TRANSFER OF TRADEMARK RIGHTS 7 February 2025

Transfer of Trademark Rights in Turkish Law

Trademarks are significant economic assets that constitute the identity of a business and help distinguish its goods and services. In Turkish law, the transfer of trademarks is regulated by the Industrial Property Law No. 6769 (“IPL”). The transfer of a trademark must be carried out in accordance with specific procedures and conditions; otherwise, the transfer transaction is deemed invalid. This article discusses key details of the trademark transfer process.

Transfer of Registered and Applied-for Trademarks

In Turkey, trademarks that have been registered or applied for can be transferred to third parties through a trademark transfer agreement. The trademark transfer becomes official once the transfer agreement, notarized before a notary public, is submitted to the Turkish Patent and Trademark Office (“TPTO”) for registration. The TPTO records the transfer in the registry and publishes it in the bulletin. Upon the transferee’s request and payment of the required fee, a new Certificate of Registration is issued in the name of the new trademark owner.

Stages of Trademark Transfer

For a trademark transfer to be considered valid, the following conditions must be met:

1. Requirement of a Written Agreement: The transfer of a trademark must be executed through a written agreement and notarized for official validity. According to Article 148 of the IPL, notarization is a condition for the validity of the transfer. If this requirement is not met, the transfer transaction is deemed invalid.
2. Notarization: The trademark transfer agreement must be signed before a notary public by the authorized representatives of the parties or their attorneys acting under a power of attorney. Notarization is sufficient for the agreement to be considered established between the parties; however, for the transfer to be effective against third parties, it must be registered with the TPTO.
3. Notification to the Turkish Patent and Trademark Office: To make the transfer effective against third parties, it must be registered with the TPTO. For this registration, an application must be submitted to the TPTO, including a notarized copy of the transfer agreement, along with the payment of the transfer registration fee.
4. Registration in the Trademark Registry: Registering the transferred trademark in the registry is crucial to securing the rights of the new owner. Transfers that are not recorded in the registry have no legal effect against third parties acting in good faith.

Contents of the Trademark Transfer Agreement

The trademark transfer agreement is a contract that defines the rights and obligations of the parties and must contain certain essential elements for registration. The main points that must be included in the agreement are:

• Identity Information of the Transferor and Transferee: The names, addresses, and tax identification numbers of the parties should be clearly stated.
• Trademark Details: The application or registration number and registration date of the transferred trademark should be specified.
• Transfer Fee: The amount to be paid in exchange for the transfer of the trademark must be explicitly included in the contract.
• Scope of the Transfer: In the case of a partial transfer, a list of the goods or services to be transferred should be provided. If this information is missing, it is assumed that all goods and services represented by the trademark have been transferred.

Partial or Complete Transfer of a Trademark

According to Article 148/6 of the IPL, trademarks can be transferred either entirely or partially concerning the goods and services for which they are registered. In cases of partial transfer, both the transferor and transferee may continue using the trademark for different goods and services. However, to prevent potential legal disputes in the future, agreements between the parties should take into account the transferor’s other similar trademarks.

Trademark Transfer Along with a Commercial Enterprise

A trademark may be transferred independently from the business to which it belongs, or it may be transferred together with the commercial enterprise. The transfer of a commercial enterprise must be executed in writing and registered in the commercial registry (Article 11 of the Turkish Commercial Code). If a trademark is transferred along with a commercial enterprise, a separate trademark transfer agreement is not required.

Transfer by Court Decision or Together with a Commercial Enterprise

If a trademark is transferred by a court decision or along with a commercial enterprise, a written transfer agreement is not required. In such cases, the transferee automatically acquires all rights to the trademark.

Rights and Obligations After the Transfer of a Trademark

Once the trademark transfer is registered in the trademark registry, the transferor loses all rights over the transferred trademark. For instance, the transferor can no longer collect licensing revenues from the transferred trademark. From the date of registration of the transfer, the new owner assumes all rights and obligations related to the trademark.

Conclusion

The transfer of trademarks in Turkish law is subject to specific legal regulations, and compliance with these statutory procedures is crucial for both the transferor and the transferee. Particularly, obtaining notarization, registering the transfer with the TPTO, and fulfilling tax obligations are critical steps to ensure the validity of the transfer. Given the value of trademarks, obtaining legal assistance at each stage of the process will help ensure a smooth transaction for all parties involved.