A trademark application filed with the Armenian Intellectual Property Agency (AIPA) usually takes about eight months to reach registration, provided no objections are encountered.
Official government fees for trademark registration start from US$72 in one class of goods or services. 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.
Domestic and foreign companies and individuals can apply for a trademark in Armenia irrespective of their residency and citizenship and whether or not they have commercial activities in Armenia.
An application shall contain the following information: name and contact information for the applicant and its representative, if any; description of the trademark; a list of goods and services to be covered by the trademark.
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.
Applications can be made either for trademarks that are already in use or for trademarks that are not yet in use. It is possible to “claim priority” when filing a trademark application.
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).
Upon application the 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.
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. The decision to grant protection will be published in the (monthly) Official Journal of the AIPA available at http://aipa.am/en/industrial-property/.
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.
Moreover, 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.
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 AIPA before expiration of the 10-year term or within a six-month grace period (for a higher fee).
Owners of a trademark may use the ® symbol to indicate that the mark concerned has been registered. The benefit of using such a symbol is that it puts third parties on notice and so discourages misuse. However, it is not mandatory to use such symbols.
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.
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.
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 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).
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.
To be valid and enforceable against third parties a license agreement shall be recorded with the 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 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. To be valid and enforceable against third parties the assignment shall be recorded with the Armenian Intellectual Property Agency (AIPA). The business previously attached to the mark does not have to be transferred together with the trademark.
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 assignment document should be translated into Armenian and a state fee of approximately $150 is payable.
The 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.
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. Security interests (liens, pledges etc.) may be recorded with the AIPA.
Civil actions for trademark enforcement in Armenia must be initiated before the courts of general jurisdiction. Proceedings for criminal and administrative remedies may be initiated by means of complaint with the Police and the AIPA respectively.
Court proceedings for trademark infringement in Armenia 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.
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. 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. In criminal cases, an investigator will be appointed to conduct investigations in order to establish infringement.
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.
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. It is possible to obtain seizure of infringing goods as a provisional remedy. Such goods may serve as proof in subsequent proceedings. Armenia became party to the Hague Evidence Convention in 2012.
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 trademark litigation costs in Armenia vary a lot 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. 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.
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.
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 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.
- 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: 1) its name and address; 2) 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 3) 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”).
- Counter-claims. These are filed with the court before which the infringement action was brought.
- 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.
- 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.
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. 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.
Armenian law also provides for criminal sanctions. An unlawful use of a trademark that caused damages in large amount (i.e. exceeding approximately $500) is punishable by a fine of approximately $1,200 to $2,400 or confinement of up to three months. Such unlawful use of a trademark may also qualify for a lesser administrative offence punishable by a fine of approximately $250 to $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. Furthermore, 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.
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 will be sued in ordinary courts. 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.
Armenia is located between Asia and Europe and occupies a land area of 29,800 sq km, with a population estimated to be around 3 million. The country is bordered by Turkey to the west, Georgia to the north, Azerbaijan to the east, and Iran to the south.
According to international rankings, Armenia is a relatively easy country where one could invest and establish a business. The World Bank study Doing Business 2014 ranked Armenia as the 37 easiest country with which to do business, out of the 189 surveyed. Furthermore, Armenia’s economic freedom ranks 41 among 178 countries, as stated within the 2014 Index of Economic Freedom.
Armenia is a member of the World Trade Organization, United Nations, Council of Europe, Commonwealth of Independent States, and other international organizations promoting economic cooperation. As of 2014, negotiations have panned out with the expectation of joining the Eurasian Economic Union comprised of Russia, Kazakhstan, and Belarus on January 1, 2015, a single economic market of 170 million people and a GDP of 2.7 trillion dollars.
Armenia has a continental climate with dry, sunny summers and cold, snowy winters. The country has a well-developed road and transportation network, alongside telephone, internet, and postal services. The international airport is located 12km away from the center of Yerevan. In terms of security, the country’s crime rate is quite low. There are both public and private schools, while the populace has an official literacy rate of 99.6%. Russian is the most popular foreign language at present, with English flanking at its heels. The capital city of Yerevan is home to over 1.1 million of the country’s population, with a wide array of choices in dining, entertainment and shopping. Malls cater to the populace with both local and international brands.
The banking system is well-regulated. There are strict bank secrecy laws which make it a crime to disclose information on bank accounts. HSBC Bank Armenia, as well as 20 other local and international banks offer a wide range of banking services that pay up to 8-9% in annual interest for deposits in US dollars.