Armenia, a country blending modern progress with a wealth of history and traditions, beckons with its stunning natural landscapes, culinary delights, low tax rates, a safe environment, and an affordable cost of living. Armenia is a member of international organizations like TRIPS (WTO), WIPO, the Paris Convention, PCT, the Madrid system, and the Eurasian Economic Union.
Navigating Armenia's legal landscape, especially in matters like trademark registration, can be easier with the help of local lawyers who can guide you through the registration process, helping you sidestep potential pitfalls and optimize your prospects for success. From conducting comprehensive trademark searches to handling filings, renewals, oppositions, office actions, customs enforcement, and appeals, legal assistance is key to a successful experience.
Legal Guide to Trademarks in Armenia
Registration confers on the owner the following main benefits:
- Exclusive right to use the trademark, to dispose of it and to prevent others from using and registering confusingly similar trademarks;
- Registration of the trademark is recorded on a public database and acts as a deterrent to third parties;
- Criminal law protects registered trademarks;
- Trademark registrations can be recorded with the Armenian customs authorities for border enforcement mechanisms such as seizures of counterfeited goods.
Both domestic and foreign companies and individuals can apply for trademark registration, regardless of their residency, citizenship, or existing commercial activities within Armenia's borders.
The application shall contain the following information: applicant's name and contact details, along with those of any appointed representative, a clear description of the trademark. a list of goods and services that the trademark will cover.
Trademark protection in Armenia extends to a wide range of marks used to distinguish goods and services, and these may be presented graphically. Examples include letters, numerals, words (including personal and company names), building names, word combinations, slogans, logos, images, drawings, holograms, color arrangements, symbols, or combinations of one or more of those elements.
Applications can be submitted for trademarks already in use or those not yet in use, with the option to 'claim priority' during the application process.
Armenia follows the internationally recognized Nice International Classification System, which includes 45 classes (34 for goods and 11 for services) to categorize trademarks for registration.
Protection of Famous Trademarks:
Foreign trademarks are eligible for protection in Armenia if they have been used domestically. For well-known foreign trademarks not used in Armenia, a separate list of famous trademarks is maintained by the IP Agency. To have a trademark recognized as well-known, applicants must submit a request to the IP Agency Appellate Committee, provide evidence of recognition among the Armenian public, and pay a state fee (approximately USD 600).
Even when a foreign trademark is neither used nor well-known in Armenia, it can still prevent the registration of an identical or similar trademark in Armenia if there's a likelihood of confusion, and the applicant was aware or should have been aware of the foreign trademark's existence.
It is worth noting that a sign used domestically without formal registration may still enjoy protection under unfair competition law.
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 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 ground for opposing 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.
Applicants with <100 Employees
Applicants with <25 Employees or Individual
Trademark application (one class)
Each additional class
Each additional class
Appeal to the appellate board
Record trademark with customs
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 maintain the registration 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 the ® symbol 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.
- To ensure the validity and enforceability of a license agreement against third parties, it must be recorded with the Intellectual Property (IP) Agency.
- License agreements can specify various terms, such as whether the license is exclusive, sole, or non-exclusive. It's also possible to designate a partial license, which covers only specific goods or services associated with the trademark.
Trademark Assignment or Transfer:
- The right conferred by the registration of a trademark or a trademark application can be transferred or assigned to another person. This can apply to some or all of the goods or services for which the trademark is protected.
- Similar to license agreements, the assignment or transfer must be recorded with the IP Agency to be valid and enforceable against third parties.
- The business previously associated with the trademark does not necessarily have to be transferred along with the trademark itself.
Requirements for Assignment:
- To register the assignment, a written assignment document signed by the assignor (previous owner) is necessary. Notarization or legalization is not required.
- The assignment document should be translated into Armenian, and a state fee of approximately $150 is payable.
- Failure to register the assignment can render it unenforceable not only against innocent third parties but also against both the assignor and the assignee.
- The IP Agency typically has one month to examine the documentation and complete the registration process.
- Armenian law recognizes security interests (collateral rights) over trademarks.
- Trademarks (or trademark applications) can be used as security or levied in execution.
- These security interests, such as liens and pledges, may also be recorded with the IP Agency.
The owner of a registered Armenian trademark can apply to the Armenian State Revenue Committee to retain goods suspected of infringing their trademark rights at the Armenian border. To initiate this process, a state fee of approximately $50 is required, which should be submitted along with the application.
When customs authorities suspect that incoming goods may infringe trademark rights, they have the authority to take action. This action may involve suspending the release of the goods or detaining them for further examination. The period during which customs authorities can take action to suspend or detain goods shall not exceed two years. This period can be renewed as long as the trademark remains in force.
The customs authorities are obligated to inform both the trademark owner and the declarant or holder of the goods about their actions. Upon receiving this information, stakeholders have a window of 10 working days to initiate additional steps. After receiving notice from customs authorities, trademark owners may need to take further steps to protect their rights. These steps may include posting security and obtaining a preliminary court injunction to suspend the release of the goods by court order.
In Armenia, trademark enforcement involves several legal avenues, including civil, criminal, and administrative procedures. Civil actions for trademark enforcement are initiated in the courts of general jurisdiction. These actions begin with the submission of a written statement of claim in the court of general jurisdiction, determined by the defendant's place of residence. The defendant is then served and required to file a statement of defense. Both parties present their case through written briefs and oral hearings, with a final decision made by a qualified judge.
Criminal proceedings, on the other hand, start when an injured party files a criminal complaint. These proceedings include a pretrial investigation phase, conducted confidentially, to decide if the case should proceed to trial. Trademark owners have the option to join criminal proceedings as aggrieved parties. Civil and criminal proceedings may run concurrently, and the duration of criminal proceedings is similar to civil ones.
In terms of eligibility to bring an action, trademark infringement cases can be initiated by the trademark owner. Licensees may bring actions with the owner's consent, unless the license agreement states otherwise. Exclusive licensees can independently pursue legal action if the owner doesn't respond within a reasonable time after their request.
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 outside 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 evidence disclosure 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.
Litigation Time-frame and Cost
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.
Trademark litigation costs 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 appeal 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.
- Freedom of expression 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.
- 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.
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
Alternative Dispute Resolution (ADR) methods, such as mediation and arbitration, are available in 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:
- Confidentiality: 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.
What Makes Armenia a Good Choice for Residency
No Stay or Visit
Maintaining residency in Armenia does not require physical presence; remote application is possible.
Fast and Easy
The residency application usually takes about 80 days and only a valid passport is required.
Residents can sponsor extended family for residency (parents, siblings, grandchildren, etc.)
After living in Armenia for three years, citizenship can be obtained. Dual citizenship is allowed.
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LL.M. Georgetown University, licensed to practice in both Armenia (license no. 903) and New York (license no. 5148945)
Vardanyan & Partners is a reputable law firm situated in Yerevan, Armenia, which has been providing excellent legal services since its establishment in 2012. Our team of locally licensed, English-speaking attorneys specializes in immigration, incorporation, and compliance matters, ensuring that clients receive expert legal guidance. We are committed to staying up-to-date with the latest changes in legislation and regulations, ensuring that our clients receive the most relevant and accurate advice. At Vardanyan & Partners, we place a strong emphasis on honesty, transparency, and client care.
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