Trade and Service Marks and Appellations of Origin

– Law on Trademarks, in force since June 19, 2019.
– Law on Appellations of Origin of Goods, in force since June 20, 2019.

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), as of December 25, 1991.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, as of March 1, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, as of September 15, 1999.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, Geneva Act, as of June 7, 2006.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, as of June 7, 2006.

Filing

Applicant: individuals or legal entities.

Foreigners: enjoy same rights as nationals, must appoint a Turkmen agent.

Kinds of protection: trademarks and service marks (word marks, device marks and combinations thereof); collective marks; appellations of origin.

Not registrable: emblems and flags, abbreviated and full names of international and intergovernmental organizations, official control, guarantee marks and test marks, stamps, seals, rewards and other decorations and similar marks which may lead to confusion, marks which are not distinctive, which are generally used as denominations of the goods applied for, generally accepted as symbols and terms, indicating the type, quality, quantity, property, purpose, usefulness of goods, place as well as time of their production and sale, trademarks partially or completely consisting of geographical denominations, which can be perceived as indication of the location of the manufacturer; which are false or misleading for consumers as to the product or his manufacturer; whose content is contrary to humanitarian principles and to morality. Protection cannot be granted for trademarks identical or similar to earlier registered trademarks (or applications) for similar goods in Turkmenistan or protected in accordance with International Treaties by another person. Protection cannot be granted without the appropriate consent for: titles of well-known works of literature, science and art, surnames, pseudonyms and derivatives thereof, portraits, facsimiles.

Priorities: in accordance with the Paris Convention, including the exhibition priority (within six months after the exhibition).

Classification: international.

Territory covered: the State of Turkmenistan.

Filing requirements for an application(to be sent to resident agent):
1. Power of attorney (must bear applicant’s seal or stamp; if not available, the power must be notarized);
2. Prints of the sign to be protected (20);
3. List of goods and services, according to the International Classification; one application may include goods belonging to more than one international class (to be translated into Turkmen and Russian); 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;
4. Priority documents, if any (to be filed within three months from the filing date);
5. For collective marks: statute of the association;
6. For appellations of origin: proofs concerning special features of the goods, characteristic for geographical object.

Minimum requirements on filing date: name of applicant; list of goods and/or services (can be in English); minimum three prints.

Term for filing the missing documents: two months.

Electronic filing: not yet possible. 

Electronic signatures: are not accepted (only wet signatures).

For a change of name or address:
1. Original document confirming the changes, e.g. affidavit or other document executed on the owner's original color letterhead, bearing the owner's seal or stamp;
2. Power of attorney (must bear owner's seal or stamp; if not available, the power must be notarized).

Examination Procedure

Examination: a formal examination and a complete (novelty) examination.

The formal examination is carried out two months after the filing date and comprises checking the formal requirements and issuing an appropriate decision. A negative decision may be appealed by the applicant within a two-month term.

A complete examination is carried out after the completion of the formal examination (from seven to nine months after the filing date), and comprises examination of the identity or similarity in respect to previously filed applications/registrations in Turkmenistan, and as to registrability conditions. 

Accelerated examination: an accelerated procedure for the complete (novelty) examination is available, which is carried out within twenty working days from the date of completion of the formal examination, subject to filing an appropriate request and payment of the prescribed fee.

Amendments and corrections: voluntary amendments or formal corrections may be filed within two months from the filing date. Amendments and corrections are also accepted during the entire examination period. Additional materials modifying the claimed sign or the list of goods as to substance are not accepted.

Appeal: the applicant may file an appeal against a negative decision issued after the complete examination, before the Patent Office Appeal Board, within a three-month term.

Disclaimers: available. 

Letters of consent: can be accepted in order to overcome an objection based on an older registration; must be in original and notarized.

Publication: the application is published in the Bulletin of Turkmenpatent after three months from the filing date and following the formal examination. 

Objection: 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.

Protection

Publication: trademark particulars entered into the Trademark Register after the granting decision, are published in the Bulletin of Turkmenpatent during six months from the date of registration.

Delivery of document: a certificate, valid from the date of registration in the State Register, confirms the registration of the trademark, its priority, and the exclusive right of the owner to use the mark by marking the goods indicated in the certificate. The certificate is issued in paper format only.

Duration – extension: for applications filed before November 5, 2008, ten years from the date of registration; for applications filed on or after November 5, 2008, ten years from the filing date; renewable for further ten-year periods. Grace period: six months with fine. Documents to submit for renewal, change of the owner’s name, amendments to the list of goods/services (only reductions are possible): power of attorney, document confirming the change of the owner’s name, other documents on request.

Exclusive right: the exclusive right to use the registered trademark belongs to its owner.

Obligation to use: during any three years from the filing date.

Assignment: must be registered.

Licenses: license must be in the form of a written contract registered at the Patent Office.

Modification of Protection after Registration

Rights of prior user: provided for.

Nullification: any interested person concerned during the entire period of validity may object a trademark registration if the conditions established by the law for registration are not fulfilled.

Infringement: penal provisions provided.