In Turkey, the ownership of designs, regardless of whether they are registered or pending following application, can be transferred to third parties through a design assignment agreement. In multiple design applications, it is possible to transfer the designs completely or partially.
Agreement to be notarized and recorded
A design assignment must be concluded in writing and approved by a notary public. As per article 148 (4) of the Industrial Property Code numbered 6769, approval from a notary is a requirement for validity.
The assignment agreement must be signed by either the authorized signatories of the parties or their attorneys assigned through a power of attorney before the notary public. If the assignment agreement is to be signed outside of Turkey, the respective assignment must be notarized, apostilled (or legalized) in the respective country, and the respective notarized and apostilled copy of the agreement must be translated into Turkish by a sworn translator.
Although the notary approval has a constitutive effect between the parties of the agreement, the assignment of the design must also be recorded with the Turkish Patent and Trademark Office (“Office”) for the design assignment to become enforceable towards third parties.
For the assignment to be recorded with the Office:
A petition requesting the recordation of the assignment and a copy of the notarized assignment agreement must be submitted to the Office; and
An official recordation fee of the assignment, which is TRY 665 in 2021, must be paid to the Office.
The Office does not require the trademark/patent attorney to have a power of attorney for this recordation application.
Scope of the design assignment agreement
In addition to the detailed agreement, a short agreement may also serve the recording purpose of the design assignment provided that the following information is included in the agreement:
Identities of the assignor and the assignee,
Application/registration number of the design to be assigned,
If a partial assignment (in a multiple design application), design sequence numbers of the relevant designs,
If the assignment agreement is in a foreign language, an approved Turkish translation of the agreement by a sworn translator.
Assignment of ownership through a merger of companies or a court decision
The ownership of a design may also be changed as a result of a merger of two companies or a Turkish court decision ruling such a change. In such cases, the respective change in the ownership should also be recorded with the Office by submitting a petition requesting the change in the ownership and the official document evidencing such change (instead of the assignment agreement) with the payment of the official recordation fee to the Office.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 514 20 14