Trademark Practice and Forms Treatise Chapter - Armenia

Feb 8 2011 - 16:05

Prepared by:
Taras Kulbaba,
PETOŠEVIĆ

OVERVIEW: THE BASICS

COUNTRY FACTS

Location

Armenia is located in Western Asia, bordered by Turkey to the west, Georgia to the north, the de-facto independent Nagorno-Karabakh Republic and Azerbaijan to the east, and Iran and the Azerbaijani exclave of Nakhchivan to the south.

Major Cities

Yerevan (capital), Gyumri, Vanadzor

Government

Presidential democracy

Legal System

Civil law

Currency

Dram (AMD)

Est. GDP

US $17.086 billion (2010 est.; PPP)

per capita (PPP): US $5.178 (2010 est.)

Economic Sectors

(2009 est.)

agriculture: 22.5%

industry: 43.5%

services: 34.1%

International IP Agreements

WTO/TRIPS Agreement
WIPO convention
Paris Convention
Madrid Agreement/Madrid Protocol

Applicable Classification

International Classification (Nice)
Multi-class registration

Home Registration

Not required

Right to Trademark

First to file (Trademark Act, Art. 42)

Duration of Protection

Initial Period: 10 years from the date of filing of the application (source: Trademark Act, Art. 18)

Renewal Period: 10 years (source: Trademark Act, Art. 19)

Registration Priority

Paris Convention priority available (source: Trademark Act, Art. 42)

OVERVIEW: POLICIES AND TRENDS

Trade and Regulatory Climate

The Republic of Armenia is a young country that obtained its independence in 1991, following the collapse of the USSR. Although it took Armenia a few years to recover from its post-Soviet depression, as of 1994 the Armenian economy has been demonstrating signs of constant economic growth. In 2003, Armenia became one of the first former USSR countries to join the WTO agreement. The country has implemented a series of reforms aimed at liberalization of the economy and facilitation of trade. As a result, the Republic of Armenia is currently considered as the 36th most economically free country in the world. Due to the well-balanced tax system and the Law on Foreign Investments, according to which foreign investors are treated as nationals and which protects the foreign investors’ fundamental rights, the amount of direct investments in Armenia has increased significantly and in October 2010 it totaled 4 billion USD. The Government of Armenia actively supports the development of an effective national system of protection of intellectual property. In 2009 it adopted the “Policy Paper on Implementation of Reliable and Effective Protection of Intellectual Property” in which the main challenges in the area of intellectual property in Armenia were underlined and solutions to the existing problems were proposed. In pursuance of the mentioned IP Policy Paper, the Armenian Parliament adopted in 2010 the new laws on Trademarks and on Geographical Indications of Origin, which entered into force on July 1, 2010.

Why Register Locally?

Armenia belongs to the group of countries that follow the “first-to-file” concept of trademark rights. It means that trademark rights in Armenia belong to the person who registers the trademark first and not to those that started using the trademark in the country before others. Moreover, the Trademark Law 2010 introduced the notion of well-known trademarks and it will take some time before this category of trademark rights in Armenia are properly recognized. This all makes registration of a trademark in Armenia very important.

The Future

More improvements of the national system of intellectual property protection should be expected, according to the recently adopted IP Policy Paper. With respect to the trademark registration procedure, the Intellectual Property Agency (IPA) should shortly ensure smooth functioning of the system for filing of trademark applications electronically. Improvements should also be expected with regards to the procedure of enforcement of trademark rights, especially concerning anti-counterfeiting actions.

OVERVIEW: LAWS, RULES, REGULATIONS

The Law of the Republic of Armenia on Trademarks
Effective as of 1 July 2010

Regulations on the Procedure of Filing, Processing and Discussion of Trademarks and Service Marks Applications
No. 85, adopted April 12, 2005, amended by Regulations no. 215 of October 17, 2006.

Regulations on the Procedure of Registration of Trademark License and Assignment Agreements
No. 49, adopted 10 March 2005.

REGISTRATION REQUIREMENTS

What is a Mark?

A mark is any sign represented graphically, which is capable of distinguishing goods and/or services of one person from goods and/or services of another person.

The Trademark Law stipulates that any of the following signs may be registered as a trademark (provided that they can be represented graphically):

Words, phrases (words combinations), names and slogans;
Letters or figures;
Pictures, images, symbols;
Three-dimensional images, in particular, shapes of the goods or of its packaging;
Holograms, colours, combinations of colours;
Sounds;
Any combination of the above listed signs.

Which Marks May be Registered?

Trademark for Goods / Trademark for Services (Service Mark)

The Armenian Trademark Law does not distinguish between Trademarks [Marks for Goods] and Service Marks [Marks for Services]. Although the title of the previous Trademark Law of Armenia (2000) was “The Law on Trademarks, Service Marks and Appellations of Origin”, the Law did not provide any distinctions between the two categories of marks. Similarly, the Trademark Law 2010 makes no distinction between trademarks and service marks.

Nevertheless, it is generally understood that the word “trademark” is usually used to define marks used by a person to distinguish its goods, while “service marks” are marks used to distinguish services from goods/services of other persons.

Collective Trademark

According to the Trademark Law, a collective mark is a sign used to distinguish goods/services of members of one group of persons (referred to as “unions”) from goods/services of other persons. A collective trademark can be applied for registration by, inter alia, unions of makers, producers of goods, service providers, merchants etc. A “union” shall be registered as a legal person in Armenia, and will have the rights and obligations of a legal entity, as stipulated in the Armenian legislation.
Regulations on use of a collective mark, as approved by the union, should be filed together with an application for registration of a collective trademark. Any amendments to the Regulations on use of a collective mark should be reported to the Trademark and Patent Office of Armenia.

Certification Trademark

A certification mark is a sign used to certify the conformity of goods/services to the standards as adopted by the owner of the certification mark. A certification mark can be registered by an accredited certification body only. It cannot be registered in the name of persons that produce, import, distribute goods or render services.
In addition to an application for registration of a certification mark, an applicant should also file a copy of Regulations on use of a certification mark, as well as a document confirming the authority of the applicant to conduct certification activities or, where an applicant is a foreign entity, a copy of the registration certificate for a certification mark in the country of origin.

Colored Trademark

Colors or combinations of colors can be registered as trademarks as long as they meet the requirements of registrability of trademarks as provided for by Articles 2, 9 and 10 of the Trademark Law.

What Cannot be Registered?

The following cannot be registered as a trademark in Armenia:

Types of Marks that are Not Envisaged by the Trademark Law

Types of signs that are not directly indicated in Article 8 of the Trademark Law, i.e. olfactory and taste marks cannot be registered as trademarks.

Non-distinctive or Descriptive Marks

A sign cannot be registered as a trademark if:

It is devoid of any distinctive character;
It consists exclusively of signs that serve in trade to indicate the time of production of the goods or rendering of the services, type, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods/services (descriptive sign);
It consists exclusively of signs that have become common in the respective language in trade practices, for example, generic marks;
It represents exclusively the appearance of the goods, which results from the nature of the goods that is necessary to obtain a technical result or adds substantial value to the goods.

Marks That Are Immoral

Signs that are contrary to the public policy or to the principles of humanism of morality, and signs that undermine national or spiritual values, or contain elements disgracing religious or moral values cannot be registered as trademarks.

Deceptive Trademarks

One cannot register a sign that:

Is of such nature as to deceive the public as to the geographical origin, quality, nature or producer of the goods or services;
Consists of or includes a geographical indication and has been filed for goods that do not originate from the area designated, if the use of such mark in Armenia would mislead the public as to the true area of origin of the goods. The latter provision shall also apply to the geographical indications that, despite indicating the true origin of the goods, nevertheless make the public believe that the goods originate from another area.

Marks with Unauthorized Content

Any of the following signs shall not be allowed for registration:

A sign that reproduces or includes state flags, emblems or other symbols, official names of states or their abbreviations, full or abbreviated names of international or intergovernmental organizations, other official symbols, hallmarks, stamps, seals, awards or other distinguishing signs (pursuant to Article 6 ter of the Paris Convention), or is similar to them so as to create a likelihood of confusion;A sign that reproduces marks or emblems, which are not covered by Article 6 ter of the Paris Convention, but nevertheless represent a particular public interest;
A sign that includes symbols of a particular importance, namely objects of religious or cultural heritage;
A sign that consists of or contains a geographical indication registered for wines, which is intended to be used in respect of wines that originate from the area bearing the geographical indication in question, or a geographical indication registered for spirits, which is intended to be used in respect of spirits that originate from the area bearing the geographical indication in question, even if the true origin of the goods is specified or a translation of the geographical indication is used or it is used in conjunction with such expressions as “sort”, “type”, “style”, “imitation” etc.

Identical, Similar

A sign cannot be registered as a trademark in Armenia if:

It is identical to a prior trademark right that is registered for the same goods/services;
A mark is identical or similar to an earlier trademark right, as well as to the goods/services, which produces a likelihood of confusion among consumers including the likelihood of association with the earlier trademark;
It is identical or similar to an earlier trademark and is to be registered for goods/services which are not similar to those for which the earlier trade mark is registered, where the earlier trademark has a reputation on the territory of the Republic of Armenia and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;
It is identical or confusingly similar to a trade name of a legal entity that acquired such name on the territory of the Republic of Armenia before the date of application for the trademark or before the date of its priority, as the case might be, and which has, prior to that date, carried out activities of production of goods/rendering of services that are similar to the goods/services covered by the trademark application, where such identical or similar mark would be detrimental to the repute of the earlier trade name;
It is identical or similar to a geographical indication protected in the Republic of Armenia, except for cases where such geographical indication is included in the trademark as a non-protected element and the application is filed by a person authorized to use the geographical indication in question;
It reproduces or includes any industrial property right, i.e. an industrial design, utility model etc, registered in the Republic of Armenia before the date of the trademark application;
It reproduces or includes any literary, scientific or artistic works protected under the Copyright Law, as well as names of such works, extracts (fragments) or characters thereof, if such copyright has been acquired before the filing date of the trademark application (or its priority);
It reproduces or includes a name, surname or pseudonym of a well-known person, or a portrait of any other person where such similarity would create confusion on the part of the public.

Who Can Register?

Proprietor or User

Any natural person or legal entity intending to use a trademark or that is using a trademark for indication of its goods or services can apply for registration of a trademark in Armenia. A union of legal entities can apply for registration of a collective trademark when it is registered before the respective authority and enjoys the rights of a legal entity.

Authorized Agent

Foreign natural persons, who do not permanently reside in Armenia, and foreign legal entities which do not have an effective commercial or industrial entity in Armenia, should file trademark applications and conduct correspondence with the Trademark Office in the course of registration of trademarks through a trademark attorney in Armenia. Authority of a trademark attorney to act on behalf of the applicant should be confirmed with a respective Power of Attorney.

Priority Registrant

A person who has filed an application for a trademark in a country member of the Paris Convention or member state of the World Trade Organization shall enjoy, for the purpose of filing a trademark application in Armenia for the same trademark in respect of the same goods or services, a right of priority during a period of six months from the date of filing of the first application. The Trademark Law also enables an applicant to claim an exhibition priority if the person exhibited its goods or services under the trademark in question at an international exhibition taking place in a state which is party to the Paris Convention or in a member state of the World Trade Organization (first exhibition) no longer than 6 months before filing the trademark application.

TRADEMARK REGISTER

Where is the Trademark Registered?

Trademark Register

In order to register a trademark in Armenia, a person should file an application with the Intellectual Property Agency, a governmental institution that has the status of a division within the Ministry of Economy of the Republic of Armenia.
An application can be filed in written or electronic form. The application should be completed in Armenian. When attachments to an application are filed in languages other than Armenian, translation of such attachments should be filed along with the application (for residents of Armenia) or within two months of the application filing date (for foreign applicants).
Once the registration procedure is completed, information about the trademark registration is published in the official bulletin of the IPA, and it is entered into the State Trademark Registry, which is maintained by the IPA.
Any person can request from the Trademark Register information about any of the registered trademarks. Upon payment of the official fee for obtaining information from the Trademark Register, the Intellectual Property Agency shall provide the requester with a respective extract.
Information about national trademark registrations in Armenia, which is contained in the Trademark Register, can be accessed online.

Requirement of Distinctiveness

Distinctiveness of signs applied for registration as trademarks in Armenia is one of the requirements, as provided for by the Trademark Law, for successful substantial examination of the application. In particular, the following cannot be registered as a trademark:

Signs devoid of any distinctive character, descriptive signs, generic marks and signs that have become customary in trade practices;
Signs that consist exclusively of the shape which results from the nature of the goods or which is necessary to obtain a technical result or which gives substantial value to the goods.

Exclusive Use Rights

Registration of a trademark in Armenia gives the right holder an exclusive right to use that trademark for the respective goods/services in respect of which the trademark is registered.
The exclusive right of the trademark holder also includes the right to prevent third parties from using, without its consent, a sign in the course of trade that is identical to the registered trademark and is used for identical goods/services, or which is identical/similar to the registered trademark and because of its use for the identical/similar goods/services, there exists a likelihood of confusion on the part of the public. Moreover, the trademark owner also has an exclusive right to prevent any third party from use of marks that are identical/similar to its trademark where the latter has repute on the territory of the Republic of Armenia and where use of the former sign would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

In particular, the following actions of third parties can be prevented by the owner of the registered trademark:

Affixing the sign to the goods or packaging thereof or, in case of three-dimensional signs, its use as a packaging for such goods;
Offering for sale and sale of goods, as well as storage of goods for the purpose of sale, offering and rendering services under such sign;
Importing or exporting the goods under such sign;
Using the sign in official documentation or in advertising;
Reproduction or storage of the goods for any of the above referred purposes;
Using the sign on the Internet, in particular in domain names.

The exclusive right to use the trademark shall become effective with respect to third parties as from the date of publication of the official information about registration of the trademark in Armenia or on the date the information on granting protection to the trademark on the territory of Armenia is entered in the Trademark Registry.
The exclusive right of the licensee/assignee of the trademark shall become effective with respect of third parties as of the date of registration of the respective amendments in the Trademark Registry.

Limitation on Exclusive Use Rights

According to the Trademark Law, a trademark owner cannot prevent third parties from using the following in the course of trade, in accordance with the fair trade practices:

Name/surname of a person or its address (location);
Descriptive signs;
The trademark, where the third party indicates the intended purpose of a product/service, for example in the case of auxiliary parts of the goods marketed under the trademark, and where such use would not be detrimental to the lawful interests of the trademark owner or other third parties, or would not mislead the public;
The trademark, in comparative advertising provided that such advertising is not prohibited by the Armenian legislation.

Finally, the exclusive right of the trademark owner shall not be extended to prevention of use of unprotected elements of the trademark that cannot be registered in Armenia as trademarks, i.e. elements of a descriptive character.

Validity

Once the procedure of trademark registration is successfully completed, a trademark registration is considered valid within its protection period. However, validity of a trademark registration can be questioned (a trademark can be invalidated) before the court if a trademark has been registered in breach of the absolute and relative grounds for refusal of a trademark application (Articles 9 and 10 of the Trademark Law). A trademark registration can also be revoked on the basis of the court’s decision if:

The trademark has not been put in use on the territory of Armenia within an uninterrupted period of five years;
The trademark has become a generic name for the goods or services for which it is registered;
Use of the trademark by its holder or a third party with the consent of the holder for the goods and services for which it is registered can mislead the public as to the nature of such goods and services, its quality or geographical origin.

INITIAL REGISTRATION

Procedural Timeline

Search and advice

Trademark availability searches are not obligatory for the purpose of filing a trademark application in Armenia. Moreover, the results of searches have no legal validity.
Nevertheless, an official trademark availability search can be ordered with the IPA. A search is usually conducted in all databases of the IPA, namely among the national trademark registrations and international registrations designated to the territory of Armenia, as well as pending trademark applications. The search report of the IPA does not contain any advice on the similarity of the trademarks. However, if a search report contains any earlier trademark rights, it means that the IPA considers such earlier rights as a possible obstacle to registration of the trademark.

Application and fees

The application for registration of a trademark shall be filed with the IPA in paper or electronic form. Non-residents should file their applications and communicate with the IPA through trademark attorneys.
A trademark application should be filed in Armenian. Attachments to the application and other supplementing documents can be filed in original with a translation of such documents into Armenian. Important: residents of Armenia should file a translation of the attachments and supplementing documents along with the trademark application, while non-residents are allowed to file a translation within two months of filing the trademark application.

Filing Receipt/Serial Number

The IPA issues a filing receipt confirming receipt of a trademark application. The filing receipt contains the filing number of the application. A serial number is assigned to the trademark application during its formal examination.

Preliminary Examination

According to the Trademark Law, a preliminary examination of a trademark application shall be conducted by the IPA within one month of its filing date. During the preliminary examination, the IPA registers the application, assigns a serial number and enters the information about the trademark application in its database, as well as examines the application as to its compliance with the formal requirements that are provided by the Trademark Law regarding applications. Namely, the IPA checks whether the application is accompanied by all necessary attachments and supporting documents, as well as whether it contains all necessary information about the sign applied for registration, the applicant (and its representative before the IPA) etc.

If a trademark application does not meet the formal requirements as prescribed by the Trademark Law, the IPA shall invite the applicant to remedy the deficiencies of the application within a period of two months.

If a trademark application meets all formal requirements of the Trademark Law and all deficiencies of the trademark application are remedied within the time granted by the IPA for that purpose, the IPA shall make a decision of publication of the trademark application and proceed to its substantive examination.

However, if within a period of two months the deficiencies of the trademark application are not remedied, the application shall be considered as withdrawn by the applicant.

Publication

Within a month after its decision to publish a trademark application, the IPA shall publish such application in its Official Bulletin “Industrial Property”. The publication contains information on the trademark application (representation of the trademark, its filing number and filing date), the trademark applicant, and the list of goods and services.

Oppositions/Observations

Any third party can file with the IPA an opposition (observation) against a trademark application within two months from the date of its publication in the Official Bulletin “Industrial Property”. According to the Trademark Law, an opposition can be filed on relative grounds for refusal, while observations are oppositions based on absolute grounds for refusal. An opposition/observation should be accompanied by a payment receipt of the respective official fee.

Within five days after receipt of the opposition, the IPA shall notify the trademark applicant about the opposition filed and invite the applicant to present its considerations as to the grounds of the opposition and admissibility of the trademark application for its registration.

Substantive examination

According to the Trademark Law, the IPA shall conduct a substantive examination of a trademark application within three months of its publication in the Official Bulletin “Industrial Property”. The procedure of substantive examination of the application shall be suspended upon receipt of an opposition/remark against the trademark application.

During the substantive examination, the IPA examines an application for both absolute and relative grounds for refusal, as well as with respect to oppositions/observations filed against the application.

Based on the results of the substantive examination, the IPA issues a decision on registration of a trademark for all goods/services, partial refusal of a trademark application (registration of a trademark with respect to the part of the goods/services) or total refusal of a trademark application.

If the IPA issues a preliminary decision on total/partial refusal of a trademark application on the grounds of descriptiveness of the trademark for the goods/services it is applied for or other absolute grounds for refusal, the applicant can file a response to the preliminary refusal or its consent with a disclaimer of non-distinctive element of the trademark within three months after delivery of such decision by the IPA.

Re-examination

If an applicant does not agree with the IPA’s decision regarding registration of its trademark, it can file a response to such decision within two months of the date of the decision on refusal or partial registration of the trademark. The IPA shall review the response of the applicant and re-examine its decision on refusal or partial registration of the application within a period of two months of the day of receipt of the request for re-examination. The applicant can appeal the IPA’s final decision before the Board of Appeals within three months of the date of the IPA’s final decision on refusal of the trademark application or partial registration of the trademark.

Registration

If the IPA makes a decision on registration of a trademark for all/part of the goods/services it is applied for, it should notify the applicant accordingly within 10 days of delivery of such decision. The applicant should pay the registration and certificate issue fees within three months of receipt of the notification on registration of its trademark. After the applicant presents to the IPA the evidence of payment of the registration fee, the IPA shall enter the information about the registered trademark in the State Register and issue the Certificate of Registration within one month, as well as publish the information about the registered trademark in its Official Bulletin “Industrial Property” within two months of the date of registration of the trademark.

Average Processing Times

Registration

Application to publication (of registration): 8-10 months

Official action: 3-4 months

Issuance of certificate: 2 months

Opposition: up to 4 months

Government Fee Schedule

Official fees (EUR) for:
Preliminary search per class of goods/services:

wordmark – 50
figurative/combined mark – 100

Application:

one class of goods/services – 210
each additional class of goods/services – 45

Registration – 150

Renewal before expiration:

one class of goods/services – 360
each additional class of goods/services — 30

The Law of Armenia “On State Fees”, articles 7, 18, 28 and 33.

REGISTRATION FORMS

Information Checklist

The Applicant

According to the Trademark Law, the application for registration of a trademark should contain sufficient information about the applicant for the purpose of its identification. Usually, the following information is included in the application:

Full name of the applicant (transcription into Armenian);

Full address of the applicant;
Country/state of residence or incorporation.

The Mark

Graphical representation of the trademark to be registered;
Transliteration of the word elements of the mark and description of the trademark;
Classification of the goods/services for which the trademark is applied;
Information about peculiarities of the mark, i.e. type of marks for non-traditional trademarks or statement that the trademark is filed as a collective/certification mark, etc. (if applicable);
Priority information (if applicable).

Agents and Service

Name and registration number of the trademark attorney;
Correspondence address.

Registration Forms

Application for registration of a trademark

The Application Form (English version) is the initial form for filing an application for registration of a trademark in Armenia. The Application Form is approved with a resolution of the Government of Armenia.

The Application Form should be completed in Armenian. It can be filed on paper or electronically.

Information required:

Full name, address, nationality (state of incorporation) of the applicant;
Full name, address, registration number of the trademark attorney;
Graphical representation of the mark;
Transliteration of the word elements of the mark and description of the trademark;
Classification of goods/services;
Information about the type of the mark applied for registration (verbal/figurative/color trademark etc., collective/certification mark (if applicable)).

The Application Form should be supplemented by the following:

Payment receipt of the official fee for filing an application and its substantive examination;
Power of Attorney authorizing the trademark attorney to act on behalf of the applicant (if the application is filed by the applicant’s representative);
A priority request (if applicable);
Regulations for use of a collective/certification mark (if applicable).

Power of Attorney

The Power of Attorney form authorizes the Armenian trademark attorney to act on behalf of the applicant before the IPA.

Information required:

Full name, address and country of residence/incorporation of the applicant;
Name(s), address and registration number(s) of the trademark attorney;
Trademark rights in respect of which the authority to act is granted;
Place, date of execution of the Power of Attorney;
Full name, position of the signatory and his/her signature.

All trademark rights with respect to which the authority to act is granted should be listed in the Power of Attorney. If not specified, the Power of Attorney can be used by the trademark attorney with respect to all trademark rights of the Principal on the territory of Armenia.

Important! A company seal/stamp of the Principal should be attached to the Power of Attorney. Otherwise, the Power of Attorney should be certified by a public notary.

POST-REGISTRATION

Renewal of Registration

Duration of Protection

The initial registration is effective for ten years from the date of filing of the application for registration of a trademark. Each renewal is effective for 10 years from the expiration of the last registration.

Renewal Before Expiration

The renewal should be filed within one year before the expiration of the term of protection. The IPA shall notify the holder of the trademark registration nine months before the expiration of the term of protection.

Renewal After Expiration

A trademark registration can also be renewed within six months following the expiration of the term of protection, subject to the payment of an additional official fee.

Reinstatement

If, despite all possible actions undertaken by the holder of a trademark registration, a renewal application cannot be filed with the IPA within the terms prescribed by the Trademark Law, a request for reinstatement of rights can be submitted with the IPA within two months of the date when the reasons therefore ceased to be applicable, but no later than within one year from the date of expiration of such term. A request for reinstatement of rights must be well-reasoned and should be supported by evidence that justifies the failure to meet the prescribed term.

Advertisement of Renewal

At the request of the trademark holder, the IPA shall make an entry in the State Trademark Register and on the trademark certificate about renewal of the trademark registration and it shall publish this information in the Official Bulletin “Industrial Property”.

Alteration or Modification

Errors or omissions due to the fault of the IPA

Errors or any other omissions made in the database of trademark applications or in the State Register due to the fault of an expert of the IPA shall be corrected on the initiative of the IPA or at the request of the trademark applicant/holder free of charge.

To Trademark

According to the Trademark Law, modifications to unessential elements of an applied or registered trademark can be introduced by the IPA at the request of the trademark applicant/holder if such modifications will not affect the distinctive character of the trademark.

To Goods and/or Services

Modifications to lists of goods and/or services can be recorded at the request of the trademark applicant/holder only where reduction of goods and/or services is requested. Should the applicant/holder of a trademark wish to extend the list of goods and/or services covered by the trademark application/registration, a new trademark application should be filed with the IPA.

To Name or Address

Alteration of the name or seat (address) of a trademark applicant/holder can be recorded by the IPA at the request of the applicant/holder. Evidence showing the respective changes in the name/address of the trademark applicant/holder should be filed together with an application for recordal of such changes.

Cancellation of Registration

Action by Registrar

According to the Trademark Law, the only case when a trademark registration can be removed from the State Trademark Register at the initiative of the Registrar is when a trademark registration has not been renewed according to the renewal procedure.

The Registrar shall also delete a trademark registration from the State Trademark Register in the following cases:

If a trademark registration is cancelled or revoked by a court’s decision;
If the holder of the trademark registration surrenders his trademark registration;
In case of liquidation of the trademark holder, where the holder is a legal entity.

At Request of Owner

A trademark can be abandoned by the holder of the trademark registration with respect to all or part of the goods and/or services for which it is registered. A written request for renunciation of the trademark registration shall be filed with the IPA by the trademark holder or other person authorized by the trademark holder. The rights to the trademark shall be considered as abandoned from the date of recordal of the abandonment in the State Trademark Register.

Where a license with respect of the trademark registration is recorded in the State Trademark Register, the abandonment shall be entered in the Register only if the holder of the trademark proves that he has informed the licensee of his intention to abandon.

Actions by Court

Revocation of a trademark registration

A trademark registration can be revoked with a court’s judgment in court proceedings initiated by a claim or counterclaim for protection of trademark rights where:

The trademark registration has not been put into genuine use on the territory of the Republic of Armenia by the holder of the trademark registration or other person authorized to use the trademark for goods and/or services with respect to which it was registered within an uninterrupted period of five years following the registration date or, where a claim for protection of rights is filed with the court on a later date, before the date of filing of the claim;
The trademark has become a generic name with respect to the goods and/or services for which it is registered due to action or inactivity of the trademark holder;
Use of the trademark by its holder or by any third party with the consent of the holder for the goods and/or services for which it is registered can mislead the public as to the nature of such goods and/or services, its quality or geographical origin.

If grounds for revocation of a trademark exist with respect to the part of the goods and/or services for which the trademark is registered, the trademark shall be declared revoked partially with respect to such goods and/or services only.

The rights to a trademark that has been revoked with a decision of the court shall be considered as terminated from the date of filing of the respective claim or counterclaim for protection of rights, unless otherwise decided by the court.

Invalidation of a trademark registration

A trademark registration shall be declared invalid with a court’s judgment in court proceedings initiated by a claim or counterclaim for protection of trademark rights if:

A trademark has been registered in breach of the absolute grounds for refusal, i.e. where, according to the respective provisions of the Trademark Law, a sign could not be registered as a trademark, the sign is non-distinctive or descriptive, or it is a generic name, it is common in the trade for the goods and/or services it is applied for, it is immoral, deceptive, or reproduces/includes unauthorized content as provided for by Article 9 par 1 of the Trademark Law.

However, a trademark registration, which at the date of filing of the application was non-distinctive, or descriptive, or common in the trade for goods and/or services it was applied for, cannot be declared invalid if, as a result of its use, it has acquired a distinctive character after registration in relation to the goods and/or services for which it was registered.

There is an earlier trademark or any other earlier right, which, according to the relative grounds for refusal as prescribed by the Trademark Law , should have been an obstacle to the registration of the trademark.

Removal of Trademark for Non-Use

See Post-Registration, Cancellation of Registration, Actions by Court, Revocation

Assignments

Rights to Assign

A trademark holder is authorized to assign its trademark to any third party with respect to all or part of the goods and/or services for which the trademark is registered. As soon as a trademark application is entered in the database of trademark applications by the Registrar, the trademark applicant has the right to assign the application to any third party.

Legal Documents

For the purpose of recordal of assignment of a trademark registration or application, the following should be filed with the IPA by any of the parties to the assignment:

Application for recordal of the assignment of rights;
Assignment agreement (one original and two copies);
Proof of payment of the official fee for recordal of an assignment;
Power of Attorney (where the application for recordal of the assignment is filed by a representative of the Assignor or Assignee).

Form of assignment agreement (Important!)

The assignment agreement should be signed by the authorized representatives of both parties to the agreement and, where the parties to the agreement are legal entities, company stamps/seals of such parties should be attached. If a legal entity that is a party to the agreement has no company stamp/seal, the assignment agreement should be notarized.

Recordation of Assignment

Upon receipt of the documents from the Assignor or the Assignee, which are required for the purpose of recordal of the assignment agreement, the IPA shall, within one month, carry out an examination of the application for recordal of the assignment and record the assignment in the State Trademark Register or the database of trademark applications as the case may be.

If during the examination of the application for recordal of the assignment the IPA finds that the assignment of the trademark is likely to mislead the public as to the nature, quality or geographical origin of the goods and/or services with respect to which the trademark is registered/applied for, the IPA shall refuse recordal of the trademark assignment.

The information about recordal of an assignment of a trademark registration shall be published in the Official Bulletin “Industrial Property”.

Assignment of a trademark application/trademark registration shall become effective with respect to third parties from the date of recordal of the assignment of the application/registration in the database of trademark applications or in the State Trademark Register accordingly.

Licensees or Registered Users

Right to Grant Use

A trademark holder has the right to grant use of the trademark under a license agreement to any third party with respect to all or part of the goods and/or services for which the trademark is registered.

According to the Trademark Law, the licensor can grant to the licensee one of the following types of licenses:

Exclusive license;
Non-exclusive license;
Sole license.

Rights of the Licensor

If the Licensee under the Trademark License Agreement violates any of the provisions of the Agreement, the Licensor shall be entitled to file a court claim for protection of its rights in accordance with the procedure as prescribed by the Trademark Law for enforcement of trademark rights.

Rights of the Licensee

As a general rule, a non-exclusive licensee can initiate proceedings against an infringer of the trademark rights only if the licensor gives his explicit consent thereto. An exclusive licensee shall be entitled to initiate proceedings against an infringer of the trademark rights if, upon receipt of the respective notification, the owner of the trademark (licensor) does not file an infringement action within a reasonable time.

The licensee shall, for the purpose of receiving compensation for damages caused by an infringement of the trademark, be entitled to be a party to the proceedings on protection of the trademark rights brought by the licensor.

Legal Documents

For the purpose of registration of a trademark license, the following should be filed with the IPA by any of the parties to the license agreement:

Application for registration of the license;
Trademark License Agreement, an extract from the Trademark License Agreement or, where the parties to the license agreement do not wish to disclose the content of the agreement, a declaration of license signed by the Licensor and Licensee;
Proof of payment of the official fee for recordal of a trademark license;
Power of Attorney (where an application for registration of the trademark license is filed by a representative of the Licensor or Licensee).

A Trademark License Agreement, an extract from a license agreement or a declaration of a license must contain the following information: name and address of Licensor and Licensee, registration number of the trademark licensed, list of goods and/or services with respect to which a license is grated, type of license, territory and term of license.

Recordation of License

Upon receipt of an application for registration of a trademark license and of all supporting documents, the IPA shall, within one month, examine the application for registration of the license and register the license in the State Trademark Register.

A trademark license shall become effective with respect to third parties from the date of its registration in the State Trademark Register. Information about registration of a trademark license shall be published in the Official Bulletin “Industrial Property”.