Mr. Y, the owner of “X” interior design company, which manufactures in the market for already 15 years, received a call from a man stating that he is very disappointed with the services provided to him. Mr. Y was surprised, but after small research found out that potential customers, which confuse the logo of “X” with the logo of “N”, a comparably new player in the market of interior design, apply to the latter for services. They consider that “N” is related to “X”, the company that Mr. Y owns because of similar logos, and present their complaints to the latter.
Mr. Y applies to “N” to find out why they use a logo similar to “X”s, and in response “N” states that this logo has been duly registered with the Agency of Intellectual property as a trademark, and they can freely use it being the rightful owners.
This is a common situation for a lot of business, as they mostly concentrate on improvement of sales and forget about the protection of their IP right on the logo/trademark – the asset which identifies and distinguishes their products and services from others. As already can be concluded, a solution for the case in most of the countries and also in Armenia is registration of the trademark with the Agency of IP.
What can be trademarked?
Armenian law defines a list of elements, which, used separately or together, can be registered as trademarks. These are word elements, phrases, letters, numbers, images, and even sounds.
You shall be careful when your logo, which can consist of the abovementioned elements, is created by another designer, not you or one of your employees. This is important because the designer can still have copyright on your logo and shall transfer those rights to you for you to be considered the sole owner and right holder of the logo and to further register it as a trademark.
Can the appropriate state body, which performs registration of the trademark, decline
The answer is yes, the state body has the authority to decline the application. Armenian legislation defines different grounds, both absolute and relative for declining such applications such as not having any distinctive features, consisting of exclusively such elements, which describe the product or service for which they are registered, etc. However, the ground that is quite often met while declining applications for trademark registration is the similarity with a previously registered trademark or trade name.
To avoid the decline of the application based on the above-mentioned ground, you shall perform research on databases to find out whether there is a similar trademark/ trade name previously registered. For this, you shall be attentive to perform the research both on national and international databases, as the trademark of a foreign company may have been registered in the country by an international application. Be attentive also to take into account the appropriate class from Nice classification which corresponds to your products and services. In Armenia, the Agency takes into account the existence of similar trademarks registered in similar classes of goods and services.
What shall be considered for deciding on trademark registration?
Your trademark is the key to your brand and an asset of your company. As it can be seen from the example brought above, misuse of IP and infringement of IP rights can cost you high as to losing potential customers and damages to reputation. A trademark registration gives you authority to decide who can use your trademark and to even receive royalties for licensing third parties to use the trademark through license agreements or franchising.
Also, pay attention to the territorial protection of the trademark. If you plan to grow and sell your products or provide services in foreign countries, it is highly recommended to present international applications for registration of the trademark also in third countries.
Author: Anzhela Abrahamyan / Associate
This material is produced by Legelata LLC. The material contained in this newsletter is provided for general information purposes only and does not contain a comprehensive analysis of each item described. Before taking (or not taking) any action, readers should seek professional advice specific to their situation. No liability is accepted for acts or omissions taken in reliance upon the contents of this material.