June 2008
TRANSFER OF TRADEMARK
Introduction
The right of trademark which is one of the most important rights in the field of industrial property may be object of legal acts because of its increasing economical value and its becoming independent. A registered trademark can be transferred to other people, can be inherited, its use can be object of a licence agreement, can be pledged and can be taken in execution. Acts on trademarks among living are subject to written form. Agreements which are not in written are invalid.
Among the legal acts on trademark which are regulated in the Statutory Decree no. 556, transfer of trademark is the most comprehensive one. Insofar as with the transfer, the owner transfers his absolute right on the trademark to the transferee and looses its right to use that right.
As the transfer of the trademark is a way to use it, with the conclusion of a valid transfer agreement, the trademark runs out of the assets of the transferor and enters into the assets on the transferee.
Legal acts on the transfer, licence, heritage, attachment, pledge and the changes on the owner of the trademark are also applicable to the applications for trademark.
Content of the transfer
According to the article 16/1 of the Statutory Decree no. 556 trademark may be transferred in whole or in part regarding the goods or services it represents. However, for the trademark to be partially transferred, it shall be registered for more than one goods or services. In other words, a trademark registered for one type of goods or services cannot be transferred partially.
For the goods or services transferred partially, a new file opens for the transferee, a new trademark registration certificate is issued for the subjects of the transfer and a new trademark registration number is given. The trademark is registered with the new registration number indicating also the first registration date, and it is published in the Trademark Gazette.
Although the transfer of a part of the goods or services represented by the trademark is possible, trademark owners cannot transfer their trademarks to different people in different regions of Turkey because of the principle of territoriality. However, the use of the trademark can be divided into regions by issuing licences to different people in different regions.
The Statutory Decree no. 556 brings some limitations aiming at the protection of consumers from the disadvantages of the transfer of a trademark. If the transfer of the trademark may lead to confusions regarding the geographical origin of the goods or services, their quality or the trademark itself, the Institute may require the trademark to be limited in a way to prevent such confusion. Besides, in case if there are other registered trademarks equal or similar to the transferred one representing equal or similar goods, the transfer of them will be required as well.
If the TPE (Turkish Patent Institute) registers a trademark without noticing that it leads to confusions regarding the geographical origin of the goods or services, their quality or the trademark itself, , this will be a reason of invalidity of the registration under the article 7/I-f of the Statutory Decree no. 556.
Formal requirements for the transfer of trademark
In principle, the transfer of a trademark shall be made in written and signed by the parties; otherwise it will be invalid. The articles 2 and 3 of the Statutory Decree no. 556 which regulate the formal requirements for the transfer of trademark provide for two exceptions to the requirement of written form. Accordingly, in cases where the transfer of trademark is made by a court decision or it is transferred together with the enterprise, no written transfer agreement is required.
Transfer of trademark is registered and published on the demand of one of the parties. Both parties of the transfer agreement may demand the transfer to be registered. The registration of the transfer of the trademark is not essential for the validity of the transfer. For the purposes of legal security, parties may not allege their rights to third persons acting in good faith until the transfer is registered. However, this article does not imply that the parties acting in good faith relying on the registries will be protected. Because, as mentioned above, as the transfer of a trademark is a way of using it, with the conclusion of a valid transfer agreement the trademark runs out of the assets of the transferor and enters into the assets on the transferee.
Transfer of warranty marks and common marks is subject to another form. Differing from the general rule, for the transfer of a warranty mark or of a common mark, the written transfer agreement shall be registered into trademark registries. In other words, differing from the transfer of personal trademarks, registration of the transfer of a warranty mark or of a common mark into trademark registries is required for the validity of the transfer.
Consequences of the transfer
The transfer of a trademark does not change its legal status. For this reason, no new protection period will start with the transfer of trademark. To put in other words, the transferee will benefit from the rest of the protection period of ten years. Regarding the consequences of non-using the trademark within five years of the registration, no new period of five years will start.
As the duties on trademark do not impede its transfer, transfer of a pledged trademark or a trademark taken in execution is possible.
It is also important the rights of the transferee in case of cancellation of the trademark. The general rule in the cancellation of a trademark is that the effects of the cancellation are retrospective. However, contracts made and executed before the decision of cancellation of the trademark –here, transfer agreement- will not be effected by the decision of cancellation. Refunding the transfer price in whole or in part may be possible on the basis of equity depending on particular circumstances of the cases. Besides, in case if the transferor transfers the trademark while being conscious of a reason of invalidity of the trademark and does not reveal this to the transferee, he shall be liable from the damages of the transferee occurred because of the bad faith of the trademark owner. However, if the transferee knew the reasons of invalidity at the moment of the transfer, transferor shall not be liable.
Conclusion
In parallel to the developments in the field of intellectual and industrial rights, trademarks reached an economical value independent from the enterprise it represents. For this reason, trademarks can be transferred independently as well as together with the enterprise. Transfer of trademark has a particular importance among the acts on trademarks as it changes the owner of the trademark. However, the legislator found it sufficient the transfer of trademark to be made in simple written form. We shall mention that in practice, the Turkish Patent Institute requires the written transfer agreement to be authenticated by public notary. Although the registration is of explanatory quality, parties cannot allege their rights against third parties acting in good faith unless the transfer is registered; thus, it would be appropriate to make the transfer agreement authenticated by public notary.
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