Turkmenistan (TM)
03-06-2012 (Newsletter Issue 4/12)
IP Legislation Amended
The law amending the Civil Code’s Part 4 entered into force on January 19, 2012.
The previous version of Part 4, titled “Author’s Rights”, was the main legal act on copyright and related rights in Turkmenistan, while the issues related to trademarks, patents and industrial designs were regulated by separate legal acts, which still remain in force.
The new Part 4 is titled “Legislation on Intellectual Property” and it outlines the legislative basics for the entire IP area, including copyright and related rights, database rights, patents, industrial designs, semiconductor topographies, selection achievements, trademarks and commercial names.
The new Part 4 also outlines the basics for IP licensing and assignment agreements, including the provisions on compulsory licensing and collective management of IP rights.
Finally, the new Part 4 provides legal remedies related to IP rights infringement. In particular, the new legislation clearly indicates the types of claims that the IP rights owner can file before the court.
In view of the replacement of the old Part 4 of the Civil Code, the Turkmenistan parliament adopted a separate copyright and related rights law, which entered into force on January 20, 2012.
Source: PETOŠEVIĆ Client Service Office, Belgium
10-01-2011 (Newsletter Issue 11/11)
Use Requirement Compulsory
The national Law on Trade and Service Marks that became effective on November 15th, 2008, introduced oppositions and cancellation actions due to non-use.
Effective November 15th, 2011, the use of registered trademarks will be compulsory. The grace period for non-use of a registered trademark is three years as of the registration or the last use date.
This means, that beginning from November 15, 2011, any trademark, registered before November 15, 2008, can be canceled due to non-use. Trademarks registered after November 15, 2008 can be canceled due to non-use after 3 years of non-use.
However, the rules on filing opposition are not adopted yet. The official fee for filing an opposition is about EUR 75.
Source: www.liapunov.com
Legal basis is the Trademark Law of November 15, 2008.
Turkmenistan is a member of the Madrid Protocol.
Trademark protection is obtained by registration.
Trademarks which were protected in the former Soviet Union are protected in Turkmenistan only, if they were transcribed within the period stipulated.
Nice classification
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, three-dimensional forms and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks and collective marks.
The application is filed at the Patent Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A power of attorney is necessary. It should be notarised or stamped.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
After registration, the trademark is published in the Patent Office Gazette.
National:
An opposition against pending application can be filed by any person during the examination (item 7, Art. 11 of the Trademark Law). After the mark is granted protection and the registration certificated is issued, the mark details are published in the Official Bulletin, and it may be opposed by any person before the Board of Appeal.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
The opposition period starts from the date of the publication in the WIPO Gazette. An opposition is possible at any time before issuance of the final decision by the Trade Marks Office/Registry.
A trademark registration is valid for 10 years from the date of registration, if the application was filed before November 15, 2008. If the application has been filed after the mentioned date, it is valid within 10 years from the filing date. The registration is renewable for periods of 10 years.
If the trademark has not been used within 3 years from registration or has not been used later for a continuous period of 3 years, it may be subject to cancellation. This provision takes effect on November 15, 2011.
The official fee is approx. EUR 165.00 for one class, approx. EUR 82.00 for each additional class and approx. EUR 205.00 for the registration.
Trademark Licence Agreement
In Turkmenistan a licence to use a trademark must be in writing. Licensing of unregistered trademarks is not permitted. A proprietor can register a user in respect of only some of the goods or services for which the trademark is registered or in respect of a specific territory in which the trademark use may be exercised by the user. This is determined by the type of licence granted (exclusive, non-exclusive etc.) as agreed upon between the parties. The sale of a registered trademark automatically terminates the licence, but it can be extended upon agreement. The licence agreement shall contain a quality clause that will oblige the licensee to produce goods not inferior to those produced by the licensor, and that the licensor shall closely monitor the observation of quality provisions.
A licence agreement between an importer/distributor of goods into and in Turkmenistan and an owner of the respective trademarks is obligatory.
Recordal
There are provisions in law for the mandatory recordal of a licence. There is no time frame for the recordal of a licence agreement.
The following documents are required for a recordal:
1. Powers of attorney from both parties (certified with a corporate seal or notarised)
2. Two original agreements or two notarised copies thereof (the signatures on the agreements shall be certified by a corporate seal or notarised) including a list of the trademarks that are subject of the agreement, signed by the parties
Effectiveness
The licence is effective upon its recordal and has to be published in the Bulletin of the Turkmenistan Trademark and Patent Office.
Infringement Proceedings
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the owner in infringement proceedings. The user can institute proceedings during the whole term of the licence agreements, if this has been specified by the agreement. He must cite the trademark owner as co-defendant. The scope of rights and duties of a user of the licence should be clearly provided for in the licence agreement.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
590,00 € |
190,00 € |
| Word Mark Search (identical) |
540,00 € |
180,00 € |
| Extended Search (word mark, company name, domain) |
930,00 € |
190,00 € |
| Device Mark Search (availability) |
790,00 € |
270,00 € |
| Trademark Owner Search |
440,00 € |
|
| Company Name Search |
440,00 € |
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
790,00 € |
280,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
03-07-2012
Liapunov, St. Petersburg, Russian Federation
PETOŠEVIĆ Client Service Office, Overijse, Belgium
09-30-2011
Liapunov, St. Petersburg, Russian Federation
Licensing
03-07-2012
Liapunov, St. Petersburg, Russian Federation
11-02-2011
IPR Group, Kiev, Ukraine