Trademarks Filing and Prosecution Armenia
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Armenia IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Armenia IP Office. In Armenia, trademark protection is granted according to the provisions of Law of the Republic of Armenia of April 29, 2010, on Trademarks, Armenia
Trademark in Armenia may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Intellectual Property Office Ministry of Economy of the Republic of Armenia |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | YES |
| Multi class system | YES |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and Simply signed Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Trademark searches in Armenia
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Armenia can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Armenia to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Armenia.
Filing trademark applications in Armenia
A person may file multi-class or single class trademark application in Armenia.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Armenia
Ordinary trademark applications filed in Armenia are applications without claiming any priority. Multi class trademark applications may also be filed in Armenia. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Armenia /Convention trademark applications Armenia:
A priority trademark application may be filed in Armenia. A priority trademark application should be filed in Armenia within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Armenia within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Armenia follows the nice classification of classes. Intellectual property office of Armenia uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defined list of terms and cover all the goods and services.
Trademark Examination in Armenia
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds of refusal.
Article 9. Absolute Grounds for Refusal of Trademark Registration
1. A sign shall not be eligible for registration where it:
(1) does not meet the requirements of Article 8 of this Law;
(2) is devoid of any distinctive character;
(3) consists exclusively of indexes or signs which serve, in trade, to indicate the time of production of the goods or of rendering of the service, type, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods and/or services;
(4) consists exclusively of signs or indexes which have become common in the current language or acquire the fair reputation in trade practices;
(5) represents exclusively the outward appearance of the goods which results from the nature (features) of the goods that is necessary to obtain a technical result or depict the purpose (functionality) of the goods, or gives substantial value to the goods;
(6) is contrary to public policy or to principles of humanism or morality, or undermines national or spiritual values;
(7) is liable for deceiving the public in regard to the geographical origin, quality, nature, or producer of the goods or services;
(8) reproduces or includes state emblems, flags or symbols, official state names or their abbreviations, full or abbreviated names of international and intergovernmental organisations, official symbols, as well as hallmarks denoting state control, guarantee and fineness, stamps, seals, awards, and other distinguishing signs (in accordance with Article 6ter of the Paris Convention), or is resemble to them so as to create a likelihood of confusion;
(9) reproduces marks or emblems, which are not protected by Article 6ter of the Paris Convention, but represents particular public interest;
(10) includes symbols of great importance, in particular religious or cultural heritage, if it contains elements disgracing religious or moral values;
(11) reproduces or includes elements which are identical with or which possess a confusingly resemble with the images or official names of the cultural heritage of the Republic of Armenia or the international cultural heritage, or confusingly resemble with images of cultural values kept in funds and collections, where the registration is claimed in the name of a person who is not the proprietor thereof and does not hold a relevant authorisation;
(12) consists of or includes a geographical indication and has been filed for such goods, which are not originated from the area bearing this indication, if the use of that mark in the Republic of Armenia misleads the public as for the real origin of the goods. This provision shall also apply to the geographical indication which, despite that indicates the real origin of the goods, nevertheless confuse the public so as if the goods are originated from another area;
(13) consists of or contains a geographical indication ascertaining wines, for wines not originated from the area bearing the geographical indication specified or a geographical indication ascertaining spirits, for sprits not originated from the area bearing the geographical indication specified, even if the real origin of the product is specified or the geographical indication is used in a translated version or in conjunction with such expressions as “sort”, “type”, “style”, “imitation” and similar to them.
2. Subparagraphs 1. (2) – (4) of this Article shall not apply if the applicant produces sufficient evidence, that as a result of use, before the filing of the application, the mark assumed the distinctive feature with respect to the goods and/or services for which it was filed for registration.
3. Signs referred to in subparagraphs 1(8) and (9) of this Article may be included in the trademark as non protected elements, if they do not prevail over and there exists an authorisation by the appropriate Authorized Body;
4. Geographical indication and appellations of origin protected in the Republic of Armenia may be included in the trademark only in the case, when the applicant has acquire the right to use it, in accordance with the order established by law. The use of a geographical indication of other countries shall be permitted in the trademark if it is not contrary to the requirements of this Law, is registered in the country of origin and the applicant holds an authorisation to use it. Geographical indications and appellations of origin included in the trademark shall be considered as non protected elements in the trademark.
Article 10. Relative Grounds for Refusal of Trademark Registration
1. A sign shall not be subject to registration where it:
(1) is identical to an earlier trademark, which is registered for the same goods and/or services;
(2) If because of its identity with or similarity to an earlier trademark when the goods and/or services denoted by it, as well as its identity and similarity, is creating likelihood of confusion for the consumers, including correlation with the earlier trademark (confusingly similar);
(3) is identical or similar to an earlier trademark and is to be registered for goods and/or services which are not similar to those goods and/or services, for which the earlier trademark is registered, in the case the earlier trademark has a reputation in the Republic of Armenia and if the use of the claimed trademark would lead to unfair advantages due to the distinctive feature or the reputation of the earlier trademark, or would be prejudicial to the distinctive feature or the reputation of the earlier trademark;
(4) is identical or confusingly similar to the trade name of a person, which in the territory of the Republic of Armenia has acquired rights to that name prior to the date of application for the registration of the trademark or prior to the date of priority and which has, prior to that date, carried out actual activities in the field of production or services of the same or similar products (which the registration of the trademark has been applied for), where such identity or similarity will be prejudicial to the reputation of the trade name;
(5) is identical or similar to a geographical indication or appellations of origin of goods protected in the Republic of Armenia, with the exception of cases when in the trademark, which is applied for registration, those goods are included as non protected elements and the application is filed by a person authorized to use the geographical indication or the designation of origin of goods:
(6) reproduces or includes, with an earlier date of priority, subject matters of industrial design, utility model or any other subject matters of Industrial Property protected in the Republic of Armenia;
(7) reproduces or includes literary, scientific or artistic works protected under the Law on Copyright, the names thereof, quotations, extracts (fragments) and characters thereof, if the rights have been acquired before the date of priority of the filing trademark ( if there is an existence of such priority date).
(8) reproduces or includes the name, surname or pseudonym of a well-known person or a portrait of any other person where the similarity to them leads to confusion.
2. For the purposes of paragraph 1 of this Article, earlier trademarks shall be the following:
(1) trademarks, which date of filing application precedes the priority date of the filing trademark that is in the discussion, or if a priority has been claimed in accordance with Article 42 of this Law, or if, in accordance with Article 42 of this Law, it has been claimed a priority to that priority date, shall be constituted as:
(a) trademarks protected in the territory of the Republic of Armenia by virtue of registration;
(b) trademarks protected in the territory of the Republic of Armenia by virtue of an international registration;
(2) trademark applications claimed for registration as referred to in subparagraphs (1) (a) and (b) of this paragraph, subject to granting of legal protection to them in the future;
(3) trademarks which have, by the date of filing application of trademarks or by the date of priority claimed in accordance with Article 42 of this Law, been declared as well-known in the Republic of Armenia in accordance with the order established by this Law.
3. The registration of a sign, under paragraph 1 of this Article, as a trademark may not be refused if an earlier trademark or the proprietor of an earlier trademark, or his/her successor or, in some cases, the appropriate State Authority has confirmed their consent thereto, with the exception of identical trademarks, which have been claimed for similar goods and/or services.
4. A trademark shall be subject to refusal if:
(1) the it is filed by the agent or representative of a third person who is the proprietor of the trade or service mark in a country party to Paris Convention or member to the World Trade Organization, without the authorisation of that proprietor, unless the agent or representative justifies his action.
(2) the trade mark is identical with, or similar to, an earlier trade mark which was registered for identical or similar goods or services and conferred on them a right which has expired for failure to renew within a period of a maximum of two years preceding application, unless the proprietor of the earlier trade mark gave his agreement for the registration of the later mark or did not use his trade mark;
(3). The trade mark is liable to be confused with a mark which was in use abroad on the filing date of the application and which is still in use there, provided that at the date of the application the applicant was acting in bad faith. The applicant’s actions are considered to be in bad faith if at the moment of filing the application the applicant knew or could know about the existence of such a trademark. The applicant’s actions are considered to be in bad faith as well if for the purpose of registration of the trademark the applicant has provided such fake and groundless documents without the presence of which the registration of the trademark would not be possible.
Trademark Opposition in Armenia
Any interested person, within two months from the date of publication of the mark in the Official Bulletin, has the right to file to the Controller an opposition to the registration of the mark.
Trademark registration in Armenia
After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application, and the registration certificate is issued.
Trademark Renewal in Armenia
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.