In general, trademarks are typically transferred by assignment during the acquisition of a business or business division, and when a business attempts to gain greater, more senior rights in a certain mark to gain an advantage over a competitor. Both scenarios can foster an invalid transfer of a trademark regardless of the intentions of the parties involved.
In the business acquisition, the buyer of a business reasonably expects to receive the trademarks that represent the acquired business and serve as the repository of goodwill for the business. If the trademark is one that is recognized by the customers of the acquired business, or any portion of the public, then it is an asset with substantial value, albeit one that is difficult to quantify.
Similarly, the seller of a business should reasonably expect to part with the attendant trademarks that promote and identify the business, and may expect to receive a premium for them if the trademarks are particularly well known within a definable market. Properly executed, a trademark assignment allows the assignee to step into the shoes of the assignor, gaining whatever goodwill the assignor has built up, and whatever priority the assignor has in the mark against others.
The second situation, the priority contest, usually results from a declared or impending trademark infringement dispute, where two or more businesses using the same trademark are competing for the sole ownership rights to the mark. Because trademark rights in Turkey are determined by priority in time, an enterprising company will often attempt to acquire an assignment of an older, identical trademark in order to establish a pattern of use that predates that of its competitors. Sometimes the buyer in this situation will intend to use the purchased trademark as a part of its business. Typically, the purchaser in this scenario intends to buy a form of priority as an asset.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
