LEGAL UPDATES
INTELLECTUAL PROPERTY
January 2025
AMENDED LEGAL ACTS, DECISIONS OF THE APPEAL BOARD AND
JUDICIAL ACTS IN THE FIELD OF INTELLECTUAL PROPERTY
1. Decision of the Board of Appeal No. 2024-14-6-A on recognizing the combined trademark
“MASTER” as well-known in the Republic of Armenia for goods in class 34 “cigarettes,
rolling papers” as of January 1, 2018
2. Court Case N: ԵԴ2/0716/02/24 on the prohibition of the use of an unregistered trademark
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)
1. Decision of the Board of Appeal No. 2024-14-6-A on recognizing the combined trademark “MASTER” as well-known in the Republic of Armenia for goods in class 34 “cigarettes, rolling papers” as of January 1, 2018
The Appeals Board of the Intellectual Property Office of the Ministry of Economy of the Republic of Armenia (hereinafter referred to as the Appeals Board) on December 5, 2024 recognized the combined trademark "MASTER" submitted by "International Masis Tabak" LLC as a well-known trademark.
The Appeals Board of the Intellectual Property Office of the Ministry of Economy of the Republic of Armenia (hereinafter referred to as the Appeals Board) at its meeting on December 5, 2024, considered the combined trademark "MASTER" in the name of the company "International Masis Tabak" LLC on October 31, 2024 for goods in class 34 "cigarettes, rolling papers" in the Republic of Armenia in 2018. application for recognition as well-known as of January 1, 2018.
The Board of Appeal, while presenting the results of the preliminary consideration of the application, noted that there is sufficient information in the documents and justifications submitted with the application, which show that the combined trademark “MASTER” as a result of use has gained wide recognition in the territory of the Republic of Armenia by the relevant circles of society as of 01.01.2018 for the goods for which the trademark was used.
The information provided shows that “International Masis Tabak” LLC is a large manufacturer in this field, has established its stable position in the Armenian market and has a wide range of products.
Based on the above, the Board came to the conclusion that in accordance with Article 31 of the RA Law “On Trademarks”, the submitted trademark can be recognized as well-known in the RA for the goods “cigarettes, cigarette rolls”.
Agreeing with the preliminary opinion of the Board, and guided by the RA Government In accordance with the provisions of subparagraph 1 of paragraph 82 of the “Procedure for the consideration of complaints, applications and objections in the Appeals Board of the Intellectual Property Office of the Ministry of Economy of the Republic of Armenia” approved by decision N774-N of May 6, 2022, the Appeals Board decided to fully satisfy the application submitted by “International Masis Tabak” LLC to recognize the combined trademark “MASTER” as well- known in the Republic of Armenia for goods of class 34 of the Civil Code of the Republic of Armenia as of 01.01.2018.
2. Court Case N: ԵԴ2/0716/02/24 on the prohibition of the use of an unregistered trademark
1. On 30.01.2024, the representative of "Dizak Food" LLC filed a lawsuit with the Yerevan City Court of First Instance of General Jurisdiction, requesting to prohibit the defendant "Vanilla" LLC from using the unregistered trademark "VANILLA", which is identical to the trademark registered by the plaintiff company.
2. The court considered the scope of facts relevant to the resolution of the case under consideration, including facts not requiring proof and facts subject to proof, discussed the issue of distributing the burden of proof among the persons participating in the case and determined the scope of facts relevant to the resolution of the case and subject to proof, namely:
1) The facts that “Dizak Food” LLC has been engaged in commercial activities in confectionery, cakes and other sweets since 2015, is the owner of the “VANILLA” trademark and has the exclusive right to own, use and dispose of the trademark.
2) The fact that “Vanilla” LLC has been registered in the State Register of Legal Entities of the Ministry of Justice of the Republic of Armenia since November 2023.
3) The fact that “Vanilla” LLC has been registered in the State Register of Legal Entities of the Republic of Armenia, c. The facts that a confectionery, cake and other sweets shop was opened at 17 Azatutyan Avenue, Yerevan, and that the sign "VANILLA LILI" was posted on the shop, that the sign "VANILLA" was relatively larger and more prominent, and that the sign "LILY" was smaller.
4) The fact that the defendant "Vanilla" LLC illegally used the trademark "VANILLA".
5) The fact that the defendant "Vanilla" LLC used the trademark "VANILLA" identically to the trademark registered in the name of the plaintiff "Dizak Food" LLC and used it in relation to goods and (or) services that are identical to the goods and (or) services for which the trademark "VANILLA" is registered by "Dizak Food" LLC.
6) The fact that the use of the trademark "VANILLA" by the defendant "Vanilla" LLC causes confusion among consumers the fact that it contains a risk of causing harm.
7) The fact that the word "Vanilla" is not subject to protection on its own. 3. Based on the factual circumstances of this case, in particular, on the basis of the document entitled "RA Intellectual Property Office Trademarks", the Court has established that the plaintiff "Dizak Food" LLC is the owner of the "VANILLA" trademark, therefore, the plaintiff, in accordance with the procedure established by the domestic legislation of the Republic of Armenia, is the owner of the trademark, an object of intellectual property, who has the exclusive right to possess, dispose of and use it, including to allow or prohibit its use by other persons.
4. The facts set forth in paragraphs 3, 4, 5 and 6 of the court's decision on the distribution of the burden of proof, by "Vanilla" LLC, RA, c. Yerevan, Azatutyan Avenue 17, having opened a confectionery, cake and other sweets shop and having posted the sign "VANILLA LILI" on the shop, the sign "VANILLA" being relatively larger and more prominent, and the sign "LILY" being smaller, the defendant "Vanilla" LLC illegally using the trademark "VANILLA", the trademark "VANILL" being identical to the trademark registered in the name of the plaintiff "Dizak Food" LLC and being used for goods and (or) services that are identical to the goods and (or) services for which the trademark "VANILLA" is registered by "Dizak Food" LLC, as well as any evidence or motions to obtain it to prove the facts that the use of the trademark "VANILLA" by the defendant "Vanilla" LLC contains a risk of causing confusion among consumers The Plaintiff did not submit it within the specified time limit, therefore, after examining and evaluating the evidence in the case, the existence of those facts remains disputable. Therefore, based on the logic of Part 6 of Article 62 of the RA Civil Procedure Code, the Court finds that the negative consequences thereof should be borne by the person bearing the burden of proving that fact, the Plaintiff.
5. Based on the above, as well as comparing the facts of this case with the legal norms applicable to the disputed legal relationship, the Court has found that the claim of "DIZAK FOOD" LLC against "VANILLA" LLC for the requirement to prohibit the use of the unregistered trademark is subject to rejection.