Turkmenistan law on Trademarks

Entered into force on June 19, 2019

This Law regulates relations arising in the field of legal protection and use of trademarks.

CHAPTER I. GENERAL PROVISIONS

Article 1. Basic concepts
The following basic concepts are used in this Law:
1) counterfeit goods - goods, their labels and packaging, on which a registered trademark or a designation similar to it to the point of confusion is illegally used;
2) examination - the procedure for consideration by the authorized body in the field of legal protection of trademarks - the State Service for Intellectual Property of the Ministry of Finance and Economy of Turkmenistan of the application, as well as other documents related to the state registration of a trademark;
3) the first application is an application filed with the relevant body of a state party to the Paris Convention for the Protection of Industrial Property (hereinafter referred to as the Paris Convention), according to the filing date of which the convention priority is established;
4) highlighted application - an application containing part of the list of goods specified in the first application and retaining its priority;
5) company name - a designation of a legal entity, which makes it possible to distinguish this legal entity from others when carrying out its activities;
6) Official Bulletin of Trademarks (hereinafter - the Official Bulletin) - a periodical of the authorized body in the field of legal protection of trademarks, intended for the publication of information on applications for state registration of trademarks and trademarks entered in the State Register;
7) trademark (service mark) - a verbal, pictorial or volumetric designation of any color (color combination) or their combination, which serves to individualize goods (works, services). Trademarks also include collective marks;
8) certificate for a trademark (collective mark) - a title of protection of Turkmenistan confirming the exclusive right of its owner (owners) to a trademark in relation to the goods and (or) services specified in the certificate;
9) assignment of rights to a trademark - transfer of rights to a trademark by its owner to another person on the basis of an appropriate agreement;
10) owner of a trademark - a person who has the exclusive right to a trademark;
11) priority of a trademark - the priority of filing an application in time;
12) application - a set of documents required for state registration
13) applicant - an individual who has submitted an application, engaged in entrepreneurial activity without forming a legal entity, or a legal entity engaged in entrepreneurial activity;
14) second-level national domain - a domain, the name of which includes the name of the top (first) level national domain (“.TM”) and its own name. A top (first) level ccTLD is a domain whose name is represented by the code of Turkmenistan approved by the International Organization for Standardization (ISO 31662). For Turkmenistan, the national top-level domain has the designation ".ТМ" and is the property of Turkmenistan. The TM domain is managed from the territory of Turkmenistan;
15) conventional application - an application for a trademark claiming conventional priority;
16) conventional priority - the priority of a trademark established by the filing date of the first application;
17) homogeneous goods or services - goods and (or) services related to the same genus, type of goods and (or) services, which, when marked with similar trademarks, can create in the consumer an idea of ​​their belonging to the same individual engaged in entrepreneurial activities without the formation of a legal entity, or a legal entity engaged in entrepreneurial activity (manufacturer);
18) patent attorney - a citizen of Turkmenistan permanently residing in Turkmenistan, certified and registered with an authorized body in the field of legal protection of trademarks and representing on a professional basis the interests of individuals and legal entities in obtaining the right to a trademark;
19) exhibition priority - the priority of a trademark, established by the date of the beginning of the open display of exhibits marked with a trademark at an exhibition organized on the territory of one of the member states of the Paris Convention;
20) The State Register of Trademarks of Turkmenistan (hereinafter - the State Register) - a document containing information about the image of the trademark, the list of goods and (or) services in respect of which the trademark is registered, the owner of the trademark, the date of filing the application, priority data of the trademark and the date of its state registration, as well as other information related to the state registration of a trademark.
Article 2. Legislation of Turkmenistan on trademarks
The legislation of Turkmenistan on trademarks is based on the Constitution of Turkmenistan and consists of this Law and other regulatory legal acts of Turkmenistan.
Article 3. Legal protection of a trademark and its duration
1. Legal protection of a trademark in Turkmenistan is provided on the basis of its state registration in the manner prescribed by this Law, or on the basis of the international registration of a trademark in accordance with the Protocol to the Madrid Agreement on the International Registration of Trademarks.
The right to a trademark is protected by law and is certified by a trademark certificate.
2. A trademark may be registered in the name of an individual who is engaged in entrepreneurial activity without forming a legal entity, or a legal entity engaged in entrepreneurial activity.
3. The owner of a trademark shall have the exclusive right to use and dispose of a trademark, as well as the right to prohibit the use of a trademark or a designation similar to it to the point of confusion by other persons. The exclusive right of the owner to a trademark extends to the goods (works, services) specified in the trademark certificate.
4. The term of legal protection of a trademark is ten years. In this case, the calculation of the specified period for applications filed before November 5, 2008, is made from the date of state registration of the trademark, and for applications filed after that date - from the date of filing the application.
5. No one has the right to use a trademark protected in Turkmenistan without the permission of the owner of the trademark.
Article 4. Representation
1. Individuals engaged in entrepreneurial activity without forming a legal entity and legal entities of Turkmenistan have the right to conduct business with the authorized body in the field of legal protection of trademarks, both directly and through representatives or patent attorneys.
2. Foreign individuals and legal entities exercise their rights in relations with the authorized body in the field of legal protection of trademarks through patent attorneys.
3. The powers of the representative or patent attorney are certified by a corresponding power of attorney.
CHAPTER II. STATE REGULATION AND CONTROL IN THE FIELD OF LEGAL PROTECTION AND USE OF TRADEMARKS
Article 5. Bodies exercising state regulation and control in the field of legal protection and use of trademarks
The bodies exercising state regulation and control in the field of legal protection and use of trademarks are the Cabinet of Ministers of Turkmenistan, the Ministry of Finance and Economy of Turkmenistan, the authorized body in the field of legal protection of trademarks - the State Service for Intellectual Property of the Ministry of Finance and Economy of Turkmenistan (hereinafter - Turkmenpatent).
Article 6. Competence of the Cabinet of Ministers of Turkmenistan
Cabinet of Ministers of Turkmenistan in the field of legal protection of trademarks:
1) determines the unified state policy;
2) issues normative legal acts;
3) coordinates the activities of public authorities;
4) performs other functions assigned to its competence by the legislation of Turkmenistan.
Article 7. Competence of the Ministry of Finance and Economy of Turkmenistan
Ministry of Finance and Economy of Turkmenistan in the field of legal protection of trademarks:
1) implements a unified state policy;
2) adopts regulatory legal acts;
3) ensures the fulfillment of the obligations assumed by Turkmenistan in accordance with international treaties on the legal protection of intellectual property objects;
4) approves: a) Regulations on Turkmenpatent;
b) The procedure for state registration of trademarks;
ç) Procedure for maintaining the State Register; d) Regulations on the Appeal Commission of Turkmenpatent;
f) Procedure for considering appeals of individuals and legal entities on violated or disputed rights to a trademark;
e) other provisions and procedures, as well as forms of documents related to the state registration of trademarks;
5) performs other functions attributed to its competence by the legislation of Turkmenistan.
Article 8. Competence of Turkmenpatent
Turkmenpatent in the field of legal protection of trademarks:
1) implements a unified state policy;
2) gives explanations on the application of the legislation of Turkmenistan on trademarks;
3) develops draft documents specified in paragraph 4 of Article 7 of this Law, and submits them for approval to the Ministry of Finance and Economy of Turkmenistan;
4) accepts applications for consideration, conducts an examination on them and carries out state registration of trademarks;
5) maintains the State Register and issues a trademark certificate;
6) carries out the publication of information about trademarks in the Official Bulletin;
7) develops proposals for improving the legislation of Turkmenistan in the field of intellectual property;
8) conducts certification and registration of patent attorneys;
9) provides paid services in accordance with the Regulation on Turkmenpatent;
10) performs other functions in accordance with the legislation of Turkmenistan.
CHAPTER III. STATE TRADEMARK REGISTRATION
Article 9. Purpose of state registration of trademarks
The purpose of state registration of trademarks is to ensure the protection of the rights and legitimate interests of trademark owners.
Article 10. Grounds for refusing state registration of a trademark
1. The state registration of a trademark may be refused on absolute or substantial grounds.
2. On absolute grounds, state registration as a trademark of designations is not allowed:
1) not having distinctive features or consisting only of elements that are: a) individual letters and (or) numbers that do not have a characteristic graphic design;
b) lines, simple geometric shapes, as well as their combinations that do not form compositions;
h) elements that have come into general use as designations of goods of a certain type, with the exception of cases when these elements acquire a distinctive ability as a result of their long-term use;
d) common symbols and terms;
ä) simple names of goods; ä) indications of the properties of the goods, including those of an advertising nature;
f) indications of the composition of raw materials;
g) indications of the weight, volume, price of the goods;
h) indications of the date of production of the goods;
i) an indication of the date of establishment of the production;
j) indications of the address of the manufacturer of the goods;
ž) designations consisting in whole or in part of geographical names that can be perceived as the location of the manufacturer of the goods. The elements specified in subparagraphs "a", "b", "dž" of this paragraph may be included in a trademark as unprotected elements if they do not occupy a dominant position in it;
2) indicating the characteristics of goods, including the type, quality, quantity, properties, purpose, value of goods, as well as the time, place, method of their production or sale;
3) representing the form of goods, which is determined exclusively or mainly by the properties or purpose of the goods;
4) representing or including:
a) the names of states or words derived from these names, as well as state emblems, state flags or elements of the indicated state symbols;
b) abbreviated or full names of international, intergovernmental organizations, their emblems, flags and other symbols and signs;
h) official control, guarantee and assay marks, seals, awards and other insignia or designations similar to them to the point of confusion. The designations specified in paragraph 4 of the second part of this article may be included in a trademark as unprotected elements on the basis of a permit issued by the relevant competent authority;
5) representing or containing elements: a) capable of misleading the consumer regarding the product or its manufacturer; b) contrary to public interests, principles of humanity and morality;
6) identical or similar to the degree of confusion with the names and (or) images of especially valuable objects of the cultural heritage of the Turkmen people or objects of the world cultural or natural heritage.
3. On substantial grounds, state registration as a trademark of designations that are identical or confusingly similar is not allowed:
1) with the trademarks of other persons applied for state registration (if the applications for them have not been canceled) or protected in Turkmenistan, including in accordance with the international treaties of Turkmenistan, in relation to similar goods and having an earlier priority;
2) with appellations of origin of goods protected in Turkmenistan, except for cases when these designations are included as unprotected elements in trademarks registered in relation to the same goods in the name of persons entitled to use such names;
3) industrial designs protected in Turkmenistan in relation to similar goods, names of breeding achievements, trade names, proper names of the national second-level domain, the rights to which in Turkmenistan arose in other persons before the priority date of the trademark applied for state registration;
4) names included in the list of International Nonproprietary Names of Pharmaceutical Substances and Active Pharmaceutical Ingredients of the World Health Organization;
5) the names of works of science, literature and art known in Turkmenistan as of the date of filing the application, characters or quotations from such works, works of art or their fragments without the consent of the copyright holders or their successors, if the rights to these works arose earlier than the priority date claimed on state registration of a trademark;
6) surnames, first names, pseudonyms or designations derived from them, portraits and facsimiles of persons known at the filing date of the application without the consent of these persons or their heirs, or without the permission of the relevant state body.
Article 11. Submission of the application
1. The application is submitted to Turkmenpatent.
2. The application can be filed by an interested person, as well as through his representative or patent attorney.
Article 12. Requirements for the application
1. An application for state registration of a trademark must relate to one trademark.
2. The application must contain: 1) an application for state registration of the designation as a trademark indicating the name of the applicant, his location or place of residence; 2) the claimed designation and its description;
3) a list of goods and (or) services in respect of which state registration of a trademark is requested, grouped by classes of the International Classification of Goods and Services for the Registration of Trademarks. If the headings of the classes of the International Classification of Goods and Services and other general terms are indicated in the list of goods, the scope of trademark protection includes only those goods and (or) services that are clearly covered by the literal meaning of the general indication or term. Inclusion in the list of the wording “all goods and (or) services included in the specified class of the International Classification of Goods and Services” is not allowed;
4) class, subclass or heading of figurative elements of a trademark in accordance with the International Classification of figurative elements of a trademark.
Requirements for application documents are established by Turkmenpatent.
3. The application must be accompanied by:
1) a document confirming the payment of the filing fee;
2) a power of attorney certifying the authority of a representative or patent attorney, if the application is submitted through one of them;
3) information about the collective mark, if the application is submitted for state registration of the collective mark. In some cases, other documents required for state registration of a trademark may be attached to the application. The documents attached to the application, except for the document confirming the payment of the corresponding fee for filing the application and submitted simultaneously with the application, must be submitted to Turkmenpatent within three months from the date of receipt of the application. At the request of the applicant, the specified period may be extended, provided that the application was received before the expiration of this period and the corresponding fee has been paid. The extension of the period for submitting documents should not exceed three months from the date of expiry of the established three-month period. In case of failure to submit documents within the prescribed period, the application is canceled, of which the applicant is notified.
4. The application is submitted in the state language and signed by the applicant or his representative, or a patent attorney. The documents attached to the application can be submitted in a foreign language with the attachment of their translation into the state language. Documents submitted in a foreign language are considered filed on the date of their receipt by Turkmenpatent if their translation into the state language was received within three months from the date of filing the application.
If the specified translation is not submitted within three months from the date of filing the application, the deadline for submitting the translation may be extended at the request of the applicant for an additional three months, provided that the application, together with the document confirming the payment of the corresponding fee, was received before the expiration of this deadline. In case of failure to submit a translation into the state language within the established time frame, the application is canceled.
5. When claiming priority, the following shall be attached to the application:
1) a certified copy of the first application filed by the applicant in a state party to the Paris Convention, if the applicant claims convention priority in accordance with part two of Article 13 of this Law;
2) a certified document confirming the display of exhibits using the declared trademark at the exhibition, if the applicant claims exhibition priority in accordance with part three of Article 13 of this Law. The documents attached to the application in case of claiming priority must be submitted to Turkmenpatent within three months from the date of receipt of the application.
6. The filing date of the application is established by the date of receipt of the following documents by Turkmenpatent:
1) applications for state registration of the designation as a trademark indicating the name of the applicant and his address;
2) images of the designation;
3) the list of goods;
4) a document confirming the payment of the filing fee. If these documents are not submitted at the same time, then the date of receipt of the last document is considered the date of filing the application.
Article 13. Priority of a trademark
1. The priority of a trademark is established by the date of receipt by Turkmenpatent of an application that meets the requirements of part five of Article 12 of this Law.
2. The priority of a trademark may be established by the date of filing the first application for the same designation in a state party to the Paris Convention, if the application is received by Turkmenpatent within six months from the indicated priority date.
3. The priority of a trademark placed on exhibits of official exhibitions or officially recognized international exhibitions organized on the territory of one of the member states of the Paris Convention may be established by the date of the beginning of the open display of exhibits at the exhibition, if Turkmenpatent received an application for a trademark within six months from the specified date of display of the exhibit.
4. An applicant wishing to exercise the right of convention or exhibition priority must indicate this when filing an application for a trademark or within two months from the date of receipt of the application by Turkmenpatent.
5. If several applications were received for an identical or confusingly similar trademark on the same day, the priority belongs to the application with an earlier registration number of Turkmenpatent.
6. The priority of a trademark may be established by the date of the international registration of the trademark in accordance with international treaties of Turkmenistan.
7. The priority of a trademark for a divisional application is established by the priority date of the first application.
Article 14. Examination of an application for state registration of a trademark
1. Examination of an application for state registration of a trademark is carried out by Turkmenpatent and includes a formal examination of the application for a trademark and an examination of the claimed designation in essence.
2. Within two months from the date of receipt of the application by Turkmenpatent, the applicant has the right to amend the application without paying the corresponding fee, and after the expiration of the specified period, the corresponding fee must be paid.
3. If the changes specified in part two of this article have a significant impact on the content of the application, then they are not accepted for consideration and can be drawn up by the applicant by filing a new application. Changes that significantly affect the content of the application are recognized changes if they supplement or replace the list of goods with heterogeneous goods in relation to previously declared ones or if the changes made significantly change the visual perception of the declared designation as a whole.
4. During the examination period, Turkmenpatent has the right to request from the applicant additional information necessary for the examination. In this case, the examination period is extended for an appropriate period of time. Additional information on the request of Turkmenpatent must be submitted within three months from the date of sending the request. At the request of the applicant, this period may be extended, provided that the request, together with the document confirming the payment of the corresponding fee, was received before the expiration of this period.
The extension of the term for providing additional information at the request of Turkmenpatent should not exceed six months from the date of expiry of the established three-month period. In case of failure to provide information within the specified time frame, the application is recognized as canceled, of which the applicant is notified.
5. During the examination of the application, before a decision is made on it, the applicant shall have the right to file for the same designation a divisional application containing part of the list of goods specified in the first application. In this case, those goods and (or) services that are declared in the separated application are excluded from the first application.
6. The application can be canceled at the request of the applicant at any stage of its consideration, but no later than the date of state registration of the trademark. No legally significant actions are taken on a canceled application. When considering applications with late priority, the canceled application will not be taken into account. A canceled application will not be restored and will not be returned to the applicant.
7. The applicant has the right to take part in the consideration of issues arising in the course of the examination.
Article 15. Formal examination of a trademark application
1. Within a month after the expiration of two months from the date of filing the application, Turkmenpatent conducts its formal examination, except for the cases provided for by part two of this article. In the process of conducting a formal examination, the availability of the necessary documents and compliance with the requirements provided for in parts two and three of Article 12 of this Law are checked.
2. At the request of the applicant, the formal examination of the application for a trademark may be carried out according to an accelerated procedure within ten working days from the date of submission of the said application, subject to the payment of the corresponding fee.
3. If the application does not meet the requirements, a request is sent to the applicant indicating the identified deficiencies and a proposal to provide the relevant information within three months from the date of sending the request. Additional information provided at the request of Turkmenpatent is subject to the requirements provided for in part four of Article 12 of this Law. In the absence of a response to the request of Turkmenpatent and failure to submit a request for its extension within the established time frame, the application is canceled, of which the applicant is notified.
4. Based on the results of the formal examination, the applicant is notified of the acceptance of the application for consideration, or a reasoned refusal to accept it is sent to him.
5. If the application is accepted for consideration, the applicant is notified of the establishment of priority, except for cases when a conventional or exhibition priority is claimed, but at the time of acceptance of the application for consideration there are no documents confirming the priority.
6. Information about applications accepted for consideration is published by Turkmenpatent in the Official Bulletin. After the publication of information about the application accepted for consideration, any interested person has the right to submit to Turkmenpatent, before the date of state registration of the trademark, a reasoned objection in writing regarding the provision of legal protection of the trademark applied for state registration, subject to payment of the appropriate fee.
Article 16. Examination of the claimed sign on the merits
1. Examination of the claimed designation on the merits shall be carried out upon completion of the formal examination, but not earlier than six months from the date of priority of the application, subject to the payment of the corresponding fee, except for the cases provided for in part two of this article.
2. At the request of the applicant, the substantive examination of the claimed designation may be carried out according to an accelerated procedure within twenty working days from the date of completion of the formal examination of the trademark application, subject to the payment of the appropriate fee. In case of receipt of a conventional application from another person for an identical trademark for similar goods or services, Turkmenpatent may decide on the invalidity of the state registration of the trademark registered under the accelerated examination procedure, and the owner of the trademark is notified of this.
3. Expertise on the merits includes:
1) verification of the compliance of the application with the requirements provided for in Article 12 of this Law;
2) verification of the compliance of the declared designation with the requirements provided for in part two of Article 10 of this Law;
3) checking the correctness of the classification of goods according to the International Classification of Goods and Services for the registration of marks;
4) checking the correctness of the classification of the figurative elements of the trademark in accordance with the International Classification of the figurative elements of the trademark;
5) search for identical and similar designations and verification of the compliance of the declared designation with the conditions established by clauses 14 of part three of Article 10 of this Law;
6) establishing the priority of a trademark in accordance with Article 13 of this Law, if the priority was not established based on the results of a formal examination. Based on the results of the examination, a decision is made on the state registration of the declared designation as a trademark or on the refusal of its state registration.
4. The decision on the state registration of a trademark shall indicate the number of the application, the date of filing the application, priority data, the name and address of the applicant, a list of goods indicating classes in accordance with the International Classification of Goods and Services for the Registration of Trademarks, an image of the mark indicating the figurative elements of the trademark. mark in accordance with the International Classification of Figurative Elements of a Trademark. The decision on the state registration of a trademark lists the unprotected elements contained in it, if any, as well as the color combination, if registration of the trademark in color is requested, the amount and terms of payment of the fee, the conditions and terms for challenging the decision and other necessary information.
5. If the decision on the application depends on the results of consideration of another application with an earlier priority, then the decision on the late application is made after the completion of the consideration of the application with an early priority.
6. If, as a result of the examination of the claimed designation, it is established that the designation does not meet the requirements of this Law, the applicant is sent a preliminary decision on the full or partial refusal of state registration of the trademark, with arguments that may be grounds for refusal of state registration of the trademark, references to the relevant sources of information, if they are necessary, and a proposal to refute the arguments given, as well as provide additional information or make the necessary changes to the application. The applicant has the right to familiarize himself with the documents used in the examination. Copies of the opposed documents can be requested within three months from the date of sending the request.
7. In case of disagreement with the preliminary decision of Turkmenpatent on full or partial refusal of state registration of a trademark, the applicant has the right to submit a reasoned application within three months from the date of sending the preliminary decision. At the request of the applicant, the deadline for submitting the application can be extended to six months, provided that the application was received before the expiration of this deadline, together with a document confirming the payment of the fee for each month of the extension. The application is considered by Turkmenpatent within two months from the date of its receipt.
8. If the applicant has not met the deadlines specified in part six of this article, then a decision is made to refuse state registration of the declared designation as a trademark or a decision on state registration of a trademark in the amount specified in the preliminary decision of Turkmenpatent.
Article 17. Challenging the decision of Turkmenpatent on the application for a trademark and restoration of missed terms
1. The rendered decision of Turkmenpatent on the application for a trademark may be challenged by the applicant by filing an appropriate appeal to the Appeal Commission of Turkmenpatent within three months from the date of sending the said decision. The applicant has the right, personally or through his representative, to participate in the consideration of the appeal.
2. The deadline for submitting documents or information, as well as the deadline for filing an application for disagreement with the preliminary decision or decision of Turkmenpatent, missed by the applicant may be restored. An application for the restoration of the missed deadline may be submitted by the applicant to Turkmenpatent no later than six months from the date of expiry of the established deadline, together with a document confirming the payment of the fee for each month of renewal. The applicant is notified of the restoration of the missed deadline.
Article 18. Implementation of state registration of a trademark
1. In the event of a decision on the state registration of a trademark and receipt of a document confirming the payment of the corresponding fee, Turkmenpatent carries out the indicated registration and enters information about the trademark in the State Register.
2. An image of a trademark, information about its owner, date of filing an application, priority data and date of state registration of a trademark, a list of goods and (or) services for which a trademark is registered, a description of the figurative elements of a trademark according to the International Classification figurative elements of the trademark, other information related to the state registration of the trademark, as well as subsequent changes in the specified information. The State Register also contains information on the extension and (or) termination of the validity period and on the cancellation of the state registration of a trademark.
3. A document confirming the payment of the fee for the state registration of a trademark and the issuance of a certificate for a trademark must be received by Turkmenpatent within three months from the date of sending the decision on state registration of the trademark to the applicant. If the fee is not paid within the specified period, the applicant is provided with a grace period of six months from the date of expiry of the established period, subject to the payment of the corresponding fee for each missed month. The state registration of a trademark is carried out within one month after receiving a document confirming the payment of the corresponding fee.
4. If a document confirming the payment of duties is not submitted within the established and grace period, the state registration of the trademark is not performed. In this case, the application is canceled, and the applicant is notified of this.
5. Any interested person can request an extract from the State Register, subject to the payment of the appropriate fee.
Article 19. Issuance of a certificate for a trademark
1. A certificate is issued for a registered trademark. The issuance of a certificate for a trademark is carried out by Turkmenpatent within three months from the date of state registration of the trademark.
2. The form of the trademark certificate and the list of basic information indicated in the trademark certificate shall be established by Turkmenpatent.
Article 20. Extension of the term of validity of a trademark
1. The validity period of a trademark may be extended upon the application of its owner, filed with Turkmenpatent during the last year of the trademark's validity, for every subsequent ten years, subject to payment of the appropriate fee. The renewal period is calculated from the expiration date of the previous period. The owner of the trademark is granted a grace period of six months to extend its validity period, subject to the payment of the appropriate fee.
2. Information on the extension of the term of the trademark shall be entered into the State Register, of which the owner of the trademark shall be notified. The procedure for extending the validity of a trademark is established by Turkmenpatent.
3. Information on the extension of the trademark validity period is published in the Official Bulletin.
Article 21. Amendments to the State Register
1. Changes are made to the State Register related to a change in the name of the owner of a trademark and (or) his address, a reduction in the list of goods in respect of which a trademark is registered, a change in individual elements of a trademark that does not change its essence, as well as other changes, related to the state registration of a trademark.
2. Amendments to the State Register are made at the request of the owner of the trademark, subject to the payment of the appropriate fee. The procedure for filing and considering applications for amending the State Register is established by Turkmenpatent.
Article 22. Publication of information about a trademark
1. Information related to the state registration of a trademark, and all subsequent changes made to the State Register, are published in the Official Bulletin within six months from the date of state registration of the trademark or amendments to the State Register.
2. The list of published information on the state registration of a trademark is determined by Turkmenpatent.
Article 23. International registration and registration of a trademark in foreign states
1. Individuals engaged in entrepreneurial activities without forming a legal entity, permanently residing in the territory of Turkmenistan, and legal entities of Turkmenistan have the right to carry out international registration of a trademark or register it in foreign states.
2. International registration of a trademark in the countries-participants of the Protocol to the Madrid Agreement on the international registration of trademarks is carried out on the basis of an international application filed with the International Bureau of the World Intellectual Property Organization through Turkmenpatent. International trademark registrations are published by the International Bureau of the World Intellectual Property Organization.
3. The costs associated with the international registration or registration of a trademark in foreign countries shall be borne by the applicant.
Article 24. Collective mark
1. Individuals engaged in entrepreneurial activities without forming a legal entity, and (or) legal entities engaged in entrepreneurial activities, have the right to register in Turkmenistan a collective mark intended to designate goods (work performed, services rendered) that have uniform quality or other general characteristics ... A collective mark may be used by any person indicated in the list of persons entitled to use this collective mark.
2. A collective mark and the right to use it cannot be transferred to other persons.
Article 25. State registration of a collective mark
1. An application for state registration of a collective mark must be accompanied by an application for state registration of the designation as a collective mark indicating the name of the applicant, a list of persons entitled to use this collective mark, the purpose of state registration of the collective mark, uniform quality or other general characteristics of goods that will be designated by the collective mark, the conditions and procedure for monitoring its use, measures of responsibility for violation of the conditions for using the collective mark, on the persons entitled to use the collective mark, as well as information on the uniform quality or other general characteristics of the goods in respect of which the collective mark is registered. Information on the state registration of a collective mark is published in the Official Bulletin. The owner of the collective mark shall notify Turkmenpatent of all changes concerning the collective mark.
2. A certificate is issued for a registered collective mark. The issuance of a certificate for a collective mark is carried out by Turkmenpatent within three months from the date of state registration of the collective mark. The form of the certificate for the collective mark and the list of information indicated in the certificate for the collective mark are established by Turkmenpatent.
3. If a collective mark is used on goods that do not have uniform quality or other general characteristics, the legal protection of the collective mark may be terminated early in whole or in part on the basis of the decision of the Appeal Commission of Turkmenpatent or a court decision adopted at the request of any interested person.
4. A collective mark and an application for its state registration may be transformed, respectively, into a trademark and an application for its state registration, and a trademark and an application for its state registration may be transformed, respectively, into a collective mark and an application for its state registration. This transformation is carried out in the manner established by Turkmenpatent. 5. State registration of a collective mark and a certificate for a collective mark may be invalidated on the basis of a decision of the Appeal Commission of Turkmenpatent or a court.
Article 26. Use of a trademark
1. The use of a trademark is its use on goods or in relation to services for which it is registered, and (or) on labels, packaging of goods by the owner of the trademark or a person who has been granted such a right on the basis of a license agreement in accordance with Article 29 of this Law ... The use of a trademark may be recognized as the use of a trademark in advertising, printed publications, on signboards, during demonstration of exhibits at exhibitions and fairs held in Turkmenistan, as well as on the Internet.
2. Persons carrying out intermediary activities may, on the basis of an agreement, use their trademark along with the trademark of the manufacturer of goods, as well as instead of the trademark of the latter.
3. State registration of a trademark does not entitle its owner to prohibit its use by other persons in relation to goods that have been introduced into economic circulation in Turkmenistan directly by the owner of the trademark or with his consent.
4. The validity of a trademark may be terminated early in relation to goods or part of goods due to non-use of the trademark for the last three years preceding the date of filing an application for early termination of the trademark due to its non-use. The above application can be submitted no earlier than three years from the date of registration of the trademark in Turkmenistan.
5. An application for early termination of a trademark due to its non-use may be submitted by any interested person to the Appeal Commission of Turkmenpatent.
6. Proof of use of the trademark is provided by the owner. The use of a trademark with a change in individual elements of the trademark that does not change its essence is also recognized as evidence of the use of a trademark.
7. When deciding on the early termination of a trademark due to non-use, the evidence presented by the owner of the trademark that the trademark was not used due to circumstances beyond his control may be taken into account.
Article 27. Warning Marking
1. The owner of the trademark has the right to affix next to the trademark a warning marking in the form of the Latin letter "R" in a circle or the verbal designation "registered trademark" indicating that the trademark used is registered and protected in Turkmenistan.
2. A person carrying out warning labeling in relation to a trademark unregistered and not protected in Turkmenistan is liable in the manner prescribed by the legislation of Turkmenistan.
Article 28. Assignment of the right to a trademark
1. The exclusive right to a trademark may be transferred by its owner under an assignment agreement to another person in respect of all or part of the goods for which it is registered.
2. Transfer of the right to a trademark is not allowed if it can cause misleading the consumer regarding the product or its manufacturer.
Article 29. Granting the right to use a trademark
1. The right to use a trademark may be granted by the owner of the trademark (licensor) to another person (licensee) under a license agreement within the limits specified by the agreement for all or part of the goods in respect of which it is registered.
2. A license agreement on the use of a trademark must contain a condition that the quality of the licensee's goods will not be lower than the quality of the licensor's goods, and the licensor will exercise control over the fulfillment of this condition.
3. If the validity period of a license agreement on the use of a trademark exceeds the validity period of a trademark, then the owner of such a trademark must promptly renew its validity period. Otherwise, the specified agreement terminates from the date of termination of the trademark.
Article 30. State registration of an agreement on the assignment of the right to a trademark and a license agreement on the use of a trademark
1. An agreement on the assignment of the right to a trademark and a license agreement on the use of a trademark are subject to state registration with Turkmenpatent and enter into force from the date of their state registration. Without state registration, these agreements are considered invalid.
2. Amendments may be made to a registered license agreement on the use of a trademark within its validity period on the basis of an agreement between the parties.
3. The procedure for state registration of an agreement on the assignment of the right to a trademark, a license agreement on the use of a trademark and amending it is determined by Turkmenpatent. For the state registration of the above actions, fees are charged.
4. Information on the state registration of an agreement on the assignment of the right to a trademark, a license agreement on the use of a trademark and changes in a registered license agreement shall be entered in the State Register and also published in the Official Bulletin.
Article 31. Recognition of the state registration of a trademark as invalid
1. The state registration of a trademark may be invalidated: 1) in whole or in part during the entire period of its validity, if the state registration of the trademark was carried out in violation of the requirements established by part two and paragraphs 3-6 of part three of Article 10 of this Law;
2) completely during the entire period of its validity, if the state registration of the trademark was carried out in violation of the requirements established by part two of Article 3 of this Law;
3) in whole or in part within five years from the date of state registration of the trademark, if:
a) it was made in violation of the requirements established by clauses 1 and 2 of part three of Article 10 of this Law;
b) a trade agent or a representative of the owner of a trademark in one of the member states of the Paris Convention has filed, without the owner's permission, an application for state registration of this mark on his own behalf, unless the said agent or representative provides evidence justifying its action;
ç) an identical or confusingly similar trademark of a competitor is registered in its own name in relation to similar goods and (or) services.
2. Any interested person may submit an appeal to the Appeal Commission of Turkmenpatent for recognizing the state registration of a trademark as invalid within the time limits established by part one of this article, and subject to payment of the appropriate fee. The person who submitted the said application, as well as the owner of the trademark, have the right to take part in the consideration of the application personally or through their representatives.
3. The state registration of a trademark and a certificate for a trademark are invalidated on the basis of a decision of the Appeal Commission of Turkmenpatent or a court.
Article 32. Termination of legal protection of a trademark
1. Legal protection of a trademark is terminated: 1) due to the expiration of the trademark;
2) if the owner of the trademark receives an application for the termination of the trademark.
2. The validity of the trademark is terminated ahead of schedule on the basis of the decision of the Appeal Commission of Turkmenpatent or the court in the following cases:
1) in connection with non-use of a trademark in accordance with part four of Article 26 of this Law;
2) in the event of the termination of the entrepreneurial activity of an individual or the liquidation of a legal entity that is the owner of the trademark;
3) in the case of using a collective mark on goods that do not have uniform quality or other general characteristics;
4) in the case of the transformation of a registered trademark into a designation that has come into general use as a designation for goods of a certain type.
3. Information on the termination of the trademark is published in the Official Bulletin.
Article 33. Fees
1. For the commission of legally significant actions related to the filing of an application, its examination, state registration of a trademark, making changes to the State Register, extending the validity of a trademark, transferring rights to a trademark and other procedures, duties are charged.
2. The fees are paid by the applicant, the owner of the trademark, or any third parties, unless otherwise provided by international treaties of Turkmenistan.
3. Funds received from the payment of duties are transferred to the State Budget of Turkmenistan.
4. The size of duties, terms and procedure for their payment are established by the Cabinet of Ministers of Turkmenistan.
CHAPTER IV. FINAL PROVISIONS
Article 34. Appeal Commission of Turkmenpatent
1. The Appeal Commission of Turkmenpatent is a body for consideration of applications on violated or disputed rights in accordance with the legislation of Turkmenistan. The Appeal Commission of Turkmenpatent is competent to consider the following appeals of persons:
1) on disagreement with the decision of Turkmenpatent in accordance with part one of Article 17 of this Law;
2) on the recognition of the state registration of a trademark or collective mark as invalid in accordance with part one of Article 31 of this Law;
3) on early termination of the term of validity of a trademark in accordance with part two of Article 32 of this Law;
4) on disagreement with the decision of Turkmenpatent in relation to state registration of an agreement on the assignment of the right to a trademark and state registration of a license agreement for the use of a trademark or amendments to a license agreement for the use of a trademark;
5) on disagreement with the decision of the Turkmenpatent commission on certification of a candidate for patent attorney. The procedure for attestation and registration of patent attorneys is determined by the Ministry of Finance and Economy of Turkmenistan. Legally significant actions in relation to the state registration of the trademark on which the appeal was filed are suspended until the end of its consideration.
2. The applicant has the right to submit an appeal to the Appeal Commission of Turkmenpatent, provided for in the first part of this article, within the time limits established by the legislation of Turkmenistan, subject to payment of the appropriate fee. This appeal must be considered by the Appeal Commission of Turkmenpatent within the time limits established by the Procedure for considering appeals of individuals and legal entities on violated or disputed rights to a trademark.
The period for consideration of the appeal can be extended at the request of the person who filed it, as well as the owner of the trademark, but not more than six months from the date of expiry of the period originally established for the consideration of the appeal. A petition to reconsider the decision of the Appeal Commission of Turkmenpatent may be submitted to the chairman of the Appeal Commission of Turkmenpatent by any of the interested parties within one month from the date of its receipt.
Any of the interested parties can appeal against the decision of the Appeal Commission of Turkmenpatent in court within forty-five calendar days from the date of its approval.
Article 35. Consideration of disputes in court
1. The courts, in the manner prescribed by the legislation of Turkmenistan, consider disputes related to:
1) violation of the exclusive right to a trademark and its illegal use;
2) recognition of goods as counterfeit and compensation for damage for the use of a trademark without the consent of its owner;
3) the conclusion and execution of a license agreement and an agreement on the assignment of rights to a trademark;
4) state registration of a company name, the application for which was filed in Turkmenistan after the filing date of the application, for which an identical trademark was registered in Turkmenpatent in the name of another person;
5) state registration of a trademark, an application for which was filed with Turkmenpatent after the date of filing an application for state registration in Turkmenistan of an identical company name in the name of another person;
6) violation of the exclusive right to a trademark, the application for which was filed with Turkmenpatent before the state registration in Turkmenistan of the identical own name of the second-level national domain by another person;
7) violation of the exclusive right to the own name of the second-level national domain registered in Turkmenistan before the filing date of the application of the identical trademark registered in Turkmenpatent in the name of another person;
8) challenging the decisions of the Appeal Commission of Turkmenpatent. Courts in the manner prescribed by the legislation of Turkmenistan may consider other disputes related to the application of this Law.
2. When considering the disputes provided for in clauses 1-4 and 6 of the first part of this article, the owner of the trademark must provide evidence of the actual use of the trademark on his goods and (or) in relation to the work performed by him or the services rendered by him, for which he is registered.
3. When considering the disputes provided for in paragraph 5 of part one of this article, the owner of a company name must provide evidence of the actual use of his name on his goods (performance of work by him, provision of services to them).
4. When considering the disputes provided for in paragraph 7 of part one of this article, the owner of the own name of the ccTLD must provide evidence of the use of his domain for the purpose of selling goods, as well as information about the work performed or about the services provided.
5. The court has the right to decide on the confiscation of counterfeit goods.
Article 36. Customs control
Customs control in relation to the protection of the rights of trademark owners is carried out by the customs authorities in accordance with the customs legislation of Turkmenistan.
Article 37. Responsibility for illegal use of a trademark
1. Illegal use of a trademark or a designation similar to it to the point of confusion in relation to homogeneous goods is illegal actions carried out without the permission of the trademark owners, related to: 1) with their illegal manufacture, use, use in advertising, printed publications, on official letterheads of enterprises, organizations and institutions, on signboards, during demonstration of exhibits at exhibitions and fairs held in Turkmenistan;
2) with their import to Turkmenistan, export from Turkmenistan, sale and other introduction into economic circulation on the territory of Turkmenistan or storage, transportation;
3) with their use and (or) placement when performing work or providing services;
4) with other actions detrimental to the owner of the trademark or consumers of goods.
2. A person who illegally uses a trademark or a designation similar to it to the point of confusion (including in the provision of services), at the request of its owner or a court decision, is obliged to:
1) stop using it;
2) compensate for losses, including lost profits, or pay compensation determined by a court decision or by agreement of the parties;
3) remove from the product or its packaging an illegally used trademark or designation confusingly similar to it.
Article 38. Entry into force of this Law
1. This Law shall enter into force from the day of its official publication.
2. To declare invalid:
The Law of Turkmenistan "On Trademarks, Service Marks and Appellations of Origin of Goods", adopted on October 23, 2008 (Statements of the Mejlis of Turkmenistan, 2008, No. 4, art. 53);
Part II of the Law of Turkmenistan "On Amendments to Certain Legislative Acts of Turkmenistan", adopted on June 22, 2013 (Statements of the Mejlis of Turkmenistan, 2013, No. 2, art. 44);
Clause 13 of part one of the Law of Turkmenistan "On Amendments to Certain Legislative Acts of Turkmenistan", adopted on June 9, 2018 (Statements of the Mejlis of Turkmenistan, 2018, No. 2, art. 43).
President of Turkmenistan Gurbanguly BERDYMUHAMEDOV.
Ashgabat, June 8, 2019.
(Kindly ask you to note that provided above translation is not an official translation of the document into English).