New Trademark Law Enters into Force in Turkmenistan

By Slobodan Petošević

A new Law on Trademarks entered into force in Turkmenistan on June 19, 2019, introducing important changes and clarifying the trademark registration procedure.

Trademark Definition

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 expression “other designations” referring to non-traditional trademarks is not present in the new law, so it follows that non-traditional trademarks will be denied protection. The term “service mark” that was present in the previous law was also removed from the new law for being synonymous with the word “trademark”.

Protection Period

According to the new law, trademarks filed before November 5, 2008 will be valid for 10 years from the registration date, like in the previous law, while those filed after this date will be valid for 10 years from the application filing date.

Well-Known Trademarks

The new law excluded the previously existing articles relating to the protection of well-known trademarks, which means that trademarks can no longer be recognized as well-known or be granted special status in Turkmenistan, unless the determination of well-known status is provided for in the by-laws which are yet to be adopted.

Grounds for Refusal

In the new law, the list of grounds for refusal of a trademark registration is now divided into two, namely, absolute and relative, while several new grounds for refusal were added. Trademarks will now also be refused if they contain the following:

• Names of states, international organizations, etc., as well as words derived from them, (e.g. Russian, Turkmen, Mexican, etc.); these may be used as unprotected elements, provided that there is a permission of the relevant authority; or

• Characteristics of goods, including their type, quality, quantity, properties, purpose, value, as well as the time, place and method of their production or sales; these could previously be included as unprotected elements, which is no longer possible;

List of Goods/Services

It is no longer possible to file a trademark application using class headings to cover all goods and services indicated in the classes. In case class headings and other general terms are indicated in the list of goods, the scope of protection will include only those goods and/or services covered by the literal meaning of those terms.

Subsequent Filing of Documents

The time period for the subsequent filing of documents related to the application has been extended from two to three months from the filing date. This deadline can be further extended for up to three months (rather than six months, as previously) upon the applicant’s request. One document that cannot be subsequently filed is the proof of payment of the official trademark filing fee.

Formal Examination

The new law also specifies that formal examination should be carried out within one month after the expiration of two months from the application filing date. The former law did not specify the time period for conducting formal examination.

Under the new law, applicants can also request accelerated formal examination within ten working days from the request filing date, subject to payment of a fee. The former law did not include such provision; it was included in a by-law.

Oppositions and Observations

While the former law required the Turkmen PTO to notify applicants of any oppositions or observations received following the completion of formal examination and the publication of relevant information in the Official Gazette, the new law no longer requires it.

Substantive Examination

According to the new law, substantive examination should begin after the formal examination, but not earlier than six months from the application’s priority date. While the previous law required the completion of substantive examination within 12 months from the filing date, the new law only specifies when substantive examination should begin.

However, the new law introduces the possibility to accelerate substantive examination to as little as 20 working days from issuing the formal examination decision, at the request of the applicant and subject to payment of a fee. At the same time, if an application with an earlier convention priority is received from another applicant for an identical trademark and for similar goods or services, Turkmen PTO is entitled to invalidate the trademark registered in the accelerated procedure.

Invalidation of Trademark Registration

The new law introduces several new grounds for trademark invalidation, namely if:

• The trademark was registered in the name of a person not engaged in entrepreneurial activity; Article 3 of the new law states that “a trademark may be registered in the name of a physical person engaged in entrepreneurial activities without forming a legal entity, or a legal entity engaged in entrepreneurial activities";

   

• The trademark is identical or confusingly similar to a previously registered appellation of origin (AO), unless the designations in question are included in the trademark only as unprotected elements and registered for the same goods and in the name of the same person as the AO;

   

• An agent or representative of the trademark owner, in one of the contracting parties to the Paris Convention, filed an application for the registration of the same trademark in their own name, unless this action was justifiable; or

   

• An identical or confusingly similar trademark to the competitor’s is registered for similar goods and/or services; however, clarification is needed to further interpret the meaning of “competitor” in this context.

Disputes and Appeals

The new law now specifies that trademark registrations may be invalidated by Turkmen PTO’s Appeals Commission decisions or court decisions. This is an important new provision because it clarifies which state bodies have jurisdiction to handle trademark invalidations.

Finally, the period for appealing the Appeal Commission’s decisions in court has been shortened from six months to 45 calendar days.