TRADEMARKS FILING AND PROSECUTION IN TURKMENISTAN
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Turkmenistan may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.[1]
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark.
the new law defines a trademark as a verbal, graphic or 3D designation of any color or color combination, or a combination of such designations, which serves to distinguish goods, works and services. The following trademark types are registrable: trade marks, service marks and collective marks.[2]
| Relevant office | State Service for Intellectual Property of Ministry of Finance and Economy of Turkmenistan |
| Nice classification | Yes (11th edition) |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | Simply signed Power of Attorney |
| Prosecution process | Filing publication of the mark in the trade mark journal opposition(anytime before the registration date) registration renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark searches in Turkmenistan
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Turkmenistan can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the State Service for Intellectual Property of Ministry of Finance and Economy of Turkmenistan.
Trademark word search edition of Turkmenistan follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Turkmenistan to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Turkmenistan. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Turkmenistan can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark application in Turkmenistan
A person may file multi class or single class trademark applications in Turkmenistan.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Turkmenistan:
Ordinary trademark applications filed in Turkmenistan are applications without claiming any priority. Ordinary applications are filed at the patent office. And according to the Turkmenistan legislation the foreign applicants need a local agent for filing trademark applications, only legal bodies and private entities of Turkmenistan can file application by themselves. Multi class trademark applications can be filed in Turkmenistan. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.[3]
Priority trademark applications in Turkmenistan/Convention trademark application in Turkmenistan:
A priority trademark application may be filed in Turkmenistan. A priority trademark application should be filed in Turkmenistan within 6 months after the date on which the application was made in the convention country.[4]
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Turkmenistan within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Turkmenistan follows the nice classification of classes. State Service for Intellectual Property of Ministry of Finance and Economy of Turkmenistan uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark examination in Turkmenistan
When the trademark application is submitted for the registration it goes through the examination process. The application undergoes the formal and substantive (absolute and relative grounds) examination. The marks which do not seem distinctive in the examination can be registered if distinctiveness is acquired by use.
Then after this the trademark application undergoes the substantive examination.
Applications are published in the bulletin of turkmenpatent. The new law doesn’t clarify when, it only states that pending applications accepted for consideration are published by tukmenpatent in the official bulletin. After an application is published, any interested party may file an objection to the possible registration of the trademark before the registration date of the published trademark.[5]
Trademark opposition in Turkmenistan
An opposition against pending application can be filed by any interested person during the examination (after publication of data about acceptance of the application for consideration before the final decision is taken (item 6, part 2 Art. 15 of the Trademark Law), subject to payment of the corresponding fee. After the mark is granted protection and the registration certificate is issued, the mark details are published in the Official Bulletin, and it may be opposed by any person before the Board of Appeal.[6]
Trademark registration inn Turkmenistan
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of application and the registration certificate is issued.
[1] https://ssrana.in/global-ip/international-trademark-filing-registration/trademarks-in-united-states/
[2] https://www.country-index.com/country_surveys.aspx?ID=76
[3] https://www.country-index.com/country_surveys.aspx?ID=76
[4] https://www.wipo.int/treaties/en/ip/paris/summary_paris.html
[5] https://www.country-index.com/country_surveys.aspx?ID=76
[6] https://www.country-index.com/country_surveys.aspx?ID=76