In trademark infringement proceedings in Armenia numerous defenses are available, and depend on the specific facts in question. Generally they can be grouped into four categories.
The defendant may argue that no infringement took place, in particular:
- The sign complained of is not identical or similar to the plaintiff’s trademark;
- The goods/services on which the sign is used are not identical or similar to those for which the plaintiff’s trademark is registered;
- In all cases where confusion or a likelihood of confusion must be shown, the defendant should consider whether the plaintiff is likely to succeed in satisfying these tests. The factors in an analysis of the likelihood of confusion are varied and include differences between the marks, differences between goods or services, different channels of trade, different purchasers, and weakness of the mark as evidenced by numerous third-party users of the same or similar mark.
- If dilution is claimed, the defendant should investigate whether the earlier right has acquired the necessary reputation and whether the plaintiff is likely to be able to show that customers will link the sign complained of with the right relied on. Alternatively, the defendant may show that no dilution took place as the mark still has a function as a distinguishing sign for particular products;
- The allegedly infringing sign is not used as a trademark;
- The infringing activities were not conducted by the defendant;
- The allegedly infringing goods did not enter the market of Armenia.
2. Justification (affirmative defenses)
Exhaustion. The trademark owner may not prohibit the use of that trademark in relation to goods which have been put on the market in any country under that trademark by the owner or with its consent, unless there are legitimate grounds for the owner to object to further marketing of the goods, in particular where the condition of the goods has been altered or adversely affected after they have been marketed.
Non-action (acquiescence/tolerance). The defendant may invoke non-action, namely, that the owner of a trademark has acquiesced, for a period of five successive years, in the use of the allegedly infringing trademark while being aware of such a use, unless the application for the later trademark was filed in bad faith.
Fair use.The exclusive right shall not imply the right to challenge a third party over the use in business of:
- Its name and address;
- Indications relating to the kind, quality, quantity, intended purpose, value, geographical origin or time of manufacture of a product or provision of a service or other characteristics thereof; or
- The trademark, where it is necessary in order to indicate the purpose of a product or service, particularly as an accessory or spare part; provided that such use is made in accordance with fair use in the conduct of industry or business.
Freedom of expression may be a sound reason for use.
Bad faith where the mark was registered contrary to good faith by the plaintiff (“abuse of right”).
Invalidity.The defendant may argue that the plaintiff’s trademark has descriptive or misleading content, or has become generic, so that the plaintiff’s trademark registration is thus null and void and must be cancelled. The plaintiff’s trademark may also be vulnerable to a claim for invalidity on the basis of an earlier right. For alleged infringement of a well known trademark the defendant may claim that the trademark in question is not well known.
Non-use. The defendant may also argue that the grace period of five years for the non-use of the plaintiff’s trademark registration has expired and that the plaintiff’s trademark right has thus become unenforceable.
Dilution.The plaintiff’s trademark may have become subject to revocation on the basis that, in consequence of the acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered.
The usual step for the defendant is to file a counter-claim with the court before which the infringement action was brought.
4. General procedural defenses
Claims for infringement shall come under the statute of limitations after three years from the time when the plaintiff obtains knowledge of the infringement. There also may be objections based on the capacity to bring proceedings or the plaintiff’s bad faith.