Trademark Disputes

The main laws and regulations governing trademark litigation in Armenia are as follows:

• The Constitution establishes the fundamental principles of property rights, including intellectual property. Article 60 ensures the protection of intellectual property, laying the constitutional foundation for trademark rights and their enforcement.
• The Civil Code establishes the foundational legal framework for IP protection, including trademarks. It defines proprietary and non-proprietary rights, including the rights of trademark holders to use, transfer and protect their marks. In the context of litigation, the Civil Code sets out general provisions for the protection and enforcement of civil rights, including claims for damages, injunctions and other remedies for infringement.
• The Trademark Law specifically governs the registration, use and protection of trademarks. It outlines:
• • the procedures for obtaining trademark protection;
  • the rights and obligations of trademark holders; and
  • the legal grounds for contesting and invalidating trademarks.
• serves as the primary legislation for addressing trademark infringement.
• The Civil Procedure Code regulates the judicial process for civil disputes, including termination of the use of trademarks. It sets out procedures for:
• • filing lawsuits;
  • collecting and presenting evidence; and
  • obtaining provisional remedies.
• The Administrative Procedure Code establishes the procedure for completing, submitting and reviewing trademark applications. It provides detailed regulations on:
• • the documentation required;
  • the examination processes; and
  • the timelines for trademark registration.
• This procedural framework ensures clarity and consistency in trademark application processes, which indirectly impacts litigation by clarifying:
• • the registration requirements; and
  • potential grounds for dispute.
• Government Decision 1538-N of 18 November 2010 on the Procedure for Filling Out, Submitting and Reviewing Trademark Applications establishes the procedure for filling out, submitting, and reviewing trademark applications. It provides detailed regulations on technical standards and administrative protocols that govern post-registration procedures, including modifications, renewals, and transfers of trademark rights, ensures clarity and consistency in trademark application processes, which indirectly impacts litigation by clarifying the registration requirements and potential grounds for dispute.

International agreements: According to the Constitution, in the event of a conflict between international treaties ratified by Armenia and the norms of laws, the norms of international treaties will apply.

The international agreements that regulate trademark disputes are as follows:

• The Madrid Agreement Concerning the International Registration of Marks simplifies international trademark registration, allowing Armenian trademark holders to protect their marks in multiple jurisdictions through a single application. Armenia became a party to the agreement on 25 December 1991.
• The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks was introduced to:
• • address the shortcomings of the original Madrid Agreement; and
  • make the system more flexible and accessible to a broader range of countries.
• Armenia became a party to the protocol on 19 October 2000.
• The Agreement on Trade-Related Aspects of Intellectual Property Rights establishes global standards for the enforcement of IP rights, including trademarks, ensuring that Armenia aligns its legal system with international best practices.
• The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks standardises the classification of goods and services for trademark registration. Armenia became a party to the agreement on 6 March 2005.
• The Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks harmonises the classification of figurative elements in trademarks. Armenia became a party to the agreement on 6 March 2005.
• The World Intellectual Property Organization (WIPO) Convention established WIPO, which is responsible for promoting and protecting IP rights worldwide. Armenia became a party to the convention on 22 April 1993.
• The Singapore Treaty on the Law of Trademarks modernised and harmonised procedural aspects of trademark registration and licensing, making it easier for Armenian businesses to protect their marks globally. Armenia became a party to the treaty on 7 September 2013.
• The Agreement on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union, adopted by the Eurasian Economic Union (EAEU) member states (Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia), creates a unified system for the protection of trademarks, service marks and appellations of origin across the EAEU region. Armenia ratified the agreement on 3 February 2020.

In Armenia, several bilateral and multilateral agreements govern trademark protection and litigation. These are more specifically outlined in question 1.1.

The main body responsible for interpreting and enforcing trademark laws is the Intellectual Property Office (IPO) of the Ministry of Economy. In particular, the IPO includes several departments, among which the Trademarks and Geographical Indications Examination Department is responsible for examining trademarks applications and registering trademarks. The IPO:

• conducts the registration process, including the examination of trademarks for compliance with the relevant laws;
• publishes the trademark register; and
• oversees administrative matters related to trademarks, such as:
• • renewals;
  • assignments; and
  • disputes regarding registration.

Trademark laws are also enforced and interpreted through litigation in the administrative and civil courts. The administrative courts typically handle disputes relating to decisions made by state authorities, such as the IPO; while the civil courts address conflicts between private parties, such as infringement cases or contractual disputes.

The other state body responsible for enforcing trademark laws is the Competition Protection Commission (CPC), which handles trademark disputes in the context of unfair competition. The CPC has the authority to address cases where trademarks are used in ways that could mislead consumers or create unfair competition in the market. This body can step in when a trademark issue intersects with practices such as false advertising or deceptive trade practices, ensuring that trademark usage does not violate principles of fair competition.

At the request of the parties, disputes may also be resolved through the Arbitration and Mediation Center of Armenia, provided that they fall within its jurisdiction.

In Armenia, trademark litigation is typically heard in civil courts and administrative courts, with the specific forum depending on the nature of the dispute. This division allows for a distinction between:

• disputes relating to the use of trademarks; and
• issues regarding the registration and validity of trademarks.

Trademark infringement is decided in the civil courts, while Intellectual Property Office (IPO) as an administrative body handles matters relating to the validity and registration of trademarks. In case of cancellation, validity is eventually decided by the administrative courts.

The validity of a trademark – including whether the trademark should have been granted registration in the first place – is generally addressed by administrative bodies in Armenia. This is where the IPO plays a crucial role.

The IPO is the governmental body responsible for registering, maintaining and overseeing the validity of trademarks in Armenia. If a third party believes that a registered trademark is invalid – perhaps because the mark is not distinctive, has prior conflicting rights or violates other legal requirements – it can file an opposition to the registration or a request to invalidate the trademark.

Administrative process for trademark validity: If a party wishes to contest the registration of a trademark, it can file an opposition with the IPO. The opposition can be based on various grounds, such as:

• prior rights to the same or a similar mark; or
• non-distinctiveness of the mark.

In case of disagreement with a decision to refuse registration of a trademark or to partially register it, the applicant or its representative may file an appeal with the Appeals Board within three months of receipt of the decision.

The applicant or its representative may challenge the decision of the Appeals Board in court within two months of receipt.

In Armenia, trademark disputes are primarily resolved through the court system. Trademark disputes are heard by the administrative courts or the civil courts, depending on the nature of the dispute. This issue is regulated in Article 27 of the Civil Procedure Code and depends on the instance at which the case is being considered:

• At first instance, a single judge considers the case.
• On appeal, a panel of three judges hears the case.
• In the Court of Cassation, decisions on the following are made by majority vote of all number of judges present at the session:
• • admitting a cassation appeal;
  • returning a cassation appeal;
  • rejecting a cassation appeal; or
  • leaving a cassation appeal without examination.
• The cassation appeal itself is examined by:
• • a majority of all judges of the Civil Chamber of the Court of Cassation; or
  • in the case of the Anti-corruption Chamber, a majority of all judges of the judicial panel for anti-corruption civil cases.

‘Forum shopping’ refers to the practice of choosing the court or jurisdiction that has the most favourable rules or laws to the position being advocated. A party can forum shop if more than one court has jurisdiction over the dispute, choosing the court that gives it an advantage over the opposing party.

Armenian law is designed to minimise the opportunity for forum shopping, though there is no direct codification or specific regulatory framework addressing this concept explicitly in Armenian legislation.

There are established rules for determining the court before which the claim should be filed. Certain factors restrict the ability to shop for a more favourable forum, such as:

• the location of parties; and
• the place where the legal issue arose.

The claim may be returned even if the case cannot be disputed in that specific court.

The right to file for trademark infringement in Armenia rests with:

• the owner of a registered trademark;
• the owner’s agents and representatives; and
• individuals and legal entities whose rights and interests are affected as a result of the use or registration of a trademark.

When filing a claim, it is necessary to provide proof of:

• legal ownership of the trademark; and
• illegal use of the trademark.

Armenian law protects a trademark against foreign infringers if the infringement affects the Armenian market. Armenian law, in line with international legal standards, allows trademark owners to protect their rights against both domestic and foreign infringers.

The Trademark Law grants the exclusive right to the trademark owner to prevent the unauthorised use of its trademark by any third party, regardless of whether the infringer is a domestic or foreign entity. This protection applies within the territory of Armenia, meaning that if a foreign entity’s actions affect the Armenian market, they may be subject to legal action.

According to the Civil Procedure Code, the Armenian courts have jurisdiction over foreign entities if their actions have caused harm within Armenia.

If a foreign company’s infringing goods or services are distributed, sold or advertised in Armenia – whether physically or online – the Armenian courts can hear the case. A registered trademark in Armenia (or an international trademark registered through the Madrid System with effect in Armenia) allows the owner to take legal action against any entity that infringes those rights within the Armenian territory.

The plaintiff must have a trademark that is validly registered in Armenia or protected under international agreements applicable in Armenia.

Unregistered trademarks generally do not have standing unless they are recognised as well-known marks under the Paris Convention.

Armenia is a member of the World Trade Organization and a signatory to:

• the Paris Convention for the Protection of Industrial Property; and
• the Madrid Agreement Concerning the International Registration of Marks.

These agreements provide mechanisms for Armenian trademark owners to:

• enforce their rights against foreign entities; and
• ensure that foreign entities respect Armenian trademarks.

Under the Paris Convention, Armenian courts can take action against foreign companies that engage in unfair competition or infringe trademarks.

Foreign entities are subject to the Trademark Law (RA Law ‘On Trademarks’) and relevant provisions of the Civil Code when their actions affect the Armenian market.

A single infringement action can be brought against multiple defendants in Armenia, provided that certain conditions are met. According to Article 22(1) of the Civil Code, when filing a claim against several respondents, a plaintiff may choose to file it with the court of first instance:

• at the place of record registration (principal place of business); or
• if the respondent is not record registered anywhere, at the place of residence of one of the respondents.

According to Article 21(1) of the Trademark Law, the registration of a trademark may be cancelled on the basis of a relevant claim filed in court or a court decision rendered as a result of consideration of a counterclaim in a case for the protection of rights if:

• in the case of filing a claim (counterclaim) for three consecutive years, counting from the date of registration of the trademark, or in the case of filing a claim (counterclaim) later, for three consecutive years immediately preceding it, the trademark was not used at all or was not put into actual use in Armenia by the trademark owner or a person that has the right to use this trademark in relation to the goods or services for which the trademark is registered, subject to the provisions of Article 17;
• as a result of the actions or omissions of the trademark owner, the trademark has become the universal name of the product or service for which it is registered; or
• the use of a trademark by the trademark owner, directly or with its consent, in relation to goods or services may mislead the consumer, in particular, with respect to:
• • the type of goods or services for which it is registered;
  • the quality of goods or services;
  • the geographical origin of the goods or services; or
  • the manufacturer (service provider) of the goods or services.

Third parties have standing to seek a declaration of invalidity of registration of the trademark.

According to Article 22(2) of the Trademark Law, a registration can be declared invalid by virtue of a court decision if absolute grounds exists for refusal of a trademark registration, as provided in Article 9 of the Trademark Law.

These grounds are as follows:

• The trademark lacks distinctiveness.
• The trademark is exclusively composed of elements which are used to describe:
• • the time of provision of the services or production of the goods; or
  • the geographical origin, quality, type, quantity or similar of the goods or services.
• The trademark is exclusively composed of elements which have become general in the trade or spoken practice.
• The trademark:
• • contradicts the principles of humanism and moral public order; or
  • is incompatible with national or spiritual values.
• The trademark is composed of or contains false and/or misleading consumer data on issues related to:
• • the time of production of goods or services; or
  • the type, nature, quality, quantity, purpose of creation, value, geographical origin or manufacturer or provider of the goods or services.
• The trademark reproduces or contains:
• • state coats of arms;
  • flags or symbols;
  • official names of states or their abbreviated forms;
  • full or abbreviated names of international and interstate organisations;
  • official symbols;
  • official controls;
  • guarantees and stamps;
  • seals, awards or other insignia (in accordance with Article 6ter of the Paris Convention); or
  • signs which are confusingly similar to them.
• Other grounds stipulated in Article 9 of the Trademark Law exist.

According to Article 1104 of the Civil Code, the owner of an IP right has the exclusive right to legally use the object of intellectual property in any way at its discretion.

The use of IP objects by other persons is allowed only with the consent of the rights holder, unless otherwise provided by law.

Restrictions on exclusive rights – including by granting the right to use an IP object to other persons – invalidation of these rights and termination (cancellation) of these rights are permitted within the limits and in accordance with the procedure provided for by the code and other laws, provided that they do not:

• prejudice the normal use of the IP object; or
• unreasonably infringe the rights of authors, taking into account the legitimate interests of third parties.

According to Article 12(1) of the Trademark Law, the following activities constitute trademark infringement:

• A mark which is identical to a registered trademark is used in relation to identical goods and/or services to those for which the trademark is registered.
• A mark which is identical or similar to a registered trademark is used in relation to goods and/or services that are identical or similar to the goods and/or services for which the trademark is registered, if such use risks misleading consumers, including through association with the registered trademark.
• A mark that is identical or similar to a registered trademark is used for different goods and/or services, if:
• • the registered trademark has a good reputation in Armenia; and
  • such use will lead to unreasonable advantages or damage the distinctive character or good reputation of the registered trademark.

According to Article 12(6) of the Trademark Law, goods on which or on whose packaging or labels a trademark is used illegally are considered counterfeit.

According to Article 14(1) of the Trademark Law, the use of a trademark will not be considered to infringe the exclusive right to the trademark if it involves the distribution or use of goods bearing or labelled with the trademark which have been lawfully placed on the market in Armenia, or in another country with which an international treaty on a common market or a common customs territory is in force, by the trademark owner or with its consent.

According to the Eurasian Economic Union (EAEU) Treaty, the use of a trademark by other persons without the consent of the trademark owner, including parallel imports, is considered an infringement of the exclusive right to the trademark and may result in corresponding legal consequences. This implies that the import of any goods from a third country (ie, a non-EAEU member) into Armenia without the consent of the trademark owner may be prohibited if the trademark on those goods is registered with the IP Office and included in the customs registry.

According to Article 16 of the Trademark Law, if an agent or representative of a person that owns a trademark in a Paris Convention member state submits an application for registration of that trademark in its own name without the permission of the trademark owner, the trademark owner has the right to:

• file a complaint against registration of the claimed trademark; or
• request cancellation of the registration or transfer of the specified registration to it unless the agent or representative can prove the validity of its actions.

In this case, the trademark owner has the right to apply to court in order to prohibit the unauthorised use of the trademark by its agent or representative.

Trademark infringement is typically determined by evaluating whether the use of a mark by a party without the consent of the trademark owner causes confusion or unfair competition. The specific criteria can vary by jurisdiction, but the following general factors are commonly assessed:

• Similarity of the marks: The degree of similarity between the alleged infringing mark and the registered trademark, including visual, phonetic and conceptual similarity. If the marks are sufficiently similar, this could lead to confusion among consumers.
• Similarity of goods or services: Whether the goods or services associated with the infringing mark are similar or related to those of the trademark owner. Even if the marks are similar, infringement is more likely if the goods or services are closely related.
• Likelihood of confusion: Whether there is a likelihood that consumers would be confused into thinking that the goods or services offered under the alleged infringing mark are related to or authorised by the trademark owner. This is often the most critical factor in trademark infringement cases.
• Market channels and consumer base: The distribution channels and the target audience of the goods or services. If both marks are used in similar market channels and appeal to the same consumer group, the likelihood of confusion increases.
• Actual confusion: Evidence of actual confusion in the marketplace, such as consumer complaints or surveys, may strengthen the case of infringement.
• Intent of the infringer: If the alleged infringer knowingly adopted a mark similar to an existing registered mark, this can be a factor in determining wilful infringement, which may lead to more severe penalties.
• Strength of the mark: The distinctiveness of the registered trademark plays a significant role. Strong, well-known marks (eg, Nike, Coca-Cola) are afforded broader protection and are less likely to tolerate infringement than weaker, less distinctive marks.

Wilful infringement is recognised in Armenia and arises where an offender intentionally uses a registered trademark without the permission of the trademark owner or a licensee.

According to Article 16 of the Trademark Law, the applicant’s actions will be considered wilful if:

• at the time of filing the application, the applicant knew or could have known about the existence of such a trademark; or
• for the purpose of trademark registration, the applicant has submitted false and unfounded documents and/or information without which registration of the trademark would not be possible.

A trademark owner must register its mark in Armenia to benefit from protection.

The first step that the owner of a registered trademark can undertake is to object to the registration of a conflicting mark once:

• an application for registration has been published by the Intellectual Property Office (IPO); and
• the substantive examination has started.

The second step is to appeal against a registration decision of the IPO by filing suit in administrative or civil proceedings.

In some cases, the trademark owner and the alleged infringer may apply for competition protection measures before the Competition Protection Commission – particularly in the case of:

• unfair competition;
• misleading use of trademarks; or
• unfair advertising practices.

In Armenia, the limitation period for bringing a trademark infringement claim is governed by the Civil Code. A claim must be brought within three years of the moment at which the trademark owner knew or should have known of the infringement.

There is no legislative requirement for the infringer to be notified before a claim is brought. However, in practice, disputes often begin with negotiations with the infringer; if such negotiations are unsuccessful, the dispute will then be brought before the court.

The procedural requirements for bringing a claim are set out in Article 121 of the Civil Procedure Code.

The following information must be included in the claim:

• the name of the court before which the claim is being filed;
• the plaintiff’s details, including:
• • its legal name;
  • the address of its place of registration (location);
  • its notification address (if different from the address of the place of registration);
  • where the plaintiff is a natural person, their passport data; and
  • where the plaintiff is a legal person:
  • • its state registration number;
    • the name and passport data of its representative; and
    • if the claim is filed by an official who has the right to do so, the name and position of that person;
• the details of the defendant, including:
• • its legal name; and
  • the address of its place of registration (legal person) or place of residence (natural person);
• in the case of any other parties to the case:
• • their legal name; and
  • the addresses of their place of registration (legal persons) or place of residence (natural persons);
• the facts on which the claim is based;
• in the case of a monetary claim, the disputed amount and the basis on which it was calculated;
• substantive requirements addressed to the defendant and, upon presentation of a claim to several defendants, the plaintiff’s claim (requirements) addressed to each; and
• a list of documents and evidence attached to the claim.

These are mandatory requirements where a claim is brought before the court in civil litigation.

The above list is not exhaustive and a claim can also include:

• the legal norms to be applied in relation to the disputed legal relationship;
• evidence confirming each fact underlying the claim, with an appropriate indication of which piece of evidence is aimed at confirming which fact;
• petitions of the plaintiff;
• actions taken in an attempt to resolve the dispute through reconciliation, including information about contacting the mediator;
• other information relevant to the consideration and resolution of the case;
• information about the means of electronic communication, with a request for notification by this means; and
• the phone number of the plaintiff or the plaintiff’s representative.

Where a claim is brought before the court within administrative proceedings, the applicable requirements are set out in Article 73 of the Administrative Procedure Code. The mandatory requirements are as follows:

• an indication that the claim is being filed with the administrative court;
• the plaintiff’s details, including:
• • its legal name;
  • the address of its place of registration (location);
  • its notification address (if different from the address of the place of registration);
  • where the plaintiff is a natural person, their passport data; and
  • where the plaintiff is a legal person:
  • • its state registration number;
    • the name and passport data of its representative; and
    • if the claim is filed by an official who has the right to do so, the name and position of that person;
• the details of the defendant, including:
• • its legal name; and
  • the address of its place of registration (legal person) or place of residence (natural person);
• a brief description of the essence of the claim;
• the facts on which the plaintiff’s claim is based;
• arguments substantiating the plaintiff’s claim;
• information on the appeal of an administrative act or the act or omission of an administrative body in a higher order;
• a list of written evidence, if any, attached to the claim; and
• the date on which the statement of claim was filed.

Again, this list is not exhaustive and a claim can also contain:

• other information which is significant for the consideration and examination of the case;
• the plaintiff’s petitions; and
• the contact details (phone and fax numbers and emails) of:
• • the plaintiff; and
  • other parties to the case.

Interim remedies are available in trademark litigation in Armenia.

According to Article 128(1) of the Civil Procedure Code, the court of first instance, at the petition of a person participating in the case or on its own initiative, in cases provided for by law, may apply measures to secure a claim if failure to take such measures could:

• make it impossible to execute or impede the execution of a judicial act;
• lead to a change in the actual or legal status of the property that is the subject of the dispute; or
• cause significant damage to the person filing the claim.

According to Article 129 of the Civil Procedure Code, the following interim remedies are available:

• seizure of property belonging to the defendant in the amount of the claim;
• a prohibition on the performance of certain actions by:
• • the defendant; and/or
  • other persons related to the subject of the dispute;
• an obligation for the defendant or other persons to undertake certain actions in relation to the subject of the dispute;
• suspension of the sale of property in the event of a claim for the lifting of the seizure of property;
• seizure of property belonging to the plaintiff that is held by the defendant; and
• other means of securing a claim provided for by law.

The court can order multiple interim remedies where it deems this necessary.

The list of interim remedies available in administrative litigation differs from that in civil proceedings. According to Article 91(1) of the Administrative Procedure Code, in the case of claims for obligation, performance of an action or recognition, the administrative court, at the request of a participant in the judicial proceedings, will take measures to secure the claim if failure to take such measures could:

• make it impossible or difficult to execute the judicial act;
• lead to a change in the actual or legal status of the property in dispute; or
• cause significant damage to the person that filed the petition.

According to Article 91(2) of the Administrative Procedure Code, the following interim remedies are available:

• temporary satisfaction of the plaintiff’s claim;
• a prohibition on the performance of certain actions by a party to the proceedings;
• the seizure of property (including cash) belonging to the defendant in the amount of the claim; and
• the temporary preservation or remediation of any situation.

In both administrative and civil litigation, the petition of interim remedies will be examined within two days.

Under Armenian procedural law, there are no provisions on security for costs and/or damages incurred by the other party

The Trademark Law contains no specific rules or provisions in this regard.

According to Article 141 of the Civil Code, information is considered an official, commercial or banking secret if:

• due to the fact that it is unknown to third parties, it has real or potential commercial value;
• it is not possible to freely obtain the information; and
• the person in possession of the information takes measures to ensure its confidentiality.

Such an obligation is also imposed on contracting parties that publish and/or use official, commercial or banking information in violation of a civil law or employment contract.

According to Article 24 of the Law on the Protection of Economic Competition, ‘unfair competition’ is considered to be any action or behaviour that leads to the receipt, use, disclosure or publication of undisclosed information without the consent of its rightful owner or in ways that are contrary to business practices, including:

• industrial or commercial espionage or coercion to commit such espionage;
• violation of a contract concerning undisclosed information or coercion to commit such violation;
• violation of secrecy or coercion to commit such violation; or
• acquisition of undisclosed information by a third party that knew or could have known that this would entail the performance of any of the above actions.

The Trademark Law contains no specific rules or provisions in this regard. While some disclosures may be limited if the information involves confidential business information, personal data (under privacy laws) or trade secrets, unless the court determines that disclosure is essential to the case, there are no specific regulations concerning trademarks․

The Trademark Law contains no specific rules or provisions in this regard. However, in Armenia, different types of intellectual property, such as trade secrets and knowhow, enjoy legal protection. As stipulated in the Law on Economic Competition, the violation of privilege constitutes unfair competition.

The procedures for collecting and presenting evidence in trademark infringement disputes are not specified in law. Thus, the general rules set out in the Civil Procedure Code and the Administrative Procedure Code will apply. The main mandatory requirements are the relevance, admissibility and reliability of the evidence.

According to Article 63 of the Civil Procedure Code, evidence and motions aimed at obtaining evidence must be submitted by the parties involved in the case.

A party to the case must, before the expiry of the deadline established by the decision on the allocation of the burden of proof, disclose and, if possible, provide to the court of first instance and the other parties to the case the evidence known to them at that time which will serve as the basis for proving their claims and objections. The court of first instance will accept additional evidence submitted by a party after the expiry of this deadline and grant a motion aimed at obtaining evidence if the submitting party can justify the impossibility of presenting such evidence or motion within the prescribed period due to reasons beyond its control.

According to Article 28 of the Administrative Procedure Code, a party must submit to the court all evidence in its possession or within its sphere of influence that substantiates its claims or objections. The party is not entitled to submit evidence that was not presented during the administrative proceedings, except where the party provides sufficient justification proving that it was objectively deprived of the opportunity to present such evidence during the administrative proceedings.

The administrative body must also submit all materials of the administrative proceedings, as well as all evidence in its possession or within its sphere of influence that substantiates the opposing party’s claims or objections, except for evidence that:

• the administrative body could become aware of solely through the opposing party; and
• the opposing party did not submit during the administrative proceedings.

To obtain evidence that is necessary for the resolution of the case, the court must take appropriate measures on its own initiative.

For the purpose of obtaining evidence, the court is authorised to issue a decision in the form of a separate judicial act:

• requesting such evidence from the participants in the proceedings, state and local self-government bodies (and their officials), as well as physical and legal third parties within whose sphere of influence the evidence is or should be; and
• setting a deadline for submitting the evidence to the court.

In administrative litigation, the following are accepted as evidence:

• witness testimony;
• expert opinions or testimony;
• written evidence; and
• physical evidence.

In civil litigation, the following are regarded as evidence:

• witness testimony;
• written evidence;
• physical evidence;
• photographs (photographic films), audio recordings and video recordings;
• expert opinions; and
• specialist explanations.

Expert opinions thus constitute permissible evidence. While the law is silent on survey evidence, this can still be recognised as permissible evidence:

• within the framework of a case; or
• by virtue of the form of its documentation.

This is possible only if the requirements on the relevance and admissibility of the evidence are met.

It is also necessary to take into account the differences in standards of evidence in civil and criminal proceedings.

In criminal proceedings, the following are considered evidence:

• the testimony of the detainee;
• the testimony of the accused;
• the testimony of the victim;
• the testimony of the witness;
• the expert’s conclusion;
• the expert’s opinion;
• the expert’s testimony;
• physical evidence;
• records of evidentiary and procedural actions; and
• extra-procedural documents.

In criminal proceedings, the standards of reasonable doubt and doubts in favour of the accused apply. In civil proceedings, the standard of the persuasiveness of evidence applies. This different approach allows for evidence collected within the framework of criminal proceedings which is considered insufficient for criminal proceedings to be used in civil proceedings, as the criteria for the sufficiency of evidence, based on the applicable standards, differ in these proceedings.

In civil proceedings, the standard of the credibility of evidence applies, whereby the court must be convinced that the statements of one party are more likely to be true than those of the other party.

According to Article 62(1) of the Civil Procedure Code, each party must prove the facts underlying its claims and objections and relevant to the resolution of the case, unless the code or other laws provide otherwise.

According to Article 29 of the Administrative Procedure Code, if, after examining all the evidence, any fact determining the outcome of the case remains unproven, the negative consequences are borne by the party bearing the burden of proving this fact.

The burden of proof rests with the following parties:

• in the case of a claim for challenge, the administrative body that adopted an interfering administrative act, in relation to facts that served as the basis for this act;
• upon a request for fulfilment of an obligation:
• • the administrative body, in relation to facts that served as the basis for refusal to accept the requested administrative act; or
  • an individual or legal entity, in relation to facts that justified the adoption of an administrative act favourable to that party;
• upon a request for the commission of an action:
• • an administrative body, in relation to facts that served as a basis for refusal to undertake the requested action or manifestation of inaction; or
  • an individual or legal entity, in relation to facts that are favourable to that party; and
• upon a request for recognition (claim for recognition):
• • a physical or legal person, in relation to facts confirming or denying the existence of a legal relationship;
  • the administrative body, in relation to facts denying the nullity of the administrative act; or
  • the administrative body, in relation to facts justifying the lawfulness of an intervening administrative act or any actions taken or inaction committed by the administrative body that no longer has legal force.

In Armenia, defendants facing trademark infringement claims have access to various defensive strategies based on the specific circumstances of each case. The most frequently employed defences include:

• Absence of consumer confusion – contending that the disputed marks or signs are sufficiently distinct to prevent consumer confusion.
• Challenge to trademark validity – disputing the legitimacy of the plaintiff's trademark registration on grounds such as descriptiveness, insufficient distinctiveness, or fraudulent registration.
• Trademark abandonment through non-use – Armenian trademark law permits cancellation of registered marks that lack genuine commercial use for a continuous 5-year period, which may serve as a defensive argument.
• Prior rights claim – demonstrating that the defendant possesses superior rights through earlier use or registration of the mark.
• Legitimate use of personal names or descriptive language – Armenian trademark legislation permits bona fide use of one's own name or descriptive terminology without constituting infringement.
• Authorized use defence – establishing that the trademark proprietor provided consent or acquiesced to the defendant's usage.

This is possible on the following grounds:

• The trademark serves as an indicator of the commercial origin of goods or services;
• The trademark has become a common name;
• The trademark may mislead consumers; or
• The trademark was registered in violation of the rights of others.

Yes, there is a specific ground on which an otherwise valid trademark may be deemed unenforceable against a defendant. If the owner of an earlier trademark has knowingly tolerated the use of a later registered trademark for five consecutive years, a claim or counterclaim may no longer be submitted to the court to invalidate the registration of the trademark, as long as the later mark was not registered for dishonest purposes.

Mediation or alternative dispute resolution is not mandatory and required by the court. However, the parties are free to:

• choose a form of alternative dispute resolution; or
• attempt to resolve the dispute through negotiations.

The Arbitration and Mediation Centre of Armenia offers professional mediation services to help parties resolve disputes outside of court.

The proceedings can be stayed in view of settlement discussions. From the moment at which the court confirms a settlement, the proceedings will be discontinued.

In administrative proceedings, the court will discontinue the proceedings at any stage of the case if:

• the dispute is not subject to examination by a court;
• the statutory limitation period for filing a claim has expired;
• there is a legally binding court decision on the same dispute between the same parties concerning the same subject matter and on the same grounds;
• a participant in the proceedings has died and the disputed legal relationship excludes legal succession;
• a legal entity participating in the proceedings has been dissolved;
• the plaintiff has withdrawn the claim, except for cases defined in Chapter 26 of the Administrative Procedure Code, where the examination of the case serves public or state interests;
• the dispute has been fully resolved on its merits;
• within one year of the decision to suspend the proceedings, the circumstances that served as the basis for suspension have not been eliminated (except for the grounds provided in Article 94(1) of the Administrative Procedure Code) and resumption of the proceedings under such conditions is impossible;
• grounds for rejecting the acceptance of the statement of claim, as provided by Article 80 of the Administrative Procedure Code, have been revealed; or
• the court has approved a settlement agreement concluded between the parties.

The court will issue a decision on the termination of the proceedings, which will also resolve the allocation of court costs between the parties to the proceedings.

In the event of discontinuation of the proceedings, the parties are prohibited from filing the same claim concerning the same subject matter on the same grounds before the administrative court, except where:

• the plaintiff has withdrawn the claim during the preparatory stage of the trial; or
• the proceedings have been terminated on the grounds provided for in Article 96(1) of the Administrative Procedure Code.

In civil proceedings, the court will discontinue the proceedings at any stage of the case if:

• the case is not subject to examination under civil procedural rules;
• a final court decision with legal force has been rendered on the same dispute between the same parties concerning the same subject matter and based on the same factual grounds, except for a decision to leave the claim (petition) without examination;
• there exists a payment order, an arbitral award or a decision by a financial system mediator which is binding on the parties and which was rendered in the same dispute between the same parties concerning the same subject matter and on the same factual grounds, except where:
• • the court refuses to issue an enforcement order for the execution of an arbitral award; or
  • a financial system mediator or a notary refuses to issue a decree for recovery of the amount due;
• following the death of the plaintiff or defendant, the disputed legal relationship excludes legal succession;
• the claim was filed against a defendant who died before the claim was brought;
• a legal entity participating in the case has been dissolved;
• the plaintiff or petitioner has withdrawn the claim;
• the dispute has been fully resolved on its merits;
• the court has approved a settlement agreement, including a settlement agreement concluded as a result of mediation;
• the parties have concluded a settlement agreement as a result of mediation, where they have stated that, without approval of the settlement agreement by the court, the proceedings will be terminated;
• the claim has been filed in violation of the requirements of Article 140(4) of the Administrative Procedure Code; or
• other grounds provided by law exist.

The parties must report the results of any settlement discussions, which will be considered by the court at a hearing. The court has the power to confirm or reject confirmation of a settlement between the parties. In civil proceedings, the court of first instance during the preliminary court session will determine whether:

• the plaintiff insists on its claims;
• the defendant fully or partially accepts the plaintiff’s claims; and
• the parties wish to conclude a settlement agreement or resolve the dispute through mediation, with clarification of the essence of mediation.

The court may assign between two and four hours for mediation if the likelihood of resolving the dispute through settlement is high.

If the parties refuse mediation, the case will be examined through the judicial procedure.

The public nature of the proceedings is one of the main principles of administrative and civil litigation. Moreover, the content of the decision will be published on the judiciary’s official website at datalex.am.

However, the court may conduct the hearings or part thereof behind closed doors either on its own initiative or at the request of a party where it deems this necessary in order to protect:

• the privacy of the parties, including commercial secrets;
• the interests of minors;
• the interests of justice;
• state security; or
• public order or morality.

In case of hearing a judicial proceeding or part thereof behind closed doors, the following persons have the right to be present:

• the court secretary;
• the parties involved in the case and their representatives;
• court officers; and
• if necessary, witnesses, experts, specialists and interpreters.

These individuals are warned by the court and confirm through their signatures the prohibition against disclosing legally protected confidential information and using it in violation of the established procedure.

If the judicial proceeding or part thereof is held behind closed doors, the final part of the final court decision will be published on the official website of the judiciary, except where this contains legally protected confidential information. The part of the final court decision that contains legally protected confidential information will be announced in a closed session (behind the closed doors).

Passing off is a civil tort that is relevant to the common law system. In Armenia, misleading actions that constitute passing off are regarded as trademark infringement. However, a report published on 29 June 2020 on the state of IP protection and enforcement contained no mention of the tort of passing off.

As passing off is regarded as trademark infringement, a trademark owner can sue for multiple infringements in the same action.

In general, trademark infringement and validity proceedings are handled separately. Trademark infringement proceedings are brought before the civil courts, while invalidity is dealt with in administrative proceedings.

The main steps in trademark proceedings are as follows:

• preparation and filing of a claim;
• notification of the defendant;
• preliminary hearing;
• exchange of evidence;
• the trial itself;
• the court’s decision; and
• appeal against the court’s decision.

The typical timeframe for trademark invalidity and infringement proceedings at first instance is 12 to 18 months, although it can be shorter or longer.

In Armenia, as in most countries, the courts have jurisdiction within their territory and their decisions usually do not have direct extraterritorial application. However, in certain cases – especially when it comes to the protection of intellectual property or other rights that are recognised internationally – courts may issue prohibitions that can then be recognised and applied in other jurisdictions through a process of international legal cooperation.

The decisions of the national courts may be directly related to earlier decisions (ie, precedents). Although the precedent system is not strictly mandatory in the Armenian legal system, in practice, judges can take previous decisions into account to ensure consistency and fairness.

The decisions of foreign courts do not have direct legal force in Armenia but can be used as background information or to illustrate international practice – especially in cases involving international law or treaties that Armenia has ratified.

The impact of decisions of international bodies such as the European Court of Human Rights (ECtHR) may be more significant, since Armenia is a member of the Council of Europe and recognises the jurisdiction of the ECtHR. Decisions of the ECtHR are binding and national courts must take them into account when making their decisions.

The following remedies are available in Armenia:

• cancellation of an invalid trademark registration;
• destruction of goods that have been illegally marked with the plaintiff’s trademark; and
• compensation for damages.

Punitive or enhanced damages are not allowed under Armenian law. The Armenian civil law system primarily focuses on compensatory damages, which aim to restore the injured party to the position it was in before the violation occurred. This compensation covers actual losses and lost profits but does not extend to punitive measures designed to punish the wrongdoer or deter future misconduct.

The factors that the court may consider when deciding on the quantum of damages may include:

• the scope of use of the trademarks;
• the level of similarity between the trademarks;
• the amount of sales lost by the plaintiff due to the infringement;
• the amount of sales made by the infringer under the infringing trademark; and
• other factors of significance to the particular case.

The list of factors that the court will consider is not specified by law and will be evaluated by the court on a case-by-case basis.

Decisions of state bodies – in particular, decisions of the Intellectual Property Office – may be appealed before the administrative courts.

Decisions of the administrative courts may be appealed before the Administrative Court of Appeal within one month before the decision enters into legal force. The grounds for appealing a judicial act are:

• violation or incorrect application of substantive law;
• violation or incorrect application of procedural law; or
• newly emerged or new circumstances.

Decisions of the Administrative Court of Appeal can be appealed before the Administrative Chamber of the Court of Cassation.

In civil proceedings, decisions of the first-instance civil courts of general jurisdiction may be appealed before the Civil Court of Appeal. Decisions of the Civil Court of Appeal may be appealed before the Civil Chamber of the Court of Cassation.

In both civil and administrative proceedings, to bring an appeal before the Court of Cassation, the appellant must demonstrate the existence of grounds for the admissibility of a cassation appeal. These grounds are as follows:

• The decision of the Court of Cassation on the issue raised may have essential significance for the uniform application of Armenian laws and other normative acts because:
• • in its decision, a lower court adopted a contradictory interpretation of a specific norm or provision;
  • the interpretation of any norm in the contested decision contradicts the interpretation of this norm by the Court of Cassation; or
  • in connection with a norm of substantive or procedural law applied by the court, there is a problem regarding the development of law.
• There has been an apparent fundamental violation of human rights and freedoms, because:
• • the lower court violated the norms of substantive or procedural law in handing down its decision; or
  • there are new or newly discovered circumstances.

Decisions of the Court of Cassation may be appealed before the apex court, the Constitutional Court. Anyone can apply to the Constitutional Court in a particular case if:

• a final decision has been issued;
• all local judicial remedies have been exhausted; and
• the normative legal act challenged in the appeal appears to be unconstitutional and violates the appellant’s fundamental rights and freedoms enshrined in Chapter 2 of the Constitution, also taking into account the interpretation given in practice to the relevant provision.

This is stipulated in Article 169(1)(8) of the Constitution.

The timeframe for filing an appeal at each level of appeal is one month.

An appeal against a judicial act resolving the case on the merits may be filed before the deadline set for that act to enter into legal force.

Participants that were not involved in the proceedings but whose rights and obligations are affected by a judicial act resolving the case on the merits have the right to file an appeal within three months of the date on which they became aware or could have become aware of the issuance of such a judicial act. However, such an appeal cannot be filed if 20 years have passed since the judicial act entered into legal force.

The state fees for litigation are set out in the Law on State Fees/Duties.

According to Article 9 of the law, where the plaintiff has made a financial request in its claim, the state fee is charged in the amount of 3% of the claim price, but:

• not less than six times the base fee; and
• not more than 25,000 times the base fee.

The state fee for filing a suit increases at each instance.

Other judicial costs can also be incurred during the litigation, such as:

• the mailing costs of the parties;
• the costs of obtaining expert opinions; and
• the costs of a translator.

In both civil and administrative proceedings, the court will decide on the allocation of judicial costs. Usually, the winning party is compensated for all costs.

Contingency fee arrangements are permitted in Armenia. In most instances, the parties bringing a claim/counterclaim also request the court to award compensation for contingency fees.

Other expenses related to case proceedings include:

• expenses related to expert examinations and translations;
• payments to witnesses, experts, specialists and translators;
• expenses incurred by the parties involved in the proceedings for:
• • travel to the location of the trial; and
  • temporary accommodation in connection with their appearance in court;
• reasonable attorneys’ fees associated with the case;
• expenses related to the examination of evidence at its location;
• postal expenses incurred by the parties involved in the proceedings;
• expenses of the parties involved in the proceedings related to the fulfilment of court requests and judicial assignments;
• costs for the preservation of physical evidence in accordance with Article 81 of the Civil Procedure Code;
• the arbitrator’s fees, including amounts paid by a party to the arbitrator for mandatory arbitration conducted prior to filing a court claim; and
• other expenses deemed necessary for the case proceedings by the court.

Contingency fees are paid by the party involved in the proceedings that has engaged the relevant lawyer, except in cases provided for by law.

The reasonable attorneys’ fees related to the case also include amounts paid or payable to law firms.

When determining the amount of compensation for expenses provided under the Article 107 of the Civil Procedure Code, the court will base its decision on the reasonable amount of expenses, which is determined taking into account:

• the volume of work performed by the lawyer;
• the complexity of the case;
• the average rates for legal services established by the Council of the Chamber of Advocate; and
• the ratio between:
• • the amount subject to recovery by the judicial act; and
  • the requested attorneys’ fees.

Third party litigation funding (TPLF) allows hedge funds and other financiers to invest in lawsuits in exchange for a percentage of any settlement or judgment. The practice started in Australia, expanded to Europe and the United States, and is now spreading elsewhere. Without disclosure requirements and other commonsense safeguards, these funders may take over litigation and fuel unmeritorious lawsuits.

TPLF is not yet regulated in Armenia. Although Armenian law does not prohibit TPLF, this is nonetheless rare.

Under Armenian law, legal protection is granted only to a registered trademark.

In the territory of Armenia, legal protection for a trademark is afforded based on:

• its registration in accordance with the procedure established by law;
• its recognition as well known in Armenia in accordance with the procedure established by law;
• its international registration in accordance with the Madrid Agreement or the Protocol to the Madrid Agreement; or
• its registration in accordance with the procedure established by the Eurasian Economic Union Treaty.

Unregistered trademarks benefit from legal protection in Armenia based on the principle of priority of use. This means that trademark rights may arise due to actual use in commercial activities, even if the trademark is not registered.

Such protection can be secured:

• through actions against unfair competition; or
• based on civil legislation – for example, by filing a claim for the protection of business reputation.

However:

• the degree of protection afforded to unregistered trademarks may be limited compared to that afforded to registered trademarks; and
• proving rights to an unregistered mark may be more difficult.

Measures to protect foreign trademarks not registered in Armenia may be applied in the following circumstances:

• International agreements: If Armenia is a party to an international treaty that provides for the protection of trademarks – such as the Paris Convention for the Protection of Industrial Property or the Agreement on the Trade Aspect of Intellectual Property Rights – foreign trademarks can enjoy protection on the basis of these agreements.
• Fame of the mark: A foreign trademark that is well known in accordance with the definition set out in international agreements can be protected regardless of whether it has been registered in Armenia.
• The principle of reciprocity: Some countries apply the principle of reciprocity, according to which they will afford protection to foreign trademarks if their country of origin affords similar protection to trademarks from Armenia.

In Armenia, a consistent practice has developed, with:

• disputes primarily relating to non-use of trademarks; and
• challenges to decisions of the Armenian IP Office on registrations or refusals.

As the trademark legislation is relatively new and no changes are expected, we believe that judicial practice will also remain stable.

It is recommended to keep a registered trademark in use to avoid the risks associated with non-use. Additionally, it is important to monitor the bulletin in which trademark registrations are published, as there is a limited period for filing objections after registration. Judicial practice has developed in a way that considers this matter strictly from the perspective of administrative acts.

To have the possibility to claim damages for use of a trademark, it is recommended to establish licensing agreements accordingly.