AMENDED LEGAL ACTS, DECISIONS OF THE APPEAL BOARD AND JUDICIAL ACTS
IN THE FIELD 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)
Court Case No: ԵԴ2/40794/02/23 on the request to prohibit the import and customs clearance of goods bearing/containing trademarks into the territory of the Republic of Armenia without the permission or consent of the owner of the intellectual property object/trademark/right.
1. On 29.11.2023, the Director of the Armenian Representative Office of "Gideon Richter" OJSC filed a claim with the Civil Court of First Instance of Yerevan against the respondent "Violetta Farm" LLC, demanding a ban on the import and customs clearance of goods bearing / containing / trademarks into
the territory of the Republic of Armenia without the permission or consent of the owner of the intellectual property object / trademark.
2. The Armenian representation of "Gideon Richter" OJSC is the owner of the trademark "Midokalm" (Midokalm) registered in the register of intellectual property objects maintained by the customs authorities, based on the decision of the Chairman of the State Revenue Committee of the Republic of Armenia No. 0826 dated 31.05.2023.
3. The specified registered trademark is included in the list of trademarks registered in the Register of Intellectual Property Objects and their right holders in the Republic of Armenia section of the official website of the State Revenue Committee of the Republic of Armenia, link: https://src.taxservice.am/am/getMenusContents/142:
For the specified trademark, the trademark belonging to the plaintiff is registered in the register of intellectual property objects of the superior customs body of the Republic of Armenia, which is subject to protection in the territory of the Republic of Armenia.
The court, having studied the claim and the attached materials, in particular, analyzing the factual circumstances of the case, concluded that the decision of the Chairman of the State Revenue Committee of the Republic of Armenia R. Badasyan dated 31.05.2023 No. 0826 confirms that the owner of the trademark
“Midokalm” (“Midokalm”) registered in the register of intellectual property objects maintained by the customs authorities under certificate No. 1025829 is “Gedeon Richter” OJSC. The court considered the decision of the Deputy Head of the Yerevan Customs Service Center-Customs Department of the State Revenue Committee of the Republic of Armenia A. Aghayan dated 28.11.2023 By decision No. 685, it is considered confirmed that goods containing (bearing) the trademark "Midokalm" ("Midokalm") were declared under the customs procedure "Release for domestic consumption" under the declaration of goods No. 05100010/231123/011856 in the name of "Violetta Farm" LLC.
The court also finds it confirmed that the release of goods containing (bearing) the trademark "Midokalm" ("Midokalm"), formulated by "Violetta Farm" LLC under the customs procedure "Release for domestic consumption" with the goods declaration 05100010/231123/011856 and registered in the register of intellectual property objects maintained by the superior customs authority, has been suspended, based on the fact that the specified intellectual property object, within the framework of the function of protecting intellectual property objects, was still subject to the protection of intellectual property objects on 31.05.2023. was registered in the register of intellectual property objects maintained by the customs authorities of the Republic of Armenia, and the right holder did not allow or otherwise express his consent to "Violetta Farm" LLC to import and place into civil circulation goods bearing the "Midokalm" ("Midokalm") trademarks through customs clearance. The court records that the trademark "Midokalm" ("Midokalm") belonging to "Gedeon Richter" OJSC is registered in the register of intellectual property objects of the superior customs body of the Republic of Armenia, and in accordance with Article 12, Part 2, Paragraph 3 of the Law of the Republic of Armenia "On Trademarks", the trademark owner may prohibit third parties from performing the following actions, including the import or export of goods with that mark.
The court notes that the trademark owner’s legally protected right is to demand a ban on the import or export of goods bearing his trademark by third parties.
The court also notes that the use of the trademark “Midokalm” (“Midokalm”) belonging to the owner by “Violeta Farm” LLC is illegal and gives rise to civil and other liability as defined by the legislation of the Republic of Armenia.
The court states that as long as the plaintiff's right to the trademark is registered, the fact of his ownership of the trademark "Midokalm" ("Midokalm") is indisputable, by virtue of which, based on the above-mentioned legal regulations, the plaintiff, the owner of the trademark, has the right to file a claim for a ban on the import
or export of goods with that mark by third parties at any time, regardless of the decisions made by the customs authorities, their chronology or the scope of actions taken by the defendant, and since the defendant did not present any admissible, relevant evidence during the examination of the case to substantiate the legality of its
import of goods with the trademark belonging to the plaintiff, therefore the court finds that the plaintiff, the defendant "Violetta Farm" LLC, with the declaration of goods 05100010/231123/011856, registered under the customs procedure "Release for domestic consumption" for the goods "Midokalm" The demand to oblige to stop
the import of a product containing (bearing) the trademark ("Mydocalm") into the territory of the Republic of Armenia is justified and subject to satisfaction.
The court, addressing the plaintiff's demand to oblige the defendant "Violetta Farm" LLC to suspend the customs clearance of goods containing (bearing) the trademark "Midokalm" (Midokalm) formulated under the customs procedure "Release for domestic consumption" with the goods declaration 05100010/231123/011856, finds that it is unfounded and subject to rejection, for the following reasons:
The court notes that the right to prohibit customs clearance in the territory of the Republic of Armenia is not granted to the trademark owner either by the Civil Code of the Republic of Armenia or by the Law of the Republic of Armenia “On Trademarks”.
The trademark owner has the right to demand only the imposition of such a prohibition as is provided for by law. The implementation of customs clearance, taking into account the freedom of economic activity and free economic competition guaranteed by the Constitution of the Republic of Armenia, is firstly within the scope
of the duties of the individual, then the customs clearance is carried out by the relevant state body and within the scope of the latter’s functions the importer of goods cannot bear personal liability, while in the given case the plaintiff has directed his claim against a legal entity, which cannot be liable for the actions carried out/being
carried out by the state body.
Under such circumstances, the court finds that the plaintiff's claim to oblige the defendant "Violetta Farm" LLC to suspend the customs clearance of goods containing (bearing) the trademark "Midokalm" (Midokalm) registered under the customs procedure "Release for domestic consumption" with the goods
declaration 05100010/231123/011856 should be rejected.