Trademarks in Armenia

El registro confiere al propietario la siguiente beneficios:

• Derecho exclusivo a utilizar la marca comercial, a disponer de ella y a evitar que otros utilicen y registren marcas comerciales confusamente similares;
• El registro de la marca se registra en una base de datos pública y actúa como disuasivo para terceros;
• El derecho penal protege las marcas registradas;
• Los registros de marcas comerciales se pueden registrar con las autoridades aduaneras de Armenia para los mecanismos de aplicación en las fronteras, como la incautación de productos falsificados.

In Armenia, individuals and businesses have the option to request the Intellectual Property (IP) Agency to conduct a trademark search. This search is aimed at identifying trademarks that are either identical or similar to the one you intend to register and are already protected in Armenia. The government fees associated with conducting a trademark search can vary depending on the type of mark (whether it's a word, an image, or a combination of both) and the number of classes of goods and services that your trademark will cover. The trademark search process typically takes around two months to complete. Importantly, conducting a trademark search before filing your trademark application is not obligatory. 

Disclaimers:

• Disclaimers are often included alongside the trademark application. Their purpose is to proactively address any concerns and prevent office actions by the IP Agency.
• A disclaimer is essentially a statement indicating that the applicant does not claim exclusive rights to use a specific word within the trademark in isolation. Instead, exclusive rights are asserted over the entire mark as a whole.

Letters of Consent:

• A letter of consent can be a valuable tool to overcome potential registration refusal. In this case, the applicant requests the owner of an identical or similar trademark (which may or may not have an affiliation with the applicant) to issue a letter of consent.
• Typically, trademark owners are willing to provide such consent letters if they believe that there will be no confusion among consumers due to the similarity of the trademarks.

When you submit a trademark application to the Intellectual Property (IP) Agency in Armenia, it will acknowledge the receipt of your trademark application, which includes details about the trademark itself and the applicant's name. Within one month following the application submission, the IP Agency will conduct a formal examination. This involves checking for proper classification and ensuring that there are no irregularities in the application. If everything is in order, the IP Agency will publish the trademark application in the Official Journal, signaling the beginning of a two-month opposition period. 

Simultaneously, the IP Agency conducts a substantive examination. This examination involves two main aspects:

• The agency checks whether your trademark violates any absolute grounds for refusal, such as if it is deemed too descriptive.
• The IP Agency examines your application for relative grounds for refusal, which are based on potential conflicts with other trademarks or prior rights held by third parties. This includes considering any oppositions raised by third parties during the opposition period.

The substantive examination typically takes no longer than three months. However, if an opposition is filed during the two-month opposition period, the process may be extended.

Once a trademark application successfully clears the initial examination stage and is accepted, it is published online in the Official Journal, marking the start of a two-month opposition period. The most common terreno para oponerse a trademark in Armenia is based on prior rights. This occurs when the opponent holds an earlier trademark that they consider to be the same as, or similar to, the applicant's trademark. When an opponent decides to challenge a trademark, they initiate the process by filing a formal notice of opposition. An official fee of approximately $25 is payable for this action. Typically, there will be one or two exchanges of briefs between the parties, presenting arguments and evidence to support their respective positions. After the brief exchange process, the Intellectual Property (IP) Agency will evaluate the opposition and issue an opposition decision.

If your trademark application is rejected during the first examination by the IP Agency, the applicant has the opportunity to request a second examination. This request must be made within two months after you have been notified of the rejection. During the second examination, which takes place within a two-month period, the IP Agency will review your application again. A decision will be issued either confirming the initial rejection or overturning it.

If an unfavorable decision is issued following the second examination, you have the right to appeal it. The appeal should be directed to the Appellate Committee of the IP Agency and must be submitted within three months after you have been served with the unfavorable decision.

The decisions of the first examiner, the second examiner, or the Appellate Committee are subject to an appeal to the Administrative Court. This appeal must be submitted within six months after you have been served with the respective decision.

After receiving approval, the applicant will be required to pay the government fees associated with the trademark registration process. The IP Agency will publish the decision to grant protection for your trademark in the Official Journal. This publication serves as official notice of the approved registration. The publication will be available at https://www.aipo.am/en/. Upon successful completion of the registration process, the IP Agency will issue a certificate of registration to the trademark applicant.

Once your trademark is successfully registered in Armenia, it is granted protection for a period of 10 years, starting from the date of filing the application. To mantener el registro of your trademark beyond the initial 10-year period, you must apply for renewal. Official renewal fees apply, which are currently approximately $300 for a trademark in one class. Renewal fees must be paid to the Intellectual Property (IP) Agency before the expiration of the 10-year term or within a six-month grace period, though a higher fee may be required during the grace period.

Owners of registered trademarks in Armenia have the option to use el símbolo ® to indicate that their mark is officially registered. While using this symbol is not mandatory, it serves as a powerful visual cue to third parties, putting them on notice and discouraging unauthorized use of the trademark.

Once a trademark is registered, there is a five-year grace period during which it cannot be contested on the grounds of non-use. After this initial grace period, anyone may file a cancellation action based on non-use. In such cases, the maintenance of the trademark will depend on the trademark owner's ability to provide evidence of use or justify non-use. Importantly, if a registered trademark in Armenia is not effectively used within the five years preceding the assertion of claims against third parties, the owner may not assert claims against those third parties.

In trademark infringement cases in Armenia, the burden of proof follows a general rule: the plaintiff is responsible for proving all the facts that support their claim, while the defendant must prove any facts that serve to defend their position. Various types of evidence, such as invoices, samples of infringing products, catalogs, and brochures, are admissible, and the court determines the weight given to each piece of evidence.

In criminal cases related to trademark infringement, an investigator is appointed to conduct investigations aimed at establishing the infringement.

Activities of an alleged infringer fuera de armenia, as well as any ongoing or closed legal actions against them in other countries, can be significant as supportive evidence to establish infringement or dilution in Armenia.

Armenian procedural law does not include full discovery procedures, but in pending trademark infringement actions, courts generally have the authority to order divulgación de pruebas measures upon request by a party. These measures may include the disclosure of documents and the inspection of objects. Additionally, it is possible to obtain the seizure of infringing goods as a provisional remedy, which can serve as proof in subsequent legal proceedings. Armenia became a party to the Hague Evidence Convention in 2012, further enhancing its legal framework for evidence-related matters in trademark cases.

The duration of trademark infringement or dilution proceedings in Armenia can vary widely based on several factors, including court workload, the complexity of the case, documentation requirements, procedural challenges, and the possibility of appeals. On average, it typically takes seven to nine months for a judgment to be issued in trademark cases, provided that no expert opinion is needed. The initial hearing is usually scheduled approximately two months after filing the lawsuit. If an appeal is filed, a decision from the Court of Appeal may take an additional five to six months, while proceedings before the Court of Cassation generally require three to four months. Interim protective measures can be obtained swiftly, often within days.

Marca comercial costos de litigio in Armenia also vary significantly and depend on various factors, including the choice of legal counsel and the complexity of the case. These costs encompass expenses related to necessary documentation, witness statements, expert opinions, translation services, marketing reports, market surveys, and whether the trademark owner seeks preliminary injunctions or other provisional remedies. A typical range for attorneys' fees associated with filing and prosecuting an action in the court of first instance ranges from $2,000 to $5,000. In appeal proceedings, attorneys' fees are typically lower due to the more limited subject matter. Additionally, court fees, which must be advanced to the court, are calculated based on the value in dispute, with trial courts typically charging 2% and appellate courts 3%. While the court generally awards attorneys' fees to the prevailing party at the end of an action, these sums typically represent only a percentage of the actual costs incurred, often ranging from 30% to 50% of the total expenses.

It is worth noting that criminal actions may be less expensive than civil actions because governmental authorities handle certain aspects of the work, including investigations. Nonetheless, counsel involvement is still required, and there are costs associated with this involvement. 

In civil actions related to trademark infringement and dilution in Armenia, there is a single avenue of apelación available. This process involves appealing from the court of general jurisdiction to the Court of Appeals and subsequently to the Court of Cassation. It's important to note that preliminary injunctions and other provisional remedies are not subject to appeal. The appeal must be submitted within one month from the day of publication of the judgment issued by the first-instance court.

When the case reaches the Court of Appeals, the review is conducted within the boundaries of the appeal. Generally, new evidence is not admissible at this stage. Appeals can be filed for various reasons, including violations of civil procedure provisions, errors in the findings of facts, incomplete findings of facts, or incorrect application of material law.

The Court of Cassation, however, does not delve into the facts of the case but focuses solely on issues related to the law, its interpretation, and its application.

In trademark infringement proceedings in Armenia, various defenses are available to defendants, depending on the specific circumstances of the case. These defenses can generally be grouped into four categories:

1. Non-Infringement: This category includes defenses where the defendant argues that there is no trademark infringement. Examples of non-infringement defenses are:

• The sign in question is not identical or similar to the plaintiff's trademark.
• The goods or services using the sign are not identical or similar to those covered by the plaintiff's trademark registration.
• When assessing the likelihood of confusion, factors such as differences between the marks, goods or services, distribution channels, purchasers, and the strength of the mark should be considered.
• If dilution is claimed, the defendant may argue that the plaintiff's mark has not acquired the necessary reputation or that there is no dilution.

2. Justification (Affirmative Defenses): These defenses assert that the defendant's actions are justified and legal. Examples of justification defenses are:

• Exhaustion: The defendant may argue that the trademark owner cannot prohibit the use of the trademark on goods that have already been placed on the market with the owner's consent, unless there are legitimate reasons to object.
• Non-Action (Acquiescence/Tolerance): The defendant may claim that the trademark owner has tolerated the use of the allegedly infringing trademark for five successive years, indicating implied consent.
• Fair Use: The exclusive trademark rights do not extend to challenging the use of certain indications necessary to describe a product or service, especially as an accessory or spare part, provided it's done in accordance with fair business practices.
• Libertad de expresión may also be a valid reason for use.
• Bad faith: The defendant may argue that the plaintiff registered the mark in bad faith, constituting an "abuse of right."

3. Counter-claims: These are claims filed by the defendant with the court where the infringement action was initiated. 

• Invalidez. El demandado puede argumentar que la marca comercial del demandante tiene un contenido descriptivo o engañoso, o se ha vuelto genérica, por lo que el registro de la marca comercial del demandante es nulo y debe ser cancelado. La marca comercial del demandante también puede ser vulnerable a una reclamación de nulidad sobre la base de un derecho anterior. Por presunta infracción de una marca notoriamente conocida, el demandado puede alegar que la marca comercial en cuestión no es notoriamente conocida.
• No uso. El demandado también puede argumentar que el período de gracia de cinco años para la no utilización del registro de marca del demandante ha expirado y que, por lo tanto, el derecho de marca del demandante se ha vuelto inaplicable.
• Dilución. La marca del demandante puede haber quedado sujeta a revocación sobre la base de que, como consecuencia de los actos o inactividad del titular, se ha convertido en el nombre común en el comercio de un producto o servicio para el que está registrado.

4. General Procedural Defenses: These defenses pertain to procedural aspects of the case and may involve arguing that the claim is time-barred, questioning the capacity of the plaintiff to bring proceedings, or alleging bad faith on the part of the plaintiff.

In trademark infringement cases in Armenia, prevailing plaintiffs have access to various remedies to address the infringement. These remedies can include:

1. Monetary Damages: The court may award monetary compensation to the plaintiff. The amount of damages can depend on factors such as the plaintiff's demonstrated loss or damage, the defendant's unlawful profit, and other relevant considerations. It may be based on publicly available financial reports, lost license fees, reduced sales, trademark dilution, or disruption of the distribution network. In some cases, expert evaluation may be used to assess the harm suffered by the plaintiff.

2. Injunction Against Future Infringement: The court can issue an injunction to prevent the defendant from further using the plaintiff's trademark. This can prohibit the defendant from continuing the infringing activities for the duration of the legal proceedings.

3. Erasure of the Infringing Sign: The court may order the removal or erasure of the infringing trademark or sign. This remedy aims to eliminate the presence of the unauthorized trademark.

4. Seizure and Destruction of Infringing Goods: The court can order the seizure and destruction of goods bearing the infringing trademark. This measure is intended to prevent the sale or distribution of counterfeit products.

5. Publication of the Judgment: The court may order the publication of its judgment at the defendant's expense. This can serve to inform the public about the court's decision and potentially act as a deterrent to future trademark infringement.

6. Award of Attorney's Fees: The court may award reasonable attorney's fees to the prevailing party. This can help compensate the plaintiff for legal expenses incurred during the litigation.

7. Interim Protective Measures: In cases of urgent trademark infringement, the plaintiff can request interim protective measures. These can include restraining orders (banning further sale), attachment of goods, custody of goods (e.g., seizure from the infringer's warehouse), and preservation of evidence. Interim measures are typically granted ex parte, without the defendant's participation, and remain in effect until a final judgment is reached.

8. Disclosure of Information: The court may order the infringer to provide banking, financial, and commercial documents related to the trademark infringing activities. This can help the plaintiff obtain evidence and details about the infringing activities.

9. Destruction of Unlawfully Marked Products: Successful plaintiffs can request the destruction of products unlawfully marked with the infringing trademark. This may also apply to materials and devices primarily used for the unlawful marking of products.

10. Customs Assistance: Customs authorities can assist in stopping counterfeit goods at the border. Customs may suspend the release of goods suspected of trademark infringement, allowing the trademark owner to take further legal action.

11. Criminal Sanctions: Armenian law provides for criminal sanctions against trademark infringement. Unlawful use of a trademark that causes significant damages (exceeding approximately $500) can result in fines ranging from approximately $1,200 to $2,400 or imprisonment for up to three months. Lesser administrative offenses may also incur fines of approximately $250 to $500. Third parties, such as distributors, importers, holders, or exporters of infringing goods, may also face criminal sanctions. Search and seizure orders under criminal law can enable swift intervention by enforcement authorities.

Alternative Dispute Resolution (ADR) methods, such as mediation and arbitration, are disponible en Armenia for trademark disputes, although they are not commonly used. Here are some key points regarding ADR in Armenia:

1. Availability of ADR: ADR methods like mediation and arbitration are options for resolving trademark disputes in Armenia.

2. Arbitration Clauses: A common scenario for utilizing arbitration is when parties have included an arbitration clause in a prior contract, such as a license or distribution agreement. When such a clause is present, it typically stipulates that any disputes arising from the contract will be resolved through arbitration.

3. Pre-Existing Contractual Relationship: ADR methods, especially arbitration, are typically accessible when there is a pre-existing contractual relationship between the parties that includes an arbitration clause. In cases where no such contractual relationship exists, trademark disputes may need to be addressed through ordinary court proceedings.

4. Enforceability: Arbitral awards resulting from ADR proceedings can be enforceable as judicial decisions, provided they have been declared enforceable by a court. This means that parties can seek enforcement of arbitration awards through the court system if necessary.

5. Benefits of Arbitration:

• Confidencialidad: Arbitration proceedings are often confidential, offering privacy to the parties involved.
• Flexibility: ADR processes, particularly arbitration, are flexible in terms of procedure and scheduling, allowing parties to tailor the process to their needs.
• Shorter Duration: Arbitration can be faster than traditional court litigation, potentially resulting in quicker dispute resolution.
• Choice of Law and Neutrals: Parties have more control over factors such as the choice of applicable law and selection of arbitrators (neutrals).
• Multi-Jurisdictional Disputes: Arbitration can be advantageous for resolving trademark disputes that involve parties from different jurisdictions.

6. Drawbacks of Arbitration:

• Costs: While arbitration can be cost-effective compared to litigation in some countries, there are still expenses associated with the payment of arbitrators, venue, legal representation, and other related costs.
• Preliminary Measures: In situations requiring urgent preliminary measures (e.g., injunctions), ordinary courts may be better equipped to provide immediate relief.
• Limited Appeals: Arbitration awards typically have limited avenues for appeal compared to court judgments.