Business Transfer Without Explicit Trademark Assignment: Infringement Claim Dismissed — Final

Case Overview

The authorised officer of a trademark owner entered into a notarised business-transfer agreement with the defendant in 2022. The claimant argued that because the agreement made no express reference to the trademark, ownership was never transferred — and the defendant's continued use therefore infringed. Experts calculated the defendant's net profit at TRY 649,363 had liability been found.

Findings

• Expert report: First and supplementary reports noted that without an express trademark-transfer clause, infringement could arise — but the final assessment was left to the court.
• Criminal file: Parallel criminal proceedings were reviewed.
• Court ruling: Use of the registered trademark at the transferred premises is a natural consequence of the business-transfer agreement; no separate trademark-assignment deed is required for the use to be lawful.

Key Takeaway: Business Transfer ≠ Trademark Assignment

While this defendant prevailed, the case is a strong reminder that business-transfer agreements should expressly address the trademark. If the mark is being transferred: execute a separate trademark assignment and record it with TÜRKPATENT. If it is not being transferred: a licence agreement is required. Different contract wording could have produced the opposite result.

FAQ

Does buying a business in Turkey automatically include its trademark?

No. Trademarks must be expressly assigned under a separate agreement and recorded with TÜRKPATENT. Courts may interpret the scope of a business-transfer agreement broadly (as here), but there is no guarantee.

Can a business buyer use the seller's trademark without a recorded assignment?

Assessed case by case. Here the transfer scope was sufficient, but best practice is always to formalise a registered trademark assignment or licence.

Disclaimer: For informational purposes only. Contact Elçi Patent for professional trademark advice.