FAQ Page (New Resources)

ADR techniques, such as mediation and arbitration, are available in Armenia, although not commonly used. This may be because court proceedings in Armenia are, in general, much less costly than in developed countries.

Practically all trademark disputes, except for criminal and administrative cases, can be arbitrated. Arbitration is usually based on an arbitration clause contained in an earlier contract, such as a license or distribution agreement. Without such a pre-existing contractual relationship, the infringer is sued in the ordinary court.

An arbitral award is enforceable as a judicial decision as long as it has been declared enforceable by a court.

Benefits of arbitration include confidentiality, flexibility, shorter duration of proceedings and greater control over the law to be applied and the selection of neutrals. In addition, arbitration is better suited for multi-jurisdictional disputes.

The drawback is that costs are incurred in relation to the payment of the arbitrators, the venue and other expenses. Also, ordinary courts may be in a better position to order preliminary measures in case of urgency. Appeals are limited from arbitration awards.

The remedies available to a prevailing plaintiff can include monetary damages, injunction against future infringement, erasure of the infringing sign, seizure and destruction of the infringing goods, and publication of the judgment at the defendant’s expense. The court may also award reasonable attorney’s fees. Criminal remedies are typically pursued separately.

Injunctive relief is available to anyone whose trademark rights have been infringed or are being threatened with infringement. Thus, cease-and-desist orders are available either preliminarily based on interlocutory judgment or permanently based on the court’s final judgment if there is a risk of repeated infringement by the defendant.

If the claimant acts sufficiently quickly after becoming aware of the infringement it may apply for interim protective measures to enjoin the infringer from using the plaintiff’s trademark for the duration of the proceedings. Interim protective measures include restraining orders (ban of further sale), attachment, custody (e.g. seizure of goods from the infringer’s warehouse), and preservation of evidence. Injunctions are granted ex parte, i.e. without hearing the defendant. The court may order preliminary measures if the plaintiff shows that the enforcement of the potential judgment will otherwise be rendered impossible or complicated. Such relief lasts until a certain moment in time, usually until the decision on the merits of the case becomes final.

The court may also order the infringer to provide all the banking, financial and commercial documents and any other information regarding the trademark infringing activities and persons (such as names of producers, importers, distributors, intermediaries, shop-owners, invoice details, volume of goods, orders, pricelists etc).

A successful plaintiff is entitled to claim destruction of the unlawfully marked products, unless this request is disproportionate (e.g. erasure of infringing marks from the goods is an effective remedy). This claim shall also apply to materials and devices that have been used mainly for the unlawful marking of the products.

The publication of the decision can also be requested, with the costs charged to the defendant.

Additionally, the plaintiff may claim compensatory (not punitive) damages and delivery of profits. The amount of monetary relief depends on the plaintiff’s ability to demonstrate his or her loss or damage or the defendant’s unlawful profit. The amount awarded may be based on publicly available annual reports, lost license fees, reduction in sales, dilution of the trademark, disorganization of the distribution network, etc. In some cases an expert can be designated in order to evaluate the prejudice suffered by the plaintiff.

Furthermore, customs may be a good partner in stopping counterfeit goods. If instructed in advance, customs may suspend goods so that the trademark owner can make an attachment after their warning.

If a criminal act of trademark infringement has been committed the sanctions imposed may be confinement of up to three months or a fine of up to USD 2,500.

Third parties infringing trademarks even if they are acting as intermediaries such as distributors, importers, holders or exporters of trademark infringing goods, may also face criminal sanctions.

Search and seizure orders are effective remedies under criminal law allowing Armenian enforcement authorities to intervene very quickly.

Technically, aggrieved parties can also obtain an award for damages in criminal proceedings. However, it is more common for courts to single out civil claims to consider them in a separate civil procedure.

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.

1.    Non-infringement

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”).

3.    Counter-claim

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.

There is only one avenue of appeal in civil actions (trademark infringement and dilution) in Armenia, namely from the court of general jurisdiction to the Court of Appeals, and thereafter to the Court of Cassation.

Preliminary injunctions and other provisional remedies are not subject to appeal.

The appeal shall be filed within one month of the day of publication of the judgment of the first-instance court.

The Court of Appeals reviews the case within the limits of appeal. New evidence is generally not admissible. The appeal may be lodged due to violations of the civil procedure provisions, due to a mistake in the finding of facts or incomplete finding of facts or due to incorrect application of material law.

The Court of Cassation does not consider the facts of the case but only decides on the law, its interpretation and its application.

The trademark litigation costs in Armenia vary and depend, among other things, on the appointed counsel and the complexity of the case, i.e. the documentation needed, witness statements and expert opinions required, translation costs, marketing reports, market surveys, and whether the trademark owner seeks preliminary injunction or other provisional remedies.

Overall, the costs of litigation in Armenia are not exorbitant and can certainly be afforded even by small enterprises. A typical range for attorneys’ fees for filing and prosecuting an action in the court of first instance would be $2,000 to $5,000. As the subject matter of appeal proceedings is often more limited than in first-instance proceedings, attorneys’ fees will typically be lower.

In addition, court fees (which will need to be advanced to the court) will be incurred. These are calculated on the basis of the value in dispute, namely 2% for trial courts and 3% for appellate courts.

At the end of an action, the court generally awards attorneys’ fees to the prevailing party. However, the sums that can be recovered do not cover the actual fees incurred, but simply a percentage of the same, often 30-50% of the actual costs.

Criminal actions may be less expensive than civil actions because governmental authorities will perform part of the work, including all investigations. However, there is still a great deal of work that needs to be performed by counsel.

All trademark infringement or dilution proceedings vary in length depending on the workload of the courts, the complexity of the facts and legal questions raised, the documentation needed, procedural difficulties, appeals, etc.

On average it takes seven to nine months for a judgment to be issued, if no expert opinion is needed. The first hearing is typically set two months after the lawsuit is filed. If an appeal is lodged, the Court of Appeal’s decision may take another five-six months. Proceedings before the Court of Cassation usually take three-four months.

Interim protective measures can be obtained either before or pending litigation on the merits in a matter of days. The court’s orders are granted ex parte. Interim measures are granted if the enforcement of the judgment will otherwise become impossible or more difficult. The court’s orders on interim measures cannot be appealed.

Under criminal law, it takes around three-four months until the pretrial investigation phase is over and the trial begins. The duration of a criminal trial is comparable to that in civil proceedings.

There is a general rule that the plaintiff needs to prove all facts that support his claim, whereas the defendant will have to prove all those facts that serve to defend his position. Accordingly, the plaintiff must prove that it is the rightful owner (or licensee) of a valid trademark. If the trademark is registered, a certificate issued by the Armenian Intellectual Property Agency (AIPA) will be sufficient for this purpose. The plaintiff asserting infringement or dilution will also have to prove all facts establishing that the alleged infringing acts took place and that the defendant participated in such infringing acts.

A mark is infringed by the use of an identical sign for identical goods or services, or of an identical or similar sign for identical or similar goods or services provided that the risk of confusion may arise on the part of the public, which may also consist in a risk of association. A mark which enjoys good reputation in Armenia is also infringed by the use of an identical or similar sign which permits any unfair advantage to be taken of, or is detrimental to, the distinctive character or reputation of the registered mark, irrespective of any likelihood of confusion or association (art. 12 of the Armenian Law on Trademarks).

In criminal cases, an investigator will be appointed to conduct investigations in order to establish infringement.

Any type of evidence (invoices, samples of the infringing products, catalogs, brochures) that is deemed to be appropriate may be brought forward, and it is up to the court to decide how much weight should be attached to a piece of evidence.

Armenian procedural law does not provide for full discovery, but in pending trademark infringement actions courts may generally order evidence disclosure measures upon request of a party, such as disclosure of documents and inspection of objects. Such orders are directed against either an adverse party or a third party, including government entities. In proceedings on the merits the courts should interpret a refusal by a procedural party to provide evidence, documents or information against that respective party.

The parties are entitled to see documents that are referred to in the pleadings, witness statements, etc. Furthermore, an adverse party may be interrogated before court upon request of either party, and any person may be ordered by the court, upon request of a party, to give testimony. Parties do not have to produce privileged documents such as those including legal advice from the parties’ lawyers.

In addition, it is possible to obtain seizure of infringing goods as a provisional remedy. Such goods may serve as proof in subsequent proceedings.

Summary proceedings are available, also prior to the filing of an action, in which endangered evidence may be secured or facts may be established.

Orders can be made against parties outside Armenia. These will then have to be dealt with by letters rogatory addressed to the court of the relevant jurisdiction in order to obtain the documents in question. Armenia became party to the Hague Evidence Convention in 2012.

An alleged infringer’s activities outside Armenia, and possible on-going or closed actions against him in other countries, may be important as supportive evidence to establish infringement or dilution in Armenia.

In criminal cases investigating officers enjoy extensive powers for obtaining evidence.

Activities that take place outside the country of registration generally cannot support a charge of infringement or dilution. Thus, any infringement that takes place in a foreign country, even in a neighboring country, cannot be prevented on the basis of an Armenian trademark.

Import and export of products (but not transit) to and from Armenia qualify as acts inside the country that may infringe an Armenian trademark right. Customs authority assistance measures are available against infringing goods.

If a company has a prior foreign (registered or unregistered) trademark and a competitor files in a similar or identical junior trademark in Armenia in order to hinder the first company from entering into the Armenian market then the first company may sue the competitor for having registered its trademark in bad faith so that the junior trademark will be cancelled ex tunc.

Armenian courts may have jurisdiction to judge an action brought against a person domiciled in Armenia for infringement of trademark rights in other jurisdictions. In these cases, acts committed outside Armenia and in the jurisdiction where the alleged infringement took place will be considered.

Trademark enforcement and infringement actions in Armenia must be initiated before the courts of general jurisdiction. There are no specialized courts or tribunals to hear such cases.

Court proceedings are typically initiated by filing a written statement of claim with the court of general jurisdiction. The venue is determined by the place of residence of the defendant. Once served the defendant is requested to file a statement of defense. The parties must allege the facts relevant to their position in their briefs and enclose all pieces of documentary evidence they can provide. After the exchange of written briefs, and several oral hearings, the case is decided by one legally qualified judge.

Under criminal law, proceedings are instituted upon the filing of a criminal complaint by an injured party. Criminal proceedings consist of a first pretrial investigation phase, occurring in secrecy, during which all the appropriate investigations are carried out to decide if the case should proceed to trial or be dismissed. If the case goes to trial, the owner of the trademark has the possibility of joining the proceedings as an aggrieved party. Civil proceedings may be concurrent with criminal proceedings. The duration of criminal proceedings is similar to that of civil proceedings.

A trademark infringement action may be brought by the owner of (or applicant for) the infringed trademark. A licensee may bring an infringement action only if the trademark owner consents thereto unless the license agreement provides otherwise. Exclusive licensees are entitled to proceed independently if the trademark owner does not take action within a reasonable period of time after receipt of such request.

Licensees may join an action brought by the trademark owner in order to claim their own damages. This intervention is not subject to the consent of the trademark owner.

A nullity action against a trademark may be brought not only by the owner of a confusingly similar prior trademark but by practically any person.

In criminal proceedings the trademark owner, licensees and other interested parties have standing to bring a complaint.

The owner of an Armenian registered trademark may apply to the Armenian State Revenue Committee to retain infringing goods at the Armenian border. A state fee of approximately $50 shall be paid together with the application. If goods are suspected of infringing trademark rights, the customs authorities shall suspend release of the goods or detain them. The period during which the customs authorities are to take action shall not exceed two years and may be renewed as long as the trademark is in force. The customs authorities shall inform the trademark owner and the declarant or holder of the goods of its action. After that information, a period of 10 working days starts for the initiation of further steps, such as posting security and obtaining a preliminary court injunction to suspend the release of the goods by court order.

Security interests (collateral rights) over trademarks are recognized by Armenian law. The right conferred by a trademark (or trademark application) may be given as a security or may be levied in execution (art. 28 of the Law on Trademarks).

Security interests must be contained in a written agreement signed by the parties and specifying the nature, the amount and the performance period of the underlying obligation. There is no further requirement such as notarization.

Security interests (liens, pledges etc.) may be recorded with the Armenian Intellectual Property Agency (AIPA) upon request of one of the parties if proof thereof is furnished to the AIPA.

The registration is not a precondition either for validity or enforceability of the security rights. However, the party who relies on such a security interest has a high interest in having it recorded to make it opposable to third parties.

Trademark assignments are registered with the Armenian Intellectual Property Agency (AIPA). To register the assignment it is necessary to provide the AIPA with the assignment document which must be in writing and be signed by the assignor (previous owner) to be valid.

No notarization or legalization is required. The document should state clearly who the parties are (name and full address) and which trademarks (registrations and applications) are to be transferred.

If the procedure is handled by an agent, he or she will need a power of attorney from the new owner (simply signed, no notarization or legalization required).

The assignment document should be translated into Armenian and a state fee of approximately $150 is payable.

The right conferred by the registration of or application for a trademark may be transferred or assigned to another person in respect of some or all of the goods or services for which the trademark is protected.

Assignment of a trademark in Armenia shall be in writing and be registered with the Armenian Intellectual Property Agency (AIPA) in order to be valid (art. 1175 of the Civil Code of Armenia). Thus, failure to register will make the assignment unenforceable not only against innocent third parties but also the assignor and the assignee.

The AIPA has one month to examine the documentation and register the assignment. Refusal to register the assignment (e.g. on the ground of potential deception of the public) can be appealed to the court or the AIPA Appellate Committee. Information on assignments is published in the Official Journal of the AIPA.

The business previously attached to the mark does not have to be transferred together with the trademark. To record the assignment, the parties do not have to include a value or consideration for the goodwill attached to the trademark.

The AIPA does not control the conditions of the assignment. However, an assignment may be prohibited if it could potentially deceive the public concerning the nature, quality or origin of the goods and services.

Rights to unregistered trademarks can be assigned under general provisions of the civil law and are not subject to recording.

To be valid and enforceable against third parties a license agreement shall be recorded with the Armenian Intellectual Property Agency (AIPA).

It is possible to specify in the recordal that the license is an exclusive, a sole, or a non-exclusive license, as well as to specify that the license is a partial one having effect only for some of the specified goods or services of the trademark registration.

The recordal has essentially the aim of making public the rights acquired by the licensee through the license. Information on licenses is published in the Official Journal of the AIPA.

A famous foreign trademark is not afforded protection if it has not been used domestically in Armenia. Such protection is only available where the foreign trademark has become well-known (widely recognized) among the relevant public in Armenia through its actual use.

Furthermore, the law requires the Armenian Intellectual Property Agency (AIPA) to maintain a separate list of famous trademarks. In order to have a trademark listed as well-known the applicant shall submit a request to the AIPA Appellate Committee together with evidence showing the level of recognition and payment of a state duty (around USD 600). The Appellate Committee then has two months to affirm the well-known character of the mark. Such affirmation affords the foreign trademark protection equivalent to that of registered trademarks. The list of well-known trademarks is available online at http://www.aipa.am/en/well-tm/.

Even where the foreign trademark is not used and is not well-known in Armenia it is afforded protection insofar as that trademark may preclude the registration of an identical or similar trademark in Armenia. This can happen if there is a likelihood of confusion and the applicant knew or could have known about the existence of the foreign trademark.

It is worth noting that a sign used domestically without any registration may still be protected under unfair competition law.

Registration confers on the owner the exclusive right to use the trademark, to dispose of it and to prevent others from using and registering an identical trademark or a confusingly similar trademark for identical or similar goods or services.

The general rule is that only the filing of a trademark gives the owner trademark rights. The owner of a non-registered trademark may enjoy only limited protection offered by the competition law. Thus, the main benefit of having a registered trademark is that it strengthens enforcement against third-party use of the trademark.

The owner of a registered trademark can claim prima facie validity of its title, whereas the owner of a non-registered trademark must prove his or her right by submitting substantiating materials and documentation.

Moreover, registration of a trademark is recorded on a public database and acts as a deterrent to third parties.

The criminal law is also more willing to protect registered trademarks as opposed to de facto-use trademarks.

In addition to this, trademark applications or registrations can be recorded with the Armenian customs authorities for border enforcement mechanisms such as seizures of counterfeited goods.

Technically well-known (notorious) trademarks are protected in Armenia without registration through the actual use. However, a separate list of such trademarks is maintained by the Armenian Intellectual Property Agency (AIPA). This means that the owner of a well-known trademark still needs to apply for inclusion of that trademark in the list. Once a trademark is recognized by the AIPA as well-known it is granted the same level of protection as a registered trademark.

Owners of a trademark may use the ® symbol to indicate that the mark concerned has been registered with the Armenian Intellectual Property Agency (AIPA) or to use the phrase “registered mark” (art. 12 of the Armenian Law on Trademarks). The benefit of using such a symbol is that it signals immediately that such trademark is registered and, thus, protected. This puts third parties on notice and so discourages misuse.

However, it is not mandatory to use such symbols. In particular, the right to demand damages in infringement proceedings will not depend on the use of symbols.

False indications are treated as unfair competition practices and may be subject to sanctions falling under the Law on Protection of Economic Competition.

A trademark registered in Armenia remains in effect for 10 years starting with the date of filing the application. At the end of this period it may be renewed for further 10-year periods. In order to maintain the registration, official fees (currently around $300 for a trademark in one class) have to be paid to the Armenian Intellectual Property Agency before expiration of the 10-year term or within a six-month grace period (for a higher fee).

No proof of use is required in order to maintain a trademark. However, if the trademark has not been put to effective use within a period of five years after the date of registration, the trademark may be cancelled based on grounds of non-use whether or not the official fees have been paid.

The trademark owner bears the burden of proving that the trademark is in use if a dispute occurs. This can be proved by means of sales invoices, advertisement, license agreements etc.

Once a trademark application is accepted, it is published online in the Official Journal (http://aipa.am/en/trademark-applications/) for a two-month opposition period. The most common ground for opposing a trademark is prior rights when the opponent owns an earlier mark that it considers the same as, or similar to, the applicant’s. The opposition may be based on previously filed or registered trademarks, an earlier well-known trademark, geographical indication or another earlier sign used in the course of business.

If an opponent decides to challenge a mark, the initial stage involves the filing of a notice of opposition. An official fee of approximately $25 is payable. In the opposition proceedings, one or two exchanges of briefs will take place between the parties before the Armenian Intellectual Property Agency issues the opposition decision.

Once a trademark has been registered, it is still possible to take legal action to challenge it and various options are available, including procedures known as invalidation and cancellation. Anyone may file a cancellation action based on non-use if within a continued period of five years after the date of registration the trademark has not been put to effective use. The registration of a trademark may also be invalidated on request on the grounds of nullity based on absolute grounds (i.e., the trademark concerned is descriptive and non-distinctive). In Armenia a cancellation/invalidation action is judged by a court of general jurisdiction in proceedings on the merits. The judgment is subject to appeal with the Court of Appeals.

If any objections are raised by the Armenian Intellectual Property Agency (AIPA) at examination stage, the applicant will have the opportunity to persuade the examiner that the objections are not valid. If the objections relate to the goods and services listed in the specification, the applicant will be given the chance to make amendments to these.

If a trademark application is rejected by the AIPA following the first examination the applicant can request a second examination within two months after having been notified of the rejection. The second examination will be performed within a two-month period and a decision will be issued either confirming the first decision or repealing it.

If an unfavorable decision is issued after the second examination it can be appealed to the Appellate Committee of the AIPA within three months after it has been served on the applicant.

Decisions of the first examiner, the second examiner and the Appellate Committee are all subject to an appeal to the Administrative Court within six months after they have been served on the applicant. The applicant has the choice if he or she wants to appeal the AIPA’s decision directly to the Administrative Court or if he or she wants to have the AIPA’s decision first reviewed by the Appellate Committee and then file an appeal against that decision.

The official fees for filing an appeal with the Appellate Committee are approximately $120; for filing an appeal to the Administrative Court, $10.

The Administrative Court issues a decision which may be appealed to the Administrative Court of Appeals and then to the Court of Cassation.

Upon application the Armenian Intellectual Property Agency (AIPA) acknowledges receipt of the application detailing the trademark and the applicant’s name. Within one month following the application the AIPA examines the formalities (e.g. the correct classification). If no irregularities are found, the application will be published in the Official Journal for a two-month opposition period. The Official Journal for trademark applications is available online athttp://aipa.am/en/trademark-applications/.

In the meantime the AIPA will proceed ex officio to substantive examination, i.e. check for absolute grounds for refusal (e.g. whether the mark is descriptive) as well as for relative grounds for refusal which are based on prior third-party rights. In other words, the AIPA examines the application for potential conflicts with other trademarks or other prior rights and for this purpose considers all information at hand, including oppositions from third parties. The substantive examination shall take no longer than three months; however this period may be extended if an opposition if filed.

If the AIPA rejects an application the applicant is entitled to request a second examination. The applicant also has the option of amending the trademark to overcome the AIPA’s objection, but in such a case the application date will be deferred to the date of the amendment. If the applicant fails to meet the requirements for registration in respect of only some of the goods or services for which protection is sought the AIPA may grant the registration in part, covering only those goods or services that comply with the requirements.

The decision to grant protection will be published in the (monthly) Official Journal of the AIPA available online athttp://aipa.am/en/industrial-property/.

A trademark in Armenia typically costs about $500 for registration in one class of goods or services. This includes the official fees, as well as lawyers’ costs. Extra costs may arise for further classes or in the case of complications (objections, appeals etc.). Translation costs may be incurred in case of extended lists of products and services.

A trademark application filed with the Armenian Intellectual Property Agency (AIPA) usually takes about eight months to reach registration, provided no objections are encountered. If the AIPA or a third party raises any objections the registration will take longer, and possibly up to several years if parallel court proceedings are initiated.

It should be noted that an Armenian trademark is granted protection from the filing date so that pending applications can be enforced in court against a later infringing trademark.

The registration system in Armenia is based on an internationally agreed system of classes called the Nice International Classification System (45 classes, comprising 34 for goods and 11 for services). Each class has different sub-classes. The current version in English is available at the WIPO’s website, www.wipo.org

Armenia has been a party to the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of marks (1957) since 6 March 2005.

Starting from registration the trademark owner has a five-year grace period within which the trademark cannot be contested on the grounds of non-use. After that period anyone may file a cancellation action based on non-use. In such a case, maintenance of the trademark will depend on proof of use or justification of non-use. Furthermore, the owner of such registered trademark cannot assert any claims against third parties, if, within a period of five years preceding the assertion of the claims, the trademark has not been put to effective use.

It is possible to “claim priority” when filing a trademark application. This means that if an applicant files a trademark application in a country outside Armenia that is party to the Paris Convention or the World Trade Organization, priority can be claimed in a corresponding Armenian application, provided the Armenian application is filed within six months of the foreign application. This means that the Armenian application will be considered to have been filed on the same date as the foreign application cited. Claiming priority can help increase the possibility of an application achieving registration despite another similar application because the priority will afford the applicant earlier rights. Mere use in a foreign country does not give rise to priority. In addition, an applicant may claim priority if services or goods bearing the trademark have been displayed at an internationally recognized trade show or trade fair within the last six months.

Applications can be made either for trademarks that are already in use or for trademarks that are not yet in use. There is no need to submit any proof of use/intent of use of a trademark even upon renewal.

There is an exception, however, where proof needs to be submitted to overcome absolute grounds for refusal, i.e. non-distinctiveness. Such proof needs to show that the sign has acquired distinctiveness as a result of the use made of it prior to the date of application.

Trademark protection in Armenia is extended to any mark used to distinguish goods and services and that may be graphically presented.

A trademark can, for example, consist of letters, numerals, words, including personal names and company names, building names, word combinations, slogans, logos, pictures, drawings, holograms, arrangement of colors, symbols, or combinations of one or more of those elements.

Aside from these conventional trademarks, Armenian law grants protection to “non-traditional” marks such as the shape of goods or their packaging, three dimensional marks, sound, texture etc.

Service marks, jointly-owned marks and collective marks may also be registered as trademarks.

A sign cannot be registered if it lacks distinctiveness, i.e. is descriptive or generic. This can be the case where the sign consists purely of elements pertaining to the amount, quality, condition, value, place of origin or other characteristics of the goods or services or if the sign serves as the common term for the goods and services at hand.

A sign cannot be registered if it would be capable of deceiving the public or would constitute infringement of a copyright, industrial property right or any other third parties’ exclusive rights.

Furthermore, a sign cannot be registered as a trademark if it is offensive or consists of specially protected emblems (flags, official signs of quality control etc.)

It is worth noting that what may be registered as a company name or domain name may not be acceptable as a trademark.

A trademark application shall be filed with the Armenian Intellectual Property Agency. It shall contain the following information:

• name and contact information for the applicant and its representative (if any);
• description of the trademark;
• the list of goods and services to be covered by the trademark.

The above information shall be filled out in Armenian language. An application form can be downloaded at the official website of the Intellectual Property Agency at http://aipa.am/hy/forms/.

Any natural and legal person may apply for and own trademarks in Armenia, including non for profit organizations. It is not required for natural persons to be registered as individual entrepreneurs.

There are no Armenian residency or citizenship requirements for the applicants. Foreigners enjoy the same legal regime as Armenian residents subject to a reciprocity requirement. However, foreign legal and natural persons shall apply through their Armenian agents unless they have a permanent establishment/residency in Armenia. It is strongly advised to use professional legal services.

A trademark is subject to registration whether or not its owner runs a related business or is engaged in commercial activities in Armenia. There is no requirement to file a declaration of intention of use or affidavit of use or any similar document.

Several applicants may apply jointly and co-own a trademark. Collective marks are also available.