Trademarks for goods and services registered in the territory of Turkmenistan or protected under the Madrid Agreement on the international registration of trademarks, as well as non-registered trademarks which have acquired general notoriety among a substantial segment of the general population as a result of their active use, can be recognized as well-known trademarks.
The authorized agency for acknowledgement of a 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 a trademark as well-known
The basis for recognition of a trademark to be well-known is an Application from an interested natural or juridical person.
Evidences certifying a trademark as well-known
There is no regulatory act prescribing a procedure or the list of required documents for recognition of a trademark as well-known in Turkmenistan.
This is why while filing an Application on the 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.
Decision on the recognition of the trademark as well-known and legal protection of the well-known Trademark.
Legal protection is granted to the well-known trademark on the basis of the decision of TURKMENPATENT, rendered upon the corresponding Application.
The legal protection for the well-known trademark covers also goods non-homogenous to those in which regard the trademark was recognized as well-known, if the use of the trademark by other persons 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 for the well-known trademark is unlimited.
The trademark cannot be recognized as well-known if it became well-known after the priority date of an identical or confusingly similar trademark registered for similar goods and owned by other persons.
Recordal in the State Register of well-known trademarks in Turkmenistan
Information on the trademark which has been recognized as well-known shall be recorded in the State register of well-known trademarks in Turkmenistan.
The certificate of registration of a well-known trademark is issued within three (3) months from the date of its recordal in the register.
It should be noted that the procedure of registration of a well-known trademark has been conducted in Turkmenistan only once in 2002 regarding the series of trademarks SMIRNOFF in the course of cancellation procedures 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 a case of their transforming into a generic name. (For example, Xerox, Thermos, Nylon).