The mark for goods and services registered in the territory of Turkmenistan or protectable under Madrid Agreement on international registration of trademarks, as well as a non-registered trademark acquired general notoriety among the relevant circles of people as a result of its active use can be recognized as a well-known trademark.

The authorized agency for acknowledgement of the trademark as well-known is the TURKMENPATENT.

The regulatory act under which the mark is recognized as well-known is the Law “On trademarks, service marks and geographical indications”.

Application for recognition of the trademark as well-known

The basis for recognition of the trademark as well-known is the Application filed by an interested natural or juridical person.

The official fee for filing the Application on recognition of the registered trademark as well-known is USD 850.

The official fee for filing the Application on recognition of the unregistered trademark as well-known is USD 1500.

Evidences certifying the well-knownness of the trademark

There is no regulatory act prescribing a procedure and the list of required documents for recognition of a trademark as well-known in Turkmenistan.

That is why while filing the Application on recognition of a trademark as well-known the Article 6bis and Article 10bis of Paris Convention and the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, approved by the General Assembly of the World Intellectual Property Organization (WIPO) and the Assembly of the Paris Union for the Protection of Industrial Property in September 1999 are used.

Evidences certifying the well-knownness of the trademark:

  1. extent of well-knownness or recognition of the trademark in the relevant circle of society
  2. duration, extent and geographical scope of any use of this trademark (sales volume in different countries, including the Duty free shops)
  3. duration, extent and geographical scope of any activity on promotion of the trademark, including advertising or presentation at exhibitions of goods or services, for which the trademark is applied.
  4. duration and geographical scope of any registrations or applications for the registrations of the trademark, confirming the use and the recognition of this trademark
  5. Written references (publications) about the successful exercise of rights regarding the trademark, in particular with the reference to extent to which the trademark was recognized as well-known (preferably the copies of decisions on recognition of the trademarks as well-known in different countries).
  6. Value of the trademark (position in the world rankings)
  7. Certified list of countries where the sign is recognized as well-known

Decision on recognition of the trademark as well-known, legal protection of the well-known trademark

The legal protection is granted to the well-known trademark on the base of decision of TURKMENPATENT, rendered upon the corresponding Application.

The legal protection for the well-known trademark covers also the goods non-homogenous to those in which regard the trademark was recognized as well-known, if the use of the trademark by other person is associated among the relevant circles of consumers with the owner of a well-known trademark and do not infringe his lawful interests.

The legal protection of the well-known trademark is unlimited.

The trademarks can not be recognized well-known in case they became well-known after the priority date of the identical or confusingly similar trademark, registered for similar goods and owned by other person.

Recordal in the State Register of well-known trademarks in Turkmenistan

Information about the trademark, recognized as well-known, shall be recorded in the State register of well-known trademarks in Turkmenistan.

Certificate of the registration of a well-known trademark is issued within 3 month from the date of its recordal in the register.

It should be noted that the procedure of registration of a well-known trademark was conducted in Turkmenistan only once in 2002 regarding the series of trademarks SMIRNOFF in the course of cancellation procedure of the Russian trademarks СМИРНОВ.

Termination of legal protection of well-known trademarks

Termination of the legal protection of well-known trademarks is possible only in case of their transforming into the generic name. (For example, xerox, thermos, nylon).