Well Known Trademarks: Estoppel of registration in the Armenian law
Trademarks can be protected in the territory of the Republic of Armenia by having a proper registration as a trademark or by being recognized by well-known. In fact, a trademark can be recognized as well-known without having a registration in RA. Recognition of a trademark as well-known is a national procedure and there is no international mechanism to provide international recognition of a trademark as well-known.
This right is envisaged in Article 16 of the Agreement on Trade Relating Aspects of Intellectual Property, stating “In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark”.
What is a well-known trademark? According to Article 2 of the Law on Trademarks of RA (hereinafter: “the Law”): “well-known trademark is a trademark, which has become widely recognized in certain social circles in the territory of the Republic of Armenia by the date of submission of an request for declaring it as a well-known trademark or by an earlier date stated in the request, for those goods and/or services, with respect to which the trademark was used”.
Hence, the trademark/sign should be widely recognized in the territory of the whole country, not just one or several regions, and the proprietor can apply for declaring the trademark well-known starting before the date of the application. One should also pay attention to the social circles, recognition among which is the main rationale for declaring a mark well-known. The description uses the word “certain” for identifying social circles, meaning that not all the groups should be taking into account, but only targeted social circles for that specific trademark’s goods/services.
Why does one need to recognize his/her trademark as well-known? For answering this question, it is vital to consider the additional rights that the proprietor of the well-known trademark is entitled to.
These rights are established in Article 30 of the Law. In the sense of this article the proprietor of the well-known trademark is entitled to prohibit the use of a sign by other persons in the course of their industrial or commercial activities, which is (a) the reproduction, imitation or translation of a trademark recognized as well-known, and (b) can cause confusion with the well-known trademark (whether for the goods or services of the same class or not).
However, there is a condition while exercising the mentioned rights. As it is envisaged in part 3 of Article 30 of the Law, the owner of well-known trademark can apply to the court for the protection of his/her rights, yet the claim can be rejected if the opposed sign was continuously in use in a reasonable extent during the period of five years prior to the date of applying to the court. This is an example of a principle estoppel, meaning that the entity cannot exercise his rights after accepting the actions of the other party by his inactivity for a period of time.
The list of the well-known trademarks recognized as such in the territory of RA is open for public and one can find it in the official website of the Intellectual Property Agency of RA.
Author: Mane Hakobyan, Associate
26/1 Vazgen Sargsyan str, Yerevan 0010, Armenia
Phone: +374 11 520510
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Legelata LLC, 2020