RENEWALS
Are patent annuities (also known as patent maintenance fees or patent renewal fees) due when patent applications are pending?
Yes, patent annuities are required to be paid during patents are pending.
When do patent annuities start to be paid?
In respect of the patent application filed on or after 10 January 2017, on which New Turkish Industrial Property Law (Law No. 6979) came into force, patent annuities are due in respect of the third and each consecutive year, calculated from the date of filing.
In respect of the patent applications filed before 10 January 2017 under the Old Decree Law (Decree Law No. 551), patent annuities are due in respect of the second and each consecutive year, calculated from the date of filing.
How due date for an annuity is calculated?
Patent annuities in respect of the coming year are due on the day of the month in which the anniversary of the date of filing falls. For instance, if a patent application was filed on 15 November 2017, the third annuity becomes due on 15 November 2019 and should be paid before this date.
Is it possible to make bulk paymentsat once?
No, it is not possible to pay the annuities in a bulk payment. They should be individually paid where they are due for payment.
Is there any grace period for the payment of a patent annuity?
Yes, there is a grace period and annuities may still be validly paid up to six months after the due date.
In the case of paying the patent annuity in grace period, should any surcharge or additional fee be paid?
Yes, an additional fee equal to 25% of the belated annuity is required.
When does patent or patent application ends if patent annuity is not paid within the prescribed time limits?
If annuity for a patent or patent application is not paid within due date and subsequent six-month grace period, patent or patent application ends as from the due date, namely the day of the month in which the anniversary of the date of filing falls.
For instance, if a patent application was filed on 15 November 2017, the third annuity was not paid in due date, i.e. 15 November 2019, and within the six-month grace period following the due date, i.e. 15 May 2020, the patent application will be deemed to end as from 15 November 2019.
Is there any official notification regarding the termination of patent rights due to lack of payment of patent annuities and until when such notification is issued and sent?
Yes, TURKPATENT issue and send an official notification (lapse notice) informing that patent rights are lapsed. TURKPATENT is obliged to issue such notification at the latest within 1 year as from the due date on which patent rights were lapsed. Following the notification, information regarding the termination of patent rights is published in Turkish Patent Bulletin.
If there any possibility for restoring the rights if patent annuities are failed to be paid within the prescribed time limits?
Yes, it is still possible to restore the rights within 2 months as from the notification date of the lapse notice issued by TURKPATENT provided that the increased annuity fee (called “recovery fee”) is paid. The increased fee means one and a half times the required annuity fee which was not paid in due time.
For restoring the rights, it is not required to submit any reasoned statement regarding the failure to pay the annuity in due time. In other words, a simple request will be sufficient to restore the rights with the payment of the increased official fee.
What will be the consequences if a request for restoring the rights are not filed in due time?
If a request for restoring the rights are not filed in due time, patent rights will be irrevocably terminated. There are no further procedures such as reestablishment of rights (restitutio in integrum).
If patent rights are restored after the termination of patent rights due to failure to pay the patent annuities within the prescribed time limits, are the rights of third parties protected?
Restoration of the patent rights does not affect the acquired rights of third parties due to the lapse of the patent rights. The rights of third parties and their scope are determined by the Court.
Is there any time limitation for the payment of patent annuities?
Patent annuities should be paid during the patent term of 20 years to keep patents in force.
Is there any special requirement for patent annuities in respect of divisional applications?
When a divisional application is filed, annuities of the previous years (calculated from the filing date of parent application) come due and should be paid simultaneously with the filing. In case that the annuities in respect of the previous years are not paid with the filing, it will be still possible to pay the annuities of the previous years within 2 months as from the submission date of the demand for divisional application. If patent annuities of the previous years are not paid within the prescribed time limits defined above, divisional application is deemed to be withdrawn.
Is it required to pay patent annuities for patents of addition?
No, there is no requirement for patents of addition. In other words, patent annuities are not paid for patents of addition.
Is main patent (application) of a patent of addition is lapsed due to failure to pay patent annuities, what will happen to patent of addition?
If main patent (application) of a patent of addition is lapsed to failure to pay patent annuities, patent of addition is converted into independent patent (application) by TURKPATENT .
Is patent of addition is converted into independent patent (application), when and how the patent annuities should be paid?
After the conversion, applicant or patent holder is required to pay the annuities of the previous years (without any additional fee) within 3 months as from the official notification of the conversion. The due dates for annuities are calculated as from the filing date of patents of addition (converted into independent patent) (not the filing date of the main patent).
Is it required to pay patent annuities for secret patents?
No, patent annuities are not required to be paid for secret patents insomuch as they remain secret. If secrecy is removed, patent annuities are required.
Is it required to pay patent annuities if an invention cannot be put into use or use by the right holder due to a legal monopoly?
No, patent annuities are not required to be paid if an invention cannot be put into use or use by the right holder due to a legal monopoly.
When a PCT application is nationalized in Turkey, are payment of patent annuities of the previous years are required; and if any is there any surcharge or additional fee for that?
Yes, when PCT application is nationalized in Turkey, patent annuities of the previous years are paid with the national phase entry without any surcharge (additional fee). If patent annuities of the previous years are not paid together with the national phase entry, they can be still paid within 6 months as from the date of national phase entry, but with a surcharge (additional fee).
When European patent is validated in Turkey, are patent annuities of the previous years are required to be paid; and if any is there any surcharge or additional fee for that?
There is no requirement for paying patent annuities of the previous years after validating European patent in Turkey. Patent annuities for a European patent validated in Turkey are due as from the date of the terms mentioned in Article 86 (2) (EPC) .
In case that a patent annuity becoming due and payable within 3 months as from the publication of decision to grant in respect of European patent are paid to TURKPATENT within that term, they are deemed to be validly paid and no additional fee is requested.
Take the following example:
- Publication date of decision of grant: 15 July 2017.
- Next due annuity: 14 September 2017
- The validation deadline in Turkey: 15 October 2017 (calculated from Publication date of decision of grant)
In the above case, the next annuity can be validly paid till 15 October 2017 without any additional fee.
Where can we reach the schedule of the official fees for patents and utility models?
TURKPATENT shows the schedule of official fees in its official website www.turkpatent.gov.tr. Please click here to see the official fees.
Is there any time interval that official fees are expected to be increased?
Yes, official fees are typically increased at once each year as from January 01.
Is it possible for those that have no residence in Turkey to directly pay patent annuities without using Turkish Patent Agent?
Not possible. Payment of the annuities can be only handled and made by a Turkish Patent Agent.
Which documents are required for the payment of the patent annuities?
There are no documents, e.g. Power of Attorney (PoA), required for the payment of patent annuities.
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.
Upon payment of patent annuities, does TURKPATENT issue any official communication or certificate confirming renewal of patent or patent application?
No, TURKPATENT does not issue any official communication or certificate confirming renewal of patent or patent application.
When a patent or patent application is deemed to be renewed duly?
Upon payment of patent annuities, a patent or patent application is deemed to be renewed duly. No further action, procedures or time is required.
RECORDALS
ASSIGNMENTS
Is there any requirement for disclosing or declaring the consideration in an Assignment Agreement?
Consideration is not necessary in order to validly assign the rights. Even if Assignment is by way of gift, the terms will still be enforceable between the parties. Whereas consideration is not necessary for a valid assignment, it is required for recording the assignment at the patent registry. However, Assignment Agreement is not required to necessarily cover consideration as it can be declared or disclosed separately from Assignment Agreement with the request for recording assignment.
Can consideration be nominal amount? If yes, is there any minimum acceptable amount for recording an assignment?
Consideration can be a nominal amount and there is no specific minimum amount. for recording an assignment at the patent registry?
Can an assignment be done unilaterally?
No, assignment should be done mutually and the express acceptance of 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 the 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 is more than one patent 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 patent rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over patent 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 patent registry.
Is 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 Patent Register. In other words, it is not possible to put forward the rights on patent against third parties acting in good faith unless and until they are duly entered in the Patent Register.
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
In case of acceptance of a confirmatory/declaratory assignment, should consideration be declared or disclosed?
Yes, consideration should be still declared or disclosed in case of a confirmatory/declaratory assignment. Consideration can be either declared or disclosed in the confirmatory/declaratory Assignment Agreement, or declared or disclosed with the request for assignment recordal.
Is the original of the Assignment Agreement required?
No actually, a copy of Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.
Is the translation of the Assignment Agreement required to record an assignment in the registry?
Yes, a Turkish translation approved by a sworn translator is required for recording assignment.
In case of a validated European patent in Turkey, it is possible to record assignment based on EPO Form 2544?
If European patent is assigned before EPO during the Opposition Period or Opposition Proceedings, assignment can be recorded before TURKPATENT by submitting a simple copy of EPO Form 2544 (no translation, notarization, certification or legalization required) without requiring Assignment Agreement and paying official fees for assignment. Please note that assignment before EPO does not result in national recordal automatically.
Is it possible to record an Assignment Agreement comprising multiple patent cases by one assignment request at Turkish Patent and Trademark Office?
Assignments should be individually handled for each case (case by case) and 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 Patent 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 assignment of the rights in the patent registry to keep patent in force. Patents remain effective independently from the assignment.
Are official fees payable in order to record a Patent Assignment?
Yes, official fees are payable for recordal of an assignment. If there are more than one patent within Assignment, official fees should be paid for each case separately.
Is 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 is acceptable?
Yes, it is acceptable provided that Assignment refers to Turkish patent or patent application numbers or European patent numbers therewithin.
Is Change of Ownership due to Assignment published?
Yes, change of ownership due to Assignment is published in Turkish Patent Bulletin.
Can a pending patent application be assigned?
Yes, a pending patent application can be assigned; there is no requirement for grant or registration of application for the assignment.
If a change of ownership takes place due to mergers, demergers, capital investments or transfer of businesses, how the assignment of patent 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 drafted in Turkish.
Is a patent or patent application seized, is it still possible to assign the rights thereon?
Seizure is not an obstacle to assign the rights of a patent.
Is a patent or patent application pledged, is it still possible to assign patent rights thereon?
Pledge is not an obstacle to assign the rights of a patent.
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, patent or patent application number or numbers subject to Assignment should be listed in Assignment Agreement for validity.
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 patented invention too and licensor can grant sub-licenses for the same patented invention. In the case of exclusive License Agreements, licensor cannot grant further licenses to third parties, and cannot use patented invention 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.
In the case of multiple owners, one of the owners can license patent without having consent of the other owners?
In the case of multiple owners, unanimity of all the owners for allowing third parties to use patent is a must. If all the owners cannot agree on licensing, the Court can grant the authority to grant license to one of the owners in terms of equity.
What is the scope of rights for Licensee in using licensed invention?
Licensee can take any action, unless otherwise agreed, in respect of the use of invention during the terms of patent. If licensee does not act in compliance with the terms and conditions of License Agreement, licensor can put forward its rights of patent against licensee.
Should a patent application have been granted for granting and recording a license?
No, license can be granted and recorded for a pending patent 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 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 patent 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 patent registry.
Is the recordal of a license obligatory? If not, are there any negative consequences where the license is not recorded duly in the patent 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 patent registry. In other words, it is not possible to put forward the rights on patent against third parties acting in good faith unless and until they are duly entered in the patent registry.
Is the original of License Agreement required?
No actually, a copy of the License Agreement is sufficient provided that Patent Attorney declares that the copy is same as the original.
Is the translation of License Agreement required to record a license in the patent registry?
Yes, a Turkish translation approved by a sworn translator is required for recording license.
Is it possible to record License Agreement comprising multiple patent 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 patent registry?
Power of Attorney is not required for recording a license.
Is there any deadline to record a license?
There is no deadline and requirement to record license.
Are official fees payable in order to record a Patent License?
Yes, official fees are payable for recordal of a license. If there are more than one patent within 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 is acceptable?
Yes, it is acceptable provided that License refers to Turkish patent or patent application number(s) therewithin.
Is recordal of license published?
Yes, change of ownership due to License is published in Turkish Patent Bulletin.
Can a pending patent application be licensed?
Yes, a pending patent application can be licensed; there is no requirement for grant or registration of application for license.
Is a patent or patent application seized, is it still possible to license the rights thereon?
Seizure is not an obstacle to license the rights of a patent.
Is a patent or patent application pledged, is it still possible to license the rights thereon?
Pledge is not an obstacle to license the rights of a patent.
Is there any regulatory requirement for the scope or content of an License Agreement?
In a License Agreement, patent or patent application number subject to License, terms of license, and type of license, i.e. exclusive or nonexclusive are required; otherwise, recording license will not be allowed in the patent 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; otherwise, request for change of name will not be recorded.
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 record 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 change of name whilst patent application is pending but not yet granted?
Yes, it is possible to record a change of name without waiting 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 a change of name?
For change of name, there is no required official fee.
CHANGE OF ADRESS
Is an 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 who is recorded as address for service.
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.
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 merger and acquisition?
Yes, official fees are payable for recordal of merger and acquisition. If there are more than one patent, official fees should be paid for each case separately.
Is it possible to record a merger and acquisition whilst patent application is pending but not yet granted?
Yes, it is possible to record a 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 patent registry. In other words, it is not possible to put forward the rights on the patent against third parties acting in good faith unless and until they are duly entered in patent registry.
In case of a validated European patent in Turkey, it is possible to record merger and acquisition based on EPO Form 2544?
If European patent is assigned before EPO during the Opposition Period or Opposition Proceedings, merger or acquisition can be recorded before TURKPATENT by submitting a simple copy of E EPO Form 2544 (no translation, notarization, certification or legalization required) without requiring merger or acquisition document and paying official fees for merger or acquisition. Please note that recordal of merger or acquisition before EPO does not result in national recordal automatically.
Is it possible to record merger or acquisition comprising multiple patent 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 Turkish Patent and Trademark Office.
Is there any deadline to record an assignment?
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There is no deadline and requirement to record merger or acquisition in the patent registry to keep patent in force. Patents remain effective independently from merger or acquisition.
Is a patent or patent 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 Patent 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 patents be subject of a pledge?
Yes, patents can be pledged.
What kinds of documents are required for recording a pledge?
Pledge Agreement is required for recording a pledge.
If there is 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 patent application have been granted for granting and recording a pledge?
No, pledge can be registered for a pending patent application.
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 recordal of a pledge obligatory? If not, are there any negative consequences where 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 patent registry. In other words, it is not possible to put forward the rights on patent against third parties acting in good faith unless and until they are duly entered in patent registry.
Is the original of Pledge Agreement required?
Not actually, a copy of the pledge Agreement is sufficient provided that Patent 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 patent cases by one pledge request at TURKPATENT ?
Pledge should be individually handled for each case (case by case).
Is Power of Attorney required for recording a pledge in the patent 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 patent pledge?
Yes, official fees are payable for recordal of a pledge. If there are more than one patent 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 patent or patent application number(s) therewithin.
Is recordal of pledge published?
Yes, pledge is published in Turkish Patent Bulletin.
Can a pending patent application be pledged?
Yes, a pending patent application can be pledged; there is no requirement for grant or registration of application for a pledge.
Is there any regulatory requirement for the scope or content of Pledge Agreement?
In Pledge Agreement, patent or patent application number subject to pledge are required within the Pledge Agreement; otherwise, recording pledge will not be allowed in the patent 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 patent by compulsory execution.
In 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 patent registry is only possible if pledgee or pledgees request the removal of pledge from the patent 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.
USE/WORKING REQUIREMENT
Is it obligatory to use or work the patented inventions in Turkey?
Yes, the patented inventions should be put into use in Turkey.
What is the deadline to put into use the patented inventions in Turkey?
The patentee or person/entity authorized by the patentee is obliged to put to use/work the patented invention within three years as from the publication of the patent grant in the Turkish Patent Bulletin or four years as from the application date of the patent, whichever is the later, and should not discontinue the use throughout three consecutive years if any use has taken place (Article 130 IPL).
Specific to the European patents validated in Turkey, the 3-years deadline for the use is calculated as from the publication dates of the European patents in the Turkish Patent Bulletin.
In case that the patented invention is not put into use, are there any prejudices on the patent rights in Turkey?
If the patented invention is not put into use or not used as required, it will not cause to any loss of patent right but the patent will be vulnerable to compulsory license.
On the basis of which can the third parties ask compulsory license regarding the use matter in Turkey?
The third parties can ask compulsory license on the basis of one of the followings;
- Patented invention has not been put into use within 3 years from the grant or was interrupted to be used for 3 years,
- it has not been seriously and actually attempted to put the patented invention into use or,
- the actual use is not sufficient to cover the needs of the national market.
In case of request for a compulsory license, how the proceedings are handled in Turkey?
In case of request for compulsory license, the authorized court will notify the patentee of such request and ask observations/opinion of the patentee within one month as from the date of notification.
Is there any legitimate excuse not to put the patent into use in Turkey?
In assessing the use, market conditions and circumstances beyond the control and will of the patentee is taken into consideration. Technical or economic or legal reasons of an objective nature, such as marketing authorization, compliance with standards, need for new applications to be made in different fields are to be deemed to constitute legitimate excuses for the inability to put the patent to use. These reasons in the nature of constituting obstacles for using the patented invention are accepted as reasons beyond the control and will of the patentee.
What are the formalities to meet the use requirement in Turkey?
It is only required to submit a declaration of use or declaration of non-use. No evidence is required before the Turkish Patent and Trademark Office. For instance, a simple declaration stating that "the patented goods were imported to Turkey” will be sufficient.
Is there any publication in respect of the declarations of use or non-use in Turkey?
The declaration in respect of the use or non-use of the patent is published in the Turkish Patent Bulletin. The patent in respect of which their being used has not been declared within the prescribed time limit is also published in the Turkish Patent Bulletin.
Is it possible to avoid compulsory license by filing offer for license?
Yes, it is possible to file an offer for license to prevent the third parties from requesting the compulsory license if the subject invention is not used or will not be put into use by the patent owner. Offer for license can be always withdrawn.
Are requests for compulsory license frequent in Turkey?
Not actually, they are quite rare in the Turkish jurisdiction.
Is it still possible for the third parties to file request for compulsory request even though declaration for use is filed with the Turkish Patent and Trademark Office?
Yes, third parties can still file request for compulsory license. In such case, the patent holder is required to prove that the use had been duly performed within due date.
EUROPEAN PATENT VALIDATIONS
What is the deadline for validating European patent in Turkey?
European patents should be validated within 3 months from publication of decision to grant in European Patent Bulletin
Is there any extension of time to validate European patent in Turkey?
No, there is no extension of time for validating European patent in Turkey. Validation request should be filed within 3 months from publication if decision of grant. Whereas it is 3 months to validate, Turkish translation can be filed within further 3 months adding up to 3 months validate date provided that request for validation be filed within 3 months from grant publication and additional fee (usually 50% of official fee) be paid.
If European patent is not validated within prescribed time limits, is there any possibility for re-establishment of rights?
No, there is no possibility of recovering European patent if the time limits are not met, namely no re-establishment of rights or restoration of rights.
If European patent is not validated in Turkey, what will happen?
If European patent is not validated in Turkey, it will be deemed to be invalid as from the very beginning, namely filing date, in Turkey.
Which documents are required for validation of European Patent in Turkey.
European patent publication page of grant decision (so-called B1 Document), Turkish translation of European Patent Specifications, Declaration signed by Turkish Patent Attorney confirming that Turkish translation is same as the original text, request for validation and payment receipt of official fee required for validation.
Is Power of Attorney required for validating a European patent in Turkey?
No, Power of Attorney is not required for European patent validations in Turkey.
Is it sufficient to translate and file translation of claims to validate European patents in Turkey?
No, Turkish translation of the specifications, i.e. description, claims, and drawings, should filed.
Is European Patent validated in Turkey published?
Yes, European patent validated in Turkey is published in Turkish Patent Bulletin.
Is Turkey a part of London Agreement?
No, Turkey is not a part of London Agreement.
Is it possible to file corrected translation where necessary?
Yes, corrected translation can be filed any time but it should be published in Turkish Patent Bulletin for coming into effect; otherwise, it will not have effect. On the other hand, good faith of third parties who had used the invention subject to European patent before the submission of corrected translation are protected and they are allowed to use the invention provided that the use of invention does not infringe the first version of the Turkish translation.
Do European patents have the same enforceable effect as national patents?
Yes, European patents have the same effect as national patents. Further, European patent applications are deemed as Turkish national patent application after it has been assigned a filing date.
After filing request for provisional protection with Turkish translation, is there any publication?
Yes, European patent application with Turkish translation of claims is published in Turkish Patent Bulletin.
In the course of European patent application being processed before EPO, can it be put forward against third parties in Turkey?
Published European patent applications (not yet granted) can be put forward against third parties provided that provisional protection is demanded by filing claims before TURKPATENT and Turkish translation of those claims are published in Turkish Patent Bulletin, or Turkish translation of claims are notified to relevant third party or parties in Turkey.
For provisional protection in respect of European patent application, which documents should be submitted and when?
For obtaining provisional protection for European patent application in Turkey, translation of claims, abstract and drawings into Turkish language should be filed and official fee associated with provisional protection should be paid.
What is the effect of grant of European Patent?
European patent is deemed a national patent as from the publication date of decision to grant in European Patent Bulletin and provided that it is validated in Turkey.
Is it required to appoint Turkish Patent Attorney for validating European patent?
If owner of European patent has not place of business in Turkey or has no industrial and commercial activity in Turkey, Turkish Patent Attorney should be appointed for submitting request for validation and Turkish translation.
Which text is considered for determining scope of protection of European patent, i.e. granted text in original language or Turkish translation of granted text?
Turkish translation of granted text is taken into account in determining the scope of European patent. In other words, if Turkish translation of European patent is narrower than original text of European patent, Turkish translation will be considered for protection. There is one exception however, which is that in invalidity actions against European patent, the original text of European patent is considered.
Is it possible to branch off Turkish utility model application from a pending European patent application?
No, there is no possibility to branch off Turkish utility model application from European patent application. In other words, it is not possible to spin off Turkish Utility Models from European patent applications.
Is there any possibility to convert a pending European patent application into Turkish patent or utility model application?
Conversion of a European patent application into Turkish patent or utility model application is only possible under Article 77 (3) (EPC), where a European patent application is not forwarded to the European Patent Office in due time by Turkish Patent and Trademark Office shall be deemed to be withdrawn. In that case, conversion takes place upon request of the applicant.
Excluding that under Article 77 (3) (EPC), it is not possible to convert a European patent application into Turkish patent or utility model application.
Is there any possibility to obtain parallel protection for the same subject matter through national and European patent applications?
Not possible, it is not possible to protect the same invention by both national patent and European patent simultaneously. Turkish Patent Law does not allow double protection, by either patent or utility model or either national patent or European patent at the same time.
In the case of existence of both national patent application and European patent application claiming same priority for the same subject matter, when parallel European patent application is granted and validated in Turkey, corresponding Turkish national patent or patent application become invalid after termination of opposition period before EPO provided that there has not been filed any opposition during the opposition period or European patent is not amended during the opposition period if any opposition is filed.
With the coming into force of New Turkish Industrial Property Law on January 10, 2017, are there any special instances for European patent applications or European patents to be taken into account?
European patents nationalized before the coming into force of New Turkish Industrial Property Law on January 10, 2017 are required to be handled and processed according to the Abolished Patent Decree Law (Law No. 551). The important instances are the following:
- Invalidity actions filed against European patents validated in Turkey before the entry into force of New Turkish Industrial Property Law, will be handled under the Abolished Patent Decree Law (Law No. 551).
- Use requirements in respect of European patents validated in Turkey before the entry into force of New Turkish Industrial Property Law should be performed according to the provisions under the Abolished Patent Decree Law (Law No. 551).
Any infringement action against third parties on the basis of European patents validated in Turkey before the entry into force of New Turkish Industrial Property Law, will be handled under New Industrial Property Law.
When European patent is validated in Turkey, are the patent annuities of the previous years are required to be paid; if any, is there any surcharge or additional fee for that?
There is no requirement for paying patent annuities of the previous years after validating European patent in Turkey. Patent annuities for a European patent validated in Turkey are due as from the date of the terms mentioned in Article 86 (2) (EPC).
In case that a patent annuity becoming due and payable within 3 months as from the publication of decision to grant in respect of European patent are paid to TURKPATENT within that term, they are deemed to be validly paid and no additional fee is requested. Take the following example:
- Publication date of decision of grant: 15 July 2017
- Next due annuity: 14 September 2017
- The validation deadline in Turkey: 15 October 2017 (calculated from Publication date of decision of grant)
In the above case, the next annuity can be validly paid till 15 October 2017 without any additional fee.
PCT NATIONAL PHASE ENTRIES
Which subjects are not deemed as invention in Turkey?
The followings are the subjects which are not deemed as invention and therefore not patentable in Turkey:
- Discoveries, scientific theories and mathematical methods.
- Plans, rules and methods for mind activities, business activities or games.
- Computer programs.
- Products with aesthetic qualities, literary and artistic works and scientific works.
- Presentation of information.
Which inventions are not allowed for patenting in Turkey?
The followings are the inventions for which patent protection is not allowed in Turkey:
- Inventions which are contrary to public order or morality.
- Essentially biological processes for plant varieties or animal races and plant or animal production, except for microbiological processes or products resulting from such processes.
- All treatment methods, including diagnostic methods and surgical methods, applied to the human or animal body (Swiss-type claims are acceptable).
- Mere discovery of one of the elements of the human body, including the human body and a gene array or partial gene array, at various stages of its formation and development.
- Human cloning, genetic modification of the human germ line, use of the human embryo for industrial or commercial purposes, genetic modifications that may cause animals to suffer without any significant medical benefit to humans or animals, and animals resulting from these procedures.
What is the time limit for the PCT national phase entries in Turkey?
The PCT applications should be typically nationalized within 30 months from the first priority date or the filing date if no priority is claimed. Turkey provides additional 3 months for the national phase entries and thus the PCT applications can be still nationalized within 33 months from the first priority date or the filing date if no priority is claimed provided that additional fee (typically 50% of the national entry fee) is paid.
Which documents and information are required for PCT national phase entries in Turkey?
The followings are required:
- Applicant’s details (name and address)
- Inventor’s details (name and address)
- Description, claims, abstract and drawings, disclosing the invention
- English translation of the International Search Report (ISR), Written Opinion as well as the International Preliminary Examination Report (IPER), if they were issued in a language other than English
All the information and documents can be obtained through PATENTSCOPE if the PCT application has been published when the national phase is performed.
Power of Attorney is not required.
Is Turkish translation of the specifications required for the PCT national phase entry in Turkey?
Turkish translations of the Specifications (description, claims, abstract and drawings) are required for the national phase entry in Turkey. Turkish translation can be filed with the request for national phase entry or within 2 months after filing the request for national phase entry.
Are the applicants required to appoint representative for the PCT national phase entries in Turkey?
The applicants, who are not resident in Turkey, are required to be represented by registered Turkish patent attorneys. Power of Attorney is not required for the representation.
Which fees should be paid for the PCT national phase entries in Turkey?
National entry fee is required to be paid. Also, additional fee (typically half the national entry fee) should be paid if the national entry is performed within 33 months.
When entering into national phase in Turkey, the patent annuities (typically 3rd and 4th year) are required to be paid as well if they are due on the date of entry. If the patent annuities due on the national entry time are not paid, they can be still paid but with a surcharge within 6 months from the date of entry into national phase.
When requesting examination, the applicants are required to pay the official fee for examination.
When do the patent annuities become due?
In respect of the patent application filed on or after 10 January 2017, on which New Turkish Industrial Property Law (Law No. 6979) came into force, patent annuities are due in respect of the third and each consecutive year, calculated from the date of filing.
In respect of the patent applications filed before 10 January 2017 under the Old Decree Law (Decree Law No. 551), patent annuities are due in respect of the second and each consecutive year, calculated from the date of filing.
Which date is taken for the calculation of the due dates for the patent annuities.
The due dates are calculated as from the PCT filing date in Turkey. Actually, the PCT filing date is considered as the filing date of the patent applications nationalized under the PCT.
How long do the patent application proceedings after PCT national phase entry take?
The prosecutions of patent applications (from filing to grant) takes approx. 2-3 years in Turkey.
What is the term for protection for the patents in Turkey?
Patents are valid for 20 years and utility models are valid for 10 years in Turkey provided that annuities are duly paid throughout the lifetime of patent or utility model. There is no possibility to extend the protection term beyond the standard term (no-SPC (Supplementary Protection Certificate) like system).
What are the prosecution stages of the patent applications nationalized through the PCT?
Formal Examination
After filing patent application, TURKPATENT perform formal examination within approx. 2-3 months and notify the applicant accordingly. If there is deficiency, TURKPATENT request the applicant to remove the deficiency within 2 months from the notification of the formal examination. If the applicant does not remove the deficiency within the due date, the application is deemed to be withdrawn.
Substantive Examination
The applicant should file the request for examination within 3 months paying the examination fee from the date of the official notification confirming that the national phase entry has been duly performed. When filing the request for examination, the applicants can submit response to the observations in the international search report and amendments on specifications.
If the national phase entry is performed under Chapter II and the International Preliminary Examination Report (IPER) is positive, the application is directly allowed for grant without further examination.
Office Actions
In the course of the substantive examination, the examiner in charge can issue office actions raising objections regarding the patentability or other substantive issues (lack of unity, clarity etc.) and ask response or amendments within 3 months from the notification of office action. If the applicant fails to reply in due time to any office action, the application is deemed to be withdrawn.
The examiner in charge can issue 3 office actions at most during the examination. As all the office actions are issued in Turkish, translation costs of the office actions into English should be considered.
Grant
If the examiner in charge confirms patentability after substantive examination, TURKPATENT grant and publish decision for patent in the Turkish Patent Bulletin and send a communication of grant to the applicant. At applicant’s option, TURKPATENT can issue Letters of Patent provided that official fee for issuing Letters of Patent is paid by applicant.
Opposition
Turkey applies post-grant opposition system. Any third party can file opposition within 6 months from the publication of the decision for grant. If any opposition is filed, the opposition is handled by the Board of Appeal and the applicant can submit response to the opposition and file amendments during the opposition proceedings where necessary. All the opposition proceedings are handled in written, i.e. there are no oral proceedings.
Is there any possibility to convert patent applications into utility model applications or vice versa?
Patent applications filed through national phase entry of PCT applications can be converted into utility model applications during the proceedings, provided that request for conversion is filed not later than 3 months from the notification of the last office action issued by the examiner or before the grant. For due conversion, search fee should be also paid.
Protection of utility models is not possible for methods, chemicals and pharmaceuticals. The term of protection is 10 years from the filing date.
Is there any way to reinstate the rights in case of the failure to meet the national phase entry time limit?
If the national phase entry is not performed within prescribed time limits, i.e. 30 months or 33 months from the priority date, or filing date if no priority is claimed, the applicant has the right to ask reinstatement of rights in Turkey provided that the conditions prescribed under Rule 49.6 of the Regulations under the PCT are met.
Can I protect my invention by both patent and utility model?
No, it is not allowed to protectthe same invention by both patent and invention in Turkey.
FILING & REGISTRATION
How long takes to register a trademark application straightforwardly?
A typical trademark application takes 6-8 months from filing till registration (2 months examination stage, 2 months publication stage, 2 months decision phase if no opposition is filed, 1-2 months registration and certification stage). In case of an opposition or ex-officio rejection, each may take 6-8 months plus the same for the appeals.
Which documents and information should be submitted to obtain filing date?
The followings should be submitted to obtain filing date.
- Applicant’s identity details (name or title and address)
- Trademark representation
- List of goods and services
- Payment of the official fee for the application
If any of the above requirements are not met, the formalities officer issues and sends a deficiency letter requesting to complete the missing item within 2 months of the notification of the deficiency letter. The filing date will be amended to the date on which all obligatory information is complete, including the payment.
Is it possible to file trademark applications in more than one class (multi-class application)?
Yes, the applicants can file and claim goods and services in more than one class (multi-class trademark application).
There is no limitation for the classes to be claimed, i.e. the applicants can claim all the classes (45 classes) within the scope of the same trademark application. In that case, the applicants are required to pay official fee for each claimed class.
How are the official fees for filing trademark application calculated?
The official fees are calculated based on the number of the classes. The applicants should pay the same amount for each claimed class.
The number of items or headings claimed within each class or the type of the trademark application (color, device, word, 3-D etc.), or type of the entity, legal or natural, does not affect the amount of the filing fee.
Is there any advantage in registering a trademark conventionally (through national route) instead of international registration?
National registration does not prevail on international registration, namely the protection provided by an international registration is the same as the one provided by the national registration.However, Madrid designations have the following disadvantages compared to the local applications.
However, Madrid designations have the following disadvantages compared to the local applications.
- The registration proceedings through Madrid designation takes up to 18 months, whereas it is possible to obtain Turkish trademark registration within 4-6 months (if no opposition is filed) in the case of local applications.
- TURKPATENT does not notify the oppositions in the case of the Madrid designations, which make the applicants devoid of responding to the oppositions.
- As TURKPATENT is not notifying the oppositions, the applicants can be deprived of filing non-use defense against the opposing trademarks, if they are registered for more than 5 years. (please see the section “Oppositions”
Is it obligatory to translate/transliterate a trademark into a Turkish language for the purposes of use and trademark registration?
Turkey is using Latin alphabets in the written language. Therefore, the trademarks of foreign origin expressed in the Latin alphabets are registered as they appear in the language of origin.
Turkish Trademark Law does not require the disclosure of the meaning of the trademark, therefore, no translation of the trademark into Turkish in foreign language, whether such trademark is written in Latin characters or not, is required.
Whereas, if a trademark is expressed in the alphabets other than that in Latin alphabets, e.g. in Cyrillic, Japanese or Chinese characters etc., the transliteration of the trademark into Latin characters are required by Turkish Patent and Trademark Office (TURKPATENT).
Trademark is defined in the Turkish Industrial Property Law as follows:
Trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor (Article 4 (1) IPC).
Is it possible to register non-traditional trademarks (3-D, odor, sound or motion) in Turkey?
Yes, it is possible to register non-traditional trademarks (3-D, odor, sound or motion) in Turkey according to the Turkish Industrial Property Law. Whereas the Code makes it possible, the registration proceedings are extremely challenging.
It should be expected that the application be refused at the first place and the applicants should file an appeal against the refusal and prove that the applied-for non-traditional mark has acquired distinctiveness in the Turkish market.
Does Turkey accept the color marks?
Whereas color can be registered in Turkey per se in view of the definition of the trademark in the Law; in practice, it is extremely difficult to register a color as a trademark. Therefore, when filing a mark of a single color, it is most likely that the application would be refused and it would be necessary for the applicants to prove that the color has acquired distinctiveness in the market in respect of the goods or services for which registration is requested.
It is not possible to obtain protection for a color if the color is registered with a combination of words or figurative elements or images. In other words, for obtaining a registration, color should be claimed per se without any further components within the trade mark.
As the color is registered in Turkey, the relevant public in Turkey should be considered and the public should be able to distinguish that the color is originated from the applicant.
When filing a trademark application claiming “color” only, it should be expressly indicated in the application form and the color code (pantone code) should be provided.
Should I add description of a trademark when filing application?
No, it is not required to describe a trademark when filing.
What are the advantages and disadvantages to register a trademark in color or black & white in Turkey?
It makes sense especially in terms of thegenuine use of a trademark. Turkey has accepted the Common Practice issued by the European Trade Mark and Design Network EUIPO with regards to black and white (B&W) or grayscale marks as compared with colored versions of the same mark.
The said practice especially brings clarification how the genuine use of a trademark is handled with the following evaluation criteria:
A change only in color does not alter the distinctive character of the trademark, as long as the following requirements are met:
-the word/figurative elements coincide and are the main distinctive elements,
-the contrast of shades is respected,
-color or combination of colors does not possess distinctive character in itself and,
-color is not one of the main contributors to the overall distinctiveness of the mark.
For establishing genuine use, the principles applicable to trade marks in B&W also apply to grayscale trademarks.
What is the publication term in Turkey?
The trademark applications are published for 2 months for the oppositions of the third parties in the Turkish Trademark Bulletin.
Should I appoint Turkish trademark agent for trademark proceedings in Turkey?
Anyone, natural or legal entity, who is resident in Turkey, can take any actions (filing, opposition, appeal etc.) before the Turkish Patent and Trademark Office without having to appoint trademark agent.
Natural or legal entities who are not resident in Turkey should be represented by a Turkish trademark agent for all the proceedings before the Turkish Patent and Trademark Office.
How is the priority claim handled under the Turkish Jurisdiction?
Priority may be claimed of one or more previous trade mark applications filed by the natural or legal entities, who are national or resident of the States party to the Paris Convention or WTO agreement or have established business in those States. The priority may be claimed during the 6 months following the first filing.
The priority claim (including the number, date and country of the previous application) should be filed together with Turkish trademark application and the specific fee for priority claim should be paid. The original priority certificate with its translation into Turkish approved by a sworn translator should be submitted within 3 months from the date of filing of the Turkish trademark application.
Which classification system is used by the Turkish Patent and Trademark Office?
Nice Agreement Concerning the International Classification of Goods and Services is used for the classification of the goods and services of the trademark applications.
How do the applicants select and designate the goods and services when filing the trademark application with the Turkish Patent and Trademark Office?
There are two different ways to designate the goods and services for the trademark applications.
The applicants can designate the goods and services under the standard heading of each class specified by the Turkish Patent and Trademark Office in accordance with the Nice Agreement. Please click here to find the list of goods and services announced by the Turkish Patent and Trademark Office.
The applicants can also specify their own list of goods and services without depending on the standard headings. In the case of the specific list of goods and services created by the applicants, the goods and services should be very specific and clear and not cover any general terms in respect of the claimed goods and services. Otherwise, it should be expected to receive office action asking the applicants to specify the goods and services by specific terms or remove any lack of clarity regarding the specific goods and services, which will substantively prolong the registration process. In the formation of the specific list of goods and services, it is advisable to use the TMclass tool or Madrid MSG tool.
In the practice, the applications of standard headings proceed to faster than the applications of specific list of goods and services.
Is there any specific requirement for retail services under Class 35?
Yes, it is not accepted to use broad terms in respect of the goods or the expressions such as “variety of goods” under Class 35. The goods should be specified. Take the following:
Inappropriate: The bringing together, for the benefit of others, a variety of goods enabling customers to conveniently view and purchase those goods (said services provided with retail, wholesale stores, electronic medias, catalogues and other similar methods).
Appropriate: The bringing together, for the benefit of others, of the goods “…” enabling customers to conveniently view and purchase those goods (said services provided with retail, wholesale stores, electronic medias, catalogues and other similar methods).
Is there any possibility to correct errors in the trademark applications?
Spelling errors and obvious errors can be corrected upon request. The corrections such as to change the trademark specie, the trademark or list of goods and services are not allowed.
Do the Turkish Patent and Trademark Office perform ex-officio examination upon filing a trademark application?
Yes, the Turkish Patent and Trademark Office perform ex-officio examination based on the absolute grounds.
The examination based on the absolute grounds also covers identicalness or similarity examination. If the Turkish Patent and Trademark Office find earlier identical and confusingly similar trademark, it refuses the applied-for trademark.
In the practice, the similarity examination is loosely performed unless the trademarks in conflict are highly similar. In other words, the examiner in charge allows the applied-for trademark to be published if the similarity is highly contestable. The strict similarity examination is performed during the examination based on relative grounds if any opposition is filed by third parties.
Which signs are not allowed within the scope of the absolute grounds set out in the Turkish Industrial Property Law (Law No. 6769)?
The following signs are not allowed for registration under the absolute grounds:
a) Signs which may not be trademark according to Article 4;
b) Signs which are devoid of any distinctive character;
c) Signs which consist exclusively or includes as an essential element of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of rendering of the services or other characteristics of goods or services,
ç) Signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type,
d) Signs which consist exclusively or includes as an essential element of signs or indications used by everyone in the trade area or which serves to distinguish members of a particular professional, vocational or commercial group from others.
e) Signs which consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or other characteristics which is mandatory to obtain a technical result or gives substantial value to the goods;
f) Signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;
g) Signs which shall be refused pursuant to Article 6ter of the Paris Convention;
ğ) Signs other than those covered by Article 6ter of the Paris Convention but which are of public interest, and which contain historical, cultural values, and emblems, badges or escutcheons for which the consent of the competent authority has not been given,
h) Signs that contain religious values or symbols;
ı) Signs which are contrary to public policy or to accepted principles of morality;
i) Signs which consist of a registered geographical sign or which contain a registered geographical sign.
Are there any exceptions in respect of possible refusals under the absolute grounds?
Yes, if a trademark has been used before the application, and through this use, has acquired distinctive character in respect of the goods and services subject to the application, the registration of this trademark may not be refused in accordance with subparagraphs (b), (c) and (d) of the first paragraph of the clause regarding the absolute grounds in the Turkish Industrial Property Law (see absolute grounds).
Is it possible to overcome a refusal under the absolute grounds due to earlier identical or confusingly similar trademark/s by filing Letter of Consent?
Yes, it is possible to overcome the said refusal by filing a letter of consent granted by the holder of the earlier trademark or trademarks.
Is there any specific procedure to submit the Letter of Consent?
Yes, the consent should be provided by a special form issued by the Turkish Patent and Trademark Office. The form should be notarized (legalized by apostil in the case of the non-residents in Turkey).
The consent should be provided without any conditions or reservations. The form should be filed together with the application. If the form is not submitted with the application and the application is refused due to earlier identical or confusingly similar trademark, the applicant can file an appeal against the decision and file consent form with the appeal to overcome the refusal.
Letter of Consent should be submitted for each trademark application separately.
Is there any appeal proceedings if a trademark application is refused based on absolute grounds by the Turkish Patent and Trademark Office?
Yes, if the trademark application is refused ex-officio based on the absolute grounds, the applicant can file appeal with all the arguments and evidences within 2 months (non-extendable) from the notification of the decision of refusal. The fee for appeal should be paid within the same time limit. After filing appeal, no further arguments or evidences are allowed to file.
What is the requirement for registering the trademark application if the application successfully passes all the stages (formal and substantive examinations, opposition proceedings, publication stages etc.)?
The registration fee should be paid within 2 months from the decision for registration.
The registration certificate should be expected within approx. 2 months from the payment of the registration fee. The certificate is issued electronically only and no printed copy is provided.
What is the protection term for registration for a trademark in Turkey?
The term of protection for registered trademark is ten years from the date of application. This term may be renewed for periods of ten years (see FAQs on the renewals).
OPPOSITIONS
Which signs are not allowed upon opposition within the scope of the relative grounds in the Turkish Industrial Property Law?
The following signs are not allowed for registration under the relative grounds upon opposition:
(1) An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered.
(2) A trademark application for the registration of an identical or indistinguishably similar trademark filed by a commercial agent or representative in his own name without the trademark proprietor’s consent and without any justifiable ground shall be refused upon the trademark proprietor’s opposition.
(3) If a right to a non-registered trademark or to another sign used in the course of trade was acquired prior to the date of application or the date of the priority claimed for the application for registration of a trademark, the trademark application shall be refused upon opposition of the proprietor of that prior sign.
(4) Trademark applications which are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of the identical and similar goods or services.
(5) A trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark due to the reputation the earlier trademark has in Turkey; shall be refused upon opposition of the proprietor of that earlier trademark.
(6) An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright or any other intellectual property right of another.
(7) An application for registration of a trademark identical to or similar to a collective mark or a guarantee mark with identical or similar goods or services, that is filed within three years following the expiration of the protection of the collective mark or guarantee mark due to non-renewal shall be refused upon opposition of the previous right holder.
(8) An application for registration of a trademark identical to or similar to a registered trademark with identical or similar goods or services, that is filed within two years following the expiration of the protection of the registered trademark due to non-renewal shall be refused upon opposition of previous trademark proprietor provided that the trademark has been used during this period.
(9) Trademark applications filed in bad faith shall be refused upon opposition.
What is the deadline for opposition?
The deadline for opposition is 2 months from the publication date of the trademark application.
Is the time limit to file the opposition extendable?
There is no possibility of time extension to file opposition.
Is it possible to lodge opposition without grounds and evidences to meet the deadline and submit the substantive arguments later than the deadline?
No, the opposition should be filed with all arguments and evidences before the non-extendable deadline.
Is there any fee to be paid for opposition?
Yes, there is opposition fee to be paid. The opposition fee should be paid before the deadline and the payment info should be sent to the Turkish Patent and Trademark Office before the deadline. If the opposition fee is not paid within the deadline, the opposition is deemed not to have been filed and there is no possibility of recovery if the payment is not made in due time.
Is the applicant of the opposed trademark allowed to file observations against the opposition?
Yes, upon receipt of the opposition, the Turkish Patent and Trademark Office send a notice of opposition to the applicant and ask his/her opinion within 2 months from the date of notice. If no observation is filed within due date, the opposition is performed in view of all the arguments and evidences on hand.
Is there any mediation practice during the opposition?
Yes, the Turkish Patent and Trademark Office may, at its discretion, invite the parties to come to an agreement on the conflict. If the parties agree for mediation, the proceedings are performed in view of the Mediation Law (Law No. 6325).
Is any evidence of use regardin the opposing trademark(s) required by the Turkish Patent and Trademark Office?
Yes but with the following conditions:
- The applicant of the opposed mark should ask the opponent to submit evidence of use regarding the trademark(s) indicated as ground for opposition.
- The trademark(s) indicated as ground for opposition has/have been registered at least 5 years on the filing date of the opposed trademark.
In view of the above, Turkish Patent and Trademark Office send a notification to the opponent and ask the opponent to submit evidence of use within 2 months from the notification date.
The opponent should prove that the trademark or trademarks indicated as ground for opposition were genuinely used in respect of the goods and/or services within 5 years before the filing date or priority date – if priority is claimed - of the opposed mark.
If the opponent fails to prove the subject use, the opposition is refused. If the opponent can partially prove the subject use for some of the goods and services, the opposition is handled in view of the goods and services in respect of which the use is proved.
The failure to prove the use does not necessarily cause to the loss of rights on the trademark(s) indicated as ground for opposition. However, it is a strong indication that the trademark(s) indicated as ground for opposition, for which the use has not been proved, are vulnerable to non-use attack if 5-years use period have already passed from the registration date/s.
What kind of evidences should be submitted to prove genuine use?
The evidences should indicate the place, time, extent and nature of use of the opposing trademark for the goods and services in respect of which it is registered and on which the opposition is based. For instance, evidence may be any supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements.
Is it possible to withdraw an opposition?
Yes, opposition can be withdrawn anytime during any stages of the opposition (first instance or appeal). If the opposition proceedings are represented by Trademark Attorney, a Power of Attorney covering express authorization for withdrawal should be submitted.
Is there any appeal proceedings if a trademark application is refused upon opposition?
Yes, if the trademark application is refused upon opposition, the opponent can file appeal with all the arguments and evidences within 2 months (non-extendable) from the notification of the decision of refusal. The fee for appeal should be paid within the same time limit. After filing appeal, no further arguments or evidences are allowed to file.
Is the applicant allowed to file observations to the appeal filed due to the refusal of the opposition?
Yes, the applicant is asked to submit his/her observations within 2 months from the notice of appeal.
CANCELLATION & INVALIDATION
Is it possible to file revocation action against the decisions of Turkish Patent and Trademark Office?
Yes, after the appeal decision, any of the parties can take revocation action against the decision before Ankara IP Court within 2 months from the notification of the appeal decision. All the arguments and evidences are limited to what have been submitted during the opposition and appeal proceedings before the Turkish Patent and Trademark Office.
On which basis can the trademark rights be cancelled (revoked)?
The trademark rights can be cancelled (revoked) on the basis of one of the followings:
- In the absence of genuine use within 5 years following the registration of trademark rights or the genuine use has been interrupted for over 5 years.
- If the trademark has become the common name for a product or service for which it is registered due to the acts of the trademark holder and the holder has not taken sufficient measures to prevent that.
- If the trademark has become misleading the public concerning the nature, quality or geographic origin of the goods or services for which it is registered, due to the use by the trademark holder or with the trademark proprietor’s consent.
Is there any specific conditions regarding the non-use cancellation actions?
The 5 years use requirement is not absolute. If the trademark is used after the expiration of 5 years but no later than the date of cancellation request, non-use action is not accepted.
In other words, if a trademark has been put into use after the date of expiration of 5 year use period but before the date of non-use cancellation action, the trademark is deemed to have been used and cancellation action is refused. However, if a trademark is put into use within 3 months before the date of cancellation action with the considerations that a cancellation request would be filed, such use is not taken into account.
Which authority is responsible for handling the cancellation actions?
Turkish Patent and Trademark Office are authorized to handle and process the cancellation actions. However, pursuant to the Turkish Industrial Property Law (issued on 10 January 2017), the cancellation actions will be handled by the Turkish IP Courts during the 7 years from the issuance of the Code, i.e. till 10 January 2024. Therefore, the cancellation actions will and should be filed with the Turkish IP Courts till 10 January 2024.
On which basis is the invalidation actions handled?
Invalidation actions can be taken before the Turkish IP Courts any time based on any conditions mentioned under the relative and absolute grounds.
Is there any specific time limit to file invalidation action?
There is no specific time limit. However, in the cases of invalidation actions based on the identicalness or confusingly similarity, if the holder of an earlier right acquiesces in the use of a later Turkish trade mark for a period of five successive years, he or she will no longer have the right to file an application for invalidity, unless the later trademark is registered in bad faith.
Are there any specific instances in respect of the invalidation actions?
When an invalidation action is filed against a registered trademark based on identicalness or confusingly similarity of an earlier trademark registration (s), the defendant can ask the claimant to prove the use of the trademark registration (s) within 5 years before the filing date of the invalidation action. Furthermore, the claimant should prove that he or she has genuinely used his/her trademark(s) indicated as ground for invalidation (provided that 5 years passed over from it/their registration(s)) within 5 years before the filing date or priority date – if priority is claimed – of the trademark registration subject to the invalidation action.
How can I learn if there has been taken any cancellation or invalidation action against my trademark?
If any cancellation action or invalidation action is filed against a trademark registration, the Court notifies the trademark holder of the cancellation or invalidation action directly without notifying the trademark agent in the trademark registry.
In case that the trademark holder is non-resident in Turkey, the notice of court action (with all the translations of the court petition) is served through Turkish Ministry of Justice on the trademark holder by the diplomatic means, and the 2-weeks time limit to submit instrument for representation and file response to the claims starts as from the receipt of the notice of court action.
The time limit to submit counter arguments can be extended at the discretion of the Judge provided that the request for extension is submitted with the 2-weeks due date from the receipt of notice of court action.
What is the difference between cancellation and invalidation in terms of their ensuing effects?
The difference is that cancellation applies as from the date of the request, whereas a declaration of invalidation removes the registration from Turkish trademark registry with retroactive effect, namely from the very beginning.
Is the losing party required to pay the expenses during a cancellation or invalidation action?
Yes, the losing party bears the court expenses, expert fees (if any) as well as the attorney fees. The attorney fees are limited to the standard representation fees announced by the Bar.
Can the trademark agents be involved in the cancellation or invalidation proceedings before the Court?
The Lawyers can only get involved in the cancellation or invalidation proceedings before the Courts. The trademark agents who do not hold law degree are not allowed to represent the clients before the Courts.
The trademark agents, who do not hold law degree, will be allowed to represent the clients in the cancellation proceedings to be held before the Turkish Patent and Trademark Office after 10 January 2024.
How long do the cancellation or invalidation proceedings take?
It is hard to estimate the time. In general, it takes approx. 18-24 months at the first instance.
RENEWALS
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.
RECORDALS
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 ADRESS
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.
RENEWALS
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.
RECORDALS
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 ADRESS
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.
