A registered trademark is an asset — one that can be sold, transferred, or licensed just like other forms of property. Turkey’s Industrial Property Law No. 6769 governs both trademark assignment (marka devri) and trademark licence agreements (lisans sözleşmesi). The two mechanisms serve different commercial purposes and carry different legal consequences for brand owners and licensees.
Trademark Assignment
Assignment transfers all trademark rights from the current owner (assignor) to the new owner (assignee). After a valid assignment, the assignee becomes the registered owner and can enforce the mark against third parties in their own name.
Requirements
- The assignment must be in writing and signed by both parties
- Assignment must be registered in the Trademark Register (Marka Sicili) kept by TÜRKPATENT to be enforceable against good-faith third parties
- An unregistered assignment binds the contracting parties but cannot be asserted against someone who subsequently acquires the mark in good faith relying on the register
Assignment can cover a trademark in all or some of the goods and services for which it is registered. A partial assignment — transferring the mark for some classes while retaining it for others — is permitted but requires careful drafting to avoid confusion about the boundary between the retained and transferred rights.
Trademark Licence
A licence does not transfer ownership. The trademark owner (licensor) authorises another party (licensee) to use the mark under specified conditions, while retaining ownership.
Exclusive vs Non-Exclusive
| Exclusive Licence | Non-Exclusive Licence | |
|---|---|---|
| Can licensor use the mark? | Generally no (unless reserved) | Yes |
| Can licensor grant further licences? | No | Yes |
| Can licensee sue infringers? | Usually yes (with appropriate clause) | Usually requires licensor’s cooperation |
Key Licence Terms
A well-drafted licence agreement should address:
- Territory: the geographic scope of the authorisation
- Duration: the licence term and renewal conditions
- Field of use: the specific goods or services for which the mark may be used
- Quality standards: the licensor’s right to monitor and approve the licensee’s use, which is important to preserve the mark’s distinctiveness
- Sub-licensing: whether the licensee may grant further licences to third parties — this requires an express provision; it is not implied
Registration of Licences
Like assignments, licences can be registered in the Trademark Register. Registration is not mandatory, but an unregistered licence cannot be asserted against a third party who later acquires the mark in good faith. Where the licensor becomes insolvent or transfers the mark to a new owner, an unregistered licensee is in a vulnerable position.
Practical Considerations
Due diligence before assignment: the assignee should verify the status of the mark before completing an assignment — checking that it is validly registered, has not been abandoned, is not subject to pending cancellation proceedings, and is not encumbered by licences or pledges that will run with the mark.
Brand integrity in licences: one common oversight in licence agreements is the absence of quality control provisions. A licensor who grants an unrestricted licence with no monitoring rights risks the mark becoming associated with substandard products — potentially affecting its distinctiveness and value.
Sub-licences without authorisation: a licensee who grants sub-licences without express permission is in breach of the licence agreement and may face termination and a damages claim.
Frequently Asked Questions
Does a trademark assignment need to be notarised? Turkish law requires the assignment to be in writing but does not generally require notarisation for the assignment itself to be valid between the parties. However, some situations — for example, where the assignment is part of a broader asset deal or where foreign parties are involved — may make notarisation advisable for evidential purposes. TÜRKPATENT registration does require submission of the assignment document.
Can a trademark licence be terminated early? Yes, subject to the terms of the agreement. Most licences include termination provisions for material breach, non-use, or insolvency. Where no express termination clause exists, general contract law principles on termination for cause apply. The parties should specify notice periods and the consequences of early termination clearly in the agreement.
I am buying a business. Does the trademark transfer automatically? Not automatically. A trademark is a separate asset that must be expressly assigned as part of the transaction. In business sales, intellectual property schedules identifying all marks and the terms of their transfer are standard. Relying on a general “all assets” provision without a specific IP schedule creates risk.
Can the licensee register the mark in their own name? No. Authorised use under a licence does not give the licensee any ownership interest in the mark. An application to register the mark in the licensee’s name would be made in bad faith and could be opposed or cancelled by the true owner.