Comments to the Trademark Law in Turkmenistan

On June 19, 2019, a new law “On Trademarks” entered into force in Turkmenistan and on June 20, 2019, a new law “On Appellations of Origin of Goods” has come into force as well.

In addition, on the basis of the entry into force of the above laws, the Law of Turkmenistan dated October 23, 2008 “On Trademarks, Service Marks and Appellations of Origin of Goods” ceased to be in force.

Regarding the law “On Trademarks” in comparison with the previously existing law, the following clarifications and innovations should be noted:

Article 3 (4): Trademark Validity: On applications filed before November 5, 2008, the calculation of the 10-year term of validity of the trademark is made from the date of registration of the trademark, and on applications filed after the above-mentioned date – from the filing date of the application.

Comments to the above: In the previous version of the law, the validity term of the trademark was calculated from the filing date of the application, not taking into account the registration date of the trademark, which was applied to applications filed before November 5, 2008. Now, the Law reflects two terms.

Article 10 (3) (4): Grounds for refusal to register a trademark: For substantive reasons, it is not allowed to register as a trademark signs that are identical or similar to the grade of confusion with names included in the list of International Nonproprietary Names for Pharmaceutical Substances and Active Pharmaceutical Ingredients by the World Health Organization.

Article 12 (1) (3): Requirement to the list of goods / services: In case of specifying in the list of goods the headings of the Nice Classification and other general terms, the scope of protection of a trademark includes only those goods and (or) services that are clearly covered by the literal meaning of indication or term.

The inclusion in the list of the wording “all goods and (or) services included in the specified class of ICGS is not allowed.

Comments to the above: For already filed applications and registered trademarks, there is no need to amend the lists of goods. This requirement applies only to the new applications.

Article 15 (6): Publication of trademark application: The application is published in the bulletin of Turkmenpatent after three months from the filing date and carrying out of a formal examination of the application. After the 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. For filing an objection a fee is charged.

Comments on the above: A separate objection fee will be set at the stage of application.

An appeal to declare a registered trademark null and void is considered by the Appeals Commission, in accordance with the provisions of Article 34 (1) (2), also subject to the payment of another prescribed fee.

Article 16 (2): Accelerated procedure of examination for the trademark application: There is an accelerated procedure for the substantive examination, which is carried out within 20 working days from the date of completion of the formal examination, subject to the filing of an appropriate request and payment of the prescribed fee. In case of receipt of an application with the claim of a conventional priority for an identical or confusingly similar trademark for homogeneous goods or services, a trademark registered under the accelerated procedure may be declared invalid.

Comments on the above: The separate fee for the accelerated examination before the expiration of six months from the filing date of the application and a separate fee for the accelerated examination after six months from the filing date will be set. I.e., the fee for conducting an accelerated examination procedure will depend upon the above terms. The usual term of examination is 11 to 12 months from the filing date.

Article 26 (4): Use of a trademark: A trademark may be terminated before expiry date due to non-use in the last three years preceding the filing date of the request for early termination of the trademark on the grounds of non-use.

Evidence of use of the trademark is provided by the owner.

Comments to the above: In previous version of the Law there was a following reason: “… for any three years period from the date of trademark registration”.