The essential considerations in a trademark assignment agreement are executing the agreement in writing before a notary public, clearly specifying the assigned classes of goods and services, and registering the assignment with the Turkish Patent and Trademark Office registry. Pursuant to the Industrial Property Code No. 6769 (IPC), failure to comply with formal validity requirements renders the assignment transaction null and void. Explicitly stipulating the rights and obligations of the parties within the agreement prevents future disputes.
What is a trademark assignment agreement and what elements does it contain?
A trademark assignment agreement is a binding transaction of disposition that permanently transfers the ownership right of a registered trademark or trademark application from the existing owner to another natural or legal person, with or without consideration. By virtue of this legal transaction, while the assignor relinquishes its monopoly right over the trademark, the assignee acquires all exclusive powers arising from registration.
When concluding an assignment agreement, the trademark registration number, trademark name, logo, and the classes of goods or services within the scope of registration must be set forth unequivocally. Trademark assignment does not merely signify the delivery of the registration certificate; it also signifies the transfer of pecuniary and non-pecuniary powers attached to the trademark.
The trade names, tax identification numbers, official notification addresses of the parties, and the payment terms of the assignment price must be stipulated in the agreement. The method of payment, bank receipt descriptions, and payment maturities bear practical significance among the constituent elements of the agreement.
Is the notary approval requirement mandatory in a trademark assignment agreement?
The notary approval requirement in a trademark assignment agreement is strictly mandatory, as it is deemed a statutory validity requirement (a formal prerequisite the absence of which invalidates the transaction) pursuant to Article 148/4 of the IPC. Simple written assignment agreements that are not approved or drawn up ex officio before a notary public are sanctioned with absolute nullity (being void ab initio) under Turkish law.
Agreements executed in simple written form do not effect a transfer of title, even between the parties inter se. For the declaration of intention regarding the assignment to be legally valid, the parties or their authorized representatives must appear in person before a notary public:
- Prior to the notarial procedure, the official registry must be examined to verify whether the trademark is encumbered by any pledge (security interest), attachment, or preliminary injunction.
- If the transaction is carried out through an attorney-in-fact, the power of attorney must contain specific authority regarding the assignment or acquisition of trademarks.
- The registration number and the trademark denomination must be expressly stated in the deed of assignment drawn up by the notary public.
How is a partial trademark assignment executed?
A partial trademark assignment is the transaction of transferring only a portion of the classes of goods and services covered by a registered trademark to another person, rather than all of them. Pursuant to Article 148 of the IPC, the trademark proprietor may retain any of the registered classes and assign the rights pertaining to other classes to a third party under an independent agreement.
When a partial assignment is executed, a new trademark record is created for the assigned commodities (commercial goods and services), and an independent registration certificate is issued in the name of the assignee. The remaining classes continue to be maintained under the original registration number by the previous owner.
The most critical aspect in a partial assignment is that the assigned classes and the retained classes must not be similar or complementary in nature. If the use of identical or similar groups of goods by different undertakings would create a likelihood of confusion among consumers, the registration authority may reject the assignment request, or unfair competition disputes may arise in the market.
Why are the registration and publication of the assignment transaction in the TÜRKPATENT registry required?
The registration of the assignment transaction in the registry maintained before the Turkish Patent and Trademark Office (TÜRKPATENT) and its publication in the official bulletin are mandatory in order to assert the assignment against bona fide third parties. Even if an agreement concluded before a notary public is binding inter partes, it provides no legal protection against third parties unless registered in the registry.
Pursuant to Article 148/5 of the IPC, as long as the assignment transaction is not recorded in the registry, the formal authority of disposition over the trademark continues to appear in favor of the previous proprietor. This gives rise to the risk of the former trademark proprietor re-assigning the trademark to another party in bad faith, or of third parties levying an attachment on the trademark due to debts of the former proprietor.
The application for recordal in the registry may be filed by either party. During the application, the original or a certified copy of the notarized assignment agreement is submitted to the Office, and the relevant official procedural fee is paid. Since official fees and registration costs are updated annually, the official tariff in force at the time of application must be verified.
What are the rights and obligations of the parties in a trademark assignment agreement?
In a trademark assignment agreement, the primary obligation of the assignor is to transfer all rights in the trademark to the assignee free and clear of all legal and factual defects. The primary obligation of the assignee is to timely pay the agreed assignment price and to perform in full its documentation obligations incumbent upon it during the registration process.
Within the scope of the assignor’s obligations, any pending invalidation actions, infringement actions, or ongoing opposition proceedings instituted against the trademark must be disclosed to the assignee in accordance with the principle of good faith. In the event of concealment of information or fraudulent misrepresentation, the assignee may invoke the statutory warranty provisions against eviction (liability against superior title claims of third parties).
Other rights and obligations that should be incorporated into the agreement include:
- A non-compete covenant stipulating that the assignor shall not re-register the same trademark or a confusingly similar sign in the future,
- The handover procedure for domain names, social media accounts, and commercial collateral associated with the trademark to the assignee,
- Determination of which party shall hold the right to claim damages concerning trademark infringements accrued prior to the date of assignment.
What are the most common mistakes made during the trademark assignment process?
The most common mistakes made during the trademark assignment process are executing a simple agreement without notarial certification, omitting recordal in the TÜRKPATENT registry, and failing to include associated domain names within the scope of the agreement. Even where the consideration has been paid between the parties, these omissions preclude the legal transfer of title and give rise to commercial losses that are difficult to remedy.
The most prevalent mistake is conflating the transfer of a business enterprise with the assignment of a trademark. While trademarks are deemed transferred upon the transfer of an enterprise in its entirety unless agreed otherwise, the requirements of notarial execution and registration cannot be bypassed in an independent trademark assignment.
Another critical mistake is excluding the copyrights in the registered logo or design of the trademark from the assignment. Trademark registration solely confers industrial property protection; if the copyrights of the author who designed the logo are not incorporated into the agreement, copyright infringement claims may arise under the Law No. 5846 on Intellectual and Artistic Works.
Which court has subject-matter and territorial jurisdiction over disputes arising from trademark assignments?
The court with subject-matter jurisdiction over disputes arising from trademark assignments is the Civil Court for Intellectual and Industrial Property Rights; in jurisdictions where this court has not been established, the Civil Court of General Jurisdiction has competence. As a general rule, territorial jurisdiction lies with the court of the defendant’s domicile or the court of the place where the contract is to be performed.
For instance, in trademark assignment disputes arising within the territorial boundaries of Antalya, the competent court is the Antalya Civil Court for Intellectual and Industrial Property Rights. If the domicile of one of the litigants is situated within Antalya, the action is heard before this specialized court.
If the parties are merchants or public legal entities, they may confer jurisdiction upon a specific court by inserting a jurisdiction clause into the agreement. However, since rules governing subject-matter jurisdiction pertain to public policy, altering the court having subject-matter jurisdiction by agreement is legally impossible.
Hypothetical example
The following scenario is fictional. A business owner enters into a simple written protocol executed solely between the parties without notary approval to transfer a registered trademark to another company, and collects the assignment price. The assignee company commences using this trademark in its commercial operations; however, because the assignment was not executed before a notary public and registered with the Office registry, legal ownership remains with the assignor. In the intervening period, the registered trademark is attached by the enforcement office on account of debts owed by the assignor enterprise. In this scenario, the assignment is deemed invalid due to non-compliance with the statutory formal requirements; the assignee cannot claim title and may only demand the restitution of the price paid pursuant to the provisions on unjust enrichment.
Frequently asked questions
Can a trademark application be assigned before registration is finalized?
Yes, a pending trademark application that has not yet been registered may also be assigned to third parties pursuant to the provisions of the IPC. Assignment transactions at the application stage are likewise subject to notarial certification and notification to the TÜRKPATENT registry; the registration certificate is issued in the name of the new proprietor upon completion of the process.
Is there a statute of limitations for a trademark assignment agreement executed before a notary public?
No, there is no mandatory statutory preclusion period prescribed by law for registering a trademark assignment agreement validly executed before a notary public with TÜRKPATENT. However, as the assignor’s powers of disposition and the risk of attachment persist until registration, the application should be filed expeditiously.
What expense items are payable in a trademark assignment transaction?
Notary service fees and the TÜRKPATENT official registry recording fee constitute the primary expense items. Where the parties retain legal counsel, attorney fees are also added to these items; current tariffs of the relevant authorities should be reviewed prior to the transaction for official fee and tax amounts updated annually.
Is the assignment of an unregistered trademark possible via a notarial agreement?
No, signs that are not registered or filed for application before TÜRKPATENT do not constitute a trademark right under the IPC and therefore cannot be the subject matter of a trademark assignment agreement. The transfer of unregistered signs is possible only under general provisions through the procedures governing the transfer of business assets or trade names.
References
- Industrial Property Code No. 6769
- Turkish Code of Obligations No. 6098
- Law No. 5846 on Intellectual and Artistic Works
This text is for general informational purposes; outcomes may vary depending on the specific circumstances of the case.
