pledge Agreement are sufficient to record Pledge in the registry.
Is recordal of a pledge obligatory? If not, are there any negative consequences where the pledge is not recorded duly in the 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 trademark registry. In other words, it is not possible to put forward the rights on trademark against third parties acting in good faith unless and until they are duly entered in the trademark registry.
Is the original of Pledge Agreement required?
No actually, a copy of the Pledge Agreement is sufficient provided that trademark Attorney declares that the copy is same as the original.
Is the translation of Pledge Agreement required to record a pledge in the registry?
Yes, a Turkish translation approved by a sworn translator is required for recording pledge.
Is it possible to record a Pledge Agreement comprising multiple trademark cases by one pledge request at the Turkish trademark and Trademark 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 the pledge.
Are official fees payable in order to record a trademark pledge?
Yes, official fees are payable for recordal of a pledge. If there are more than one trademark 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 acceptable?
Yes, it is acceptable provided that pledge refers to Turkish trademark application or registration number(s) therewithin.
Is recordal of pledge published?
Yes, pledge is published in Turkish trademark Bulletin.
Can a pending trademark application be pledged?
Yes, a pending trademark 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 Pledge Agreement?
In a Pledge Agreement, trademark or trademark application number subject to pledge are required; otherwise, recording pledge will not be allowed in the trademark 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 trademark by compulsory execution.
In the case of cease of pledge, is it necessary to take any action for removal of pledge in the Registry?
Yes, cancellation of a pledge in the registry is only possible if pledgee or pledgees request the removal of pledge from the 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.