Intellectual property rights holders may permit third parties through license agreements to use their intellectual property rights nationwide or only in certain regions. In this short article, we will be analyzing the general provisions regarding the license agreements of trademarks, designs, patents and utility models under the Industrial Property Code numbered 6769 [1].
License Agreement
Licensors and licensees may determine the conditions of the license within the boundaries of the freedom of contract.
Regardless of whether a trademark, design or patent right is concerned, license agreements are deemed non-exclusive unless otherwise explicitly agreed on the agreement. In non-exclusive license agreements, licensors may enter into new license agreements with third parties other than the licensee and may use the relevant intellectual property right itself. On the other hand, in exclusive license agreements, licensors cannot enter into new license agreements with third parties, and unless they have reserved their right, cannot also use the respective intellectual property right.
Unless otherwise agreed in the agreement, an exclusive licensee is entitled to initiate all types of lawsuits in case of the infringement of the relevant intellectual property right. However, a non-exclusive licensee’s right to initiate a lawsuit against infringement is, in principle, limited.
With trademarks, partial licenses, i.e. granting a license only for certain goods and services, are possible. In the case of multiple design applications, a license may be granted to all or only some of the designs subject to multiple applications.
Optionally Recorded with the Turkish Patent and Trademark Office
Contrary to assignment agreements, there are no provisions under Turkish law foreseeing that license agreements are required to be notarized for validity. The record of the license agreement with the registry of the Turkish Patent and Trademark Office (“Office”) is also voluntary.
However, there are certain advantages for license agreements recorded with the registry, which may be listed as follows:
Unless the license agreement is recorded with the registry, it is not enforceable towards third persons with good faith.
Licensors cannot waive from their trademark, design or patent rights without the permission of the licensee whose license is recorded with the registry.
Licensors cannot renew their trademark partially without the permission of the licensee whose license is recorded with the registry.
Licensors cannot provide a consent letter to third parties for the registration of identical or similar trademark applications without the permission of the licensee whose exclusive license is recorded with the registry.
If an exclusive patent license is recorded with the registry, licensors cannot request the Office to publish their license offer to third persons.
For the license to be recorded with the registry of the Office, the following must be submitted to the Office:
A petition requesting the record of the license agreement,
The license agreement, if concluded in a foreign language, its Turkish translation approved by a sworn translator,
Information confirming the payment of the record fee, which is TRY 5,700 for trademarks, TRY 4,890 for designs, and TRY 1, 840 for patents in 2024.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
[1] Please note that this article does not cover the licensing of copyrights, which is regulated under a different piece of legislation in Turkey, namely the Intellectual and Artistic Works Code numbered 5846.