Intellectual property rights holders may permit third parties, through license agreements, to use their intellectual property rights nationwide or only in certain regions. In this short article, we analyze the general provisions regarding license agreements for trademarks, designs, patents, and utility models under the Industrial Property Code No. 6769. [1]

License Agreement

Licensors and licensees may determine the conditions of the license within the boundaries of the freedom of contract.

Regardless of whether a trademark, design, or patent right is concerned, license agreements are deemed non-exclusive unless otherwise explicitly stated in the agreement. In non-exclusive license agreements, licensors may enter into new license agreements with third parties other than the licensee and may use the relevant intellectual property right themselves. On the other hand, in exclusive license agreements, licensors cannot enter into new license agreements with third parties and, unless they have reserved their right, cannot use the respective intellectual property right either.

Unless otherwise agreed in the agreement, an exclusive licensee is entitled to initiate all types of lawsuits in the event of infringement of the relevant intellectual property right. However, a non-exclusive licensee’s right to initiate a lawsuit against infringement is, in principle, limited.

For trademarks, partial licenses—i.e., granting a license only for certain goods and services—are possible. In the case of multiple design applications, a license may be granted for all or only some of the designs covered by the multiple application.

Optionally Recorded with the Turkish Patent and Trademark Office

Contrary to assignment agreements, there are no provisions under Turkish law requiring license agreements to be notarized for validity. The record of a license agreement with the registry of the Turkish Patent and Trademark Office (TPTO) is voluntary.

However, there are certain advantages to recording license agreements with the registry. These may be listed as follows:

• Unless the license agreement is recorded with the registry, it is not enforceable against third parties acting in good faith.

• Licensors cannot waive their trademark, design, or patent rights without the permission of the licensee whose license is recorded with the registry.

• Licensors cannot renew their trademark partially without the permission of the licensee whose license is recorded with the registry.

• Licensors cannot provide a consent letter to third parties for the registration of identical or similar trademark applications without the permission of the licensee whose exclusive license is recorded with the registry.

• If an exclusive patent license is recorded with the registry, licensors cannot request the TPTO to publish a license offer to third parties.

To record the license with the TPTO registry, the following must be submitted:

• A petition requesting the record of the license agreement

• The license agreement, and if concluded in a foreign language, its Turkish translation approved by a sworn translator

• Information confirming the payment of the record fee