LEGAL UPDATE
INTELLECTUAL PROPERTY SECTOR
February 2025
AMENDED LEGAL ACTS, DECISIONS OF THE APPEAL BOARD AND
JUDICIAL ACTS IN THE SECTOR OF INTELLECTUAL PROPERTY
1. Court Case N: ԵԴ/19106/02/22 on the demand to stop the illegal use of a trademark.
AMENDED LEGAL ACTS, DECISIONS OF THE APPEAL BOARD AND JUDICIAL ACTS IN THE SECTOR OF INTELLECTUAL PROPERTY
(This section includes legal updates in the field of intellectual property, decisions made by the Intellectual Property Appeals Board, as well as judicial acts that have formed precedents.)
1. Court Case N: ԵԴ/19106/02/22 on the demand to stop the illegal use of a trademark
1. “Sena Shin” LLC filed a lawsuit with the Yerevan Court of First Instance of the Republic of Armenia on April 19, 2022 against “Royal Rice” LLC, demanding to stop the illegal use of the trademark.
2. According to the decision of the Head of the Ararat Customs House-Department of the State Revenue Committee of the Republic of Armenia dated 21.04.2022 “On extending the period for suspending the release of goods containing intellectual property objects across the customs border of the Republic of Armenia”, it was found that goods containing the “Vini-Tape” trademark were registered in the register of intellectual property objects maintained by the superior customs body under the goods declaration No. 05100010/080422/0024670 of “Royal Rice” LLC under the customs procedure “Release for domestic consumption”. By decision No. 0696 of the Chairman of the State Revenue Committee of the Republic of Armenia dated 03.11.2022, the “Vini-Tape” trademark is registered in the register of intellectual property objects maintained by the superior customs body.
3. According to the decision of the State Revenue Committee of the Republic of Armenia No. 0696 dated 03.11.2021 “On satisfying the application of the rightholder for suspension and registering the intellectual property object”, it was found that on November 1, 2021, the State Revenue Committee of the Republic of Armenia filed an application of Yeghish Mshetsyan, Director of “SENA SHIN” LLC, to register the trademark “VINI-TAPE” registered with the international trademark registration certificate No. 1325708 in the register of intellectual property objects maintained by the customs authorities. The application of Yeghish Mshetsyan, Director of “SENA SHIN” LLC was satisfied.
4. The court, having analyzed the factual circumstances of the case, concluded that the owner of a registered trademark has the exclusive right to prohibit or permit third parties to use its trademark, and the person illegally using the trademark is obliged to stop the infringement upon the request of the owner. A trademark, as an object of intellectual property protected by law, is a sign capable of being graphically depicted, the functional meaning of which is to ensure the differentiation of the goods or services of one person from the goods or services of another person. Through this meaning, the trademark makes it possible to identify the goods or services of one person and distinguish them from the goods and services of another person (see, the decision of the RA Court of Cassation in administrative case No. VD/5614/05/15 of 30.11.2018).
5. Thus, when assessing the similarity of trademarks, it is necessary to compare them in the form in which they were registered. Word (letter) trademarks, as a rule, are perceived simultaneously visually, semantically and aurally. That is, a word trademark exists and performs the functions assigned to it, regardless of its additions, therefore, both signs should be assessed independently, without taking into account the manner of their presentation, and the subject of comparison should be only the corresponding sign, without taking into account the calligraphy of that sign. The court found that in trademarks, only the main distinctive element is the object of protection, except for cases when the additions made to the corresponding sign change that sign to such an extent that the main element loses its individuality and distinctive meaning. When determining the issue of imitation of combined trademarks, the latter are also compared with those signs (word, figurative, etc.) that are included as elements in the corresponding combined trademark. The court concluded that the trademark When comparing a mark, the distinctive element must be taken into account first, regardless of the presence of additional and purely symbolic elements. That is, if a trademark repeats a distinctive element, it can be concluded that it is similar to the extent of confusion. The trademarks must be compared as a whole in order to create the same situation as that of the consumer, since the latter does not have both signs at his disposal in order to be able to find their distinctive features. Based on the fact that the main purpose of a trademark is to individualize the product and guide potential consumers, the level of development and training of consumers must also be taken into account when assessing the similarity of trademarks. Referring to the issue that when comparing two trademarks, the court must take into account both the similarities and differences of the trademarks, the Court referred to the fact that when comparing trademarks, the similarities of those signs (which have distinctive meaning) regardless of the presence of additional and insignificant elements. That is, if an element with distinctive meaning is repeated in a trademark, it can be concluded that it has a degree of similarity to the degree of confusion. Such an approach to the issue of similarity to the degree of confusion of trademarks is explained by the fact that when choosing a particular product, the consumer first of all pays attention to the trademark itself and, finding in it the main components of the trademark already known to him, may gain a wrong conviction about the manufacturer of the corresponding product, without noticing the minor differences that the consumer could only notice when comparing those two trademarks side by side (see, “Yerevan Brandy Factory” CJSC vs. Intellectual Property Agency of the Ministry of Economy of the Republic of Armenia, decision of the Court of Cassation of the Republic of Armenia dated 18.07.2014 in administrative case No. VD/4241/05/11).
6. Extending the aforementioned analysis to the facts of the case, the court notes that the dispute in this case concerns the legality of the use of a trademark. Moreover, the court notes that the defendant must prove the legality of the use of the trademark. The court considers the fact that the plaintiff is the rightholder of the “VINI-TAPE” trademark to be established, in which case the plaintiff enjoys the exclusive right of the rightholder to possess, use and dispose of the trademark, as well as to prohibit or authorize the use of the trademark. The aforementioned jurisdiction also implies that the rightholder of the trademark has the exclusive right to prohibit third parties from using any mark without his permission. The use of a trademark is also considered to be the import or export of goods marked with that trademark. In this case, we are dealing with the import of goods marked with the trademark of the person who is the rightholder. The fact of import is confirmed by the relevant documents of the State Revenue Committee, according to which the defendant imported Goods marked with the trademark "VINI-TAPE", on the basis of which the release of these goods was suspended. Thus, the court considers the facts that the trademark "VINI-TAPE" belongs to the plaintiff to be confirmed, the defendant imported goods marked with the trademark "VINI-TAPE", which are grounds for concluding that the defendant has illegally used the trademark "VINI-TAPE". For illegal use, the legislator provides for the destruction of trademark images, the removal of the illegally used trademark from the product or its packaging, and in case of impossibility of the above actions, the destruction of the product.
7. The court ruled 1. According to the lawsuit, "Sena Shin" LLC against "Royal Rice" LLC, demanding an injunction to stop the illegal use of the trademark:
2. To prohibit "Royal Rice" LLC from using the "VINI-TAPE" trademark, to oblige "Royal Rice" LLC to destroy the images made with the "VINI-TAPE" trademark, to remove the illegally used trademark from the product or packaging, and in case of impossibility of fulfilling this requirement, to destroy all products bearing the "VINI-TAPE" trademark.