Laws
The law of the Republic of Armenia on trademarks
Chapter 5: Assignment of rights to a trademark
Article 26. Assignment of Rights to a Registered or Claimed Trademark1. Rights to a registered or claimed trademark may, in whole or partially, be assigned to a third party through a contract or by way of succession irrespective of transfer of rights in legal entity, which is the right holder.
2. Rights to a registered or claimed trademark may be assigned in respect of all or part of the goods and/or services for which it is registered or has been claimed for.
3. The new legal status of the trademark resulting from the assignment of right to a registered or claimed trademark shall become effective with respect to third parties on the date of making relevant entry in the State Register or in the trademark database .
4. For the purpose of registration the assignment of rights to a trademark, one of the parties performing the assignment shall submit the following to the State Authorised Body:
(1) a request for registration to the assignment of rights;
(2) a document certifying the assignment of rights;
(3) the receipt for payment of the state fee established by law;
(4) the document certifying the authorisation of the representative (if any).
5. The State Authorised Body shall, within a period of one month following the receiving of the receipt pursuant to paragraph 4 of this Article, carry out their examination and, provided that they meet the requirements of this Law, shall enter the assignment of rights in the State Register or in the trademark database.
6. The State Authorised Body shall refuse registration of the assignment of rights where it is clear that because of the assignment the trademark is likely to mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered, with the exception of cases, where the assignee of rights agrees to restrict the registration of the trademark in respect of goods and/or services for which there is no risk for misleading.
7. Where a trademark is, without the authorisation of the proprietor, registered in the name of the agent or representative of the proprietor of that trademark or in the name of any other person in a country which is a party to the Paris Convention, the proprietor shall be entitled to demand the assignment of the rights in his/her favour, with the exception of cases, if such agent or representative or other person proves the lawfulness of his action.
8. The information relating to the assignment of the rights to a registered trademark shall be published in the “Industrial Property” official bulletin.
9. The parties to the assignment of the rights to a trademark or third parties may dispute the decisions of the State Authorised Body provided by paragraph 5 of this Article before the Board of Appeals within a period of three months following the date of publication.
Article 27. Granting of a Licence
1. The proprietor of a trademark (licensor) may, under a licensing contract, permit any other person (licensee) to use the trademark with respect to all or part of the goods and/or services for which it is registered.
2.The license may be;
(1) exclusive when it is granted to only one licensee and excludes the use of a trademark by the proprietor and granting the license to third parties;
(2) non-exclusive if it does not exclude the use of a trademark by the proprietor and granting the license to third parties;
(3) unique if it is granted to only one licensee which excludes granting the license to third parties but does not exclude the use of the trademark by the proprietor.
3. The licence shall be registered in the state register upon submission by one of the parties to the licensing contract of the following documents to the State Authorised Body:
(1) a request for registration the licence;
(2) the license contract, an extract from the licence contract or a declaration on licence signed by the licensor and the licensee;
(3) the receipt for payment of the state fee established by law;
(4) the document certifying the authorisation of the representative (if any);
4. The license contract, an extract from the licence contract and the declaration on licence must contain the following data:
(1) surname, forename (name) and the seat (address) of the licensor;
(2) surname, forename (name) and the seat (address) of the licensee;
(3) registration number of the trademark for which the licence is granted;
(4) type of the licence;
(5) the list of the goods and/or services for which the licence is granted;
(6) duration of the licence;
(7) the territory of licence validity.
5. The State Authorised Body shall, within a period of one month following the receiving of the receipt pursuant to paragraph 3 of this Article, carry out their examination and, provided that they meet the requirements of this Article, shall enter the registration of the licence in the State Register.
6. The licence shall become effective in respect of third parties from the date of its registration in the State Register. The information on the registered licence shall be published in the “Industrial Property” official bulletin.
7. The proprietor of the trademark may present a claim in accordance with Article 12 of this Law in respect of a licensee who has breached any of the provisions of the licence contract.
8. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of the trademark only if its proprietor consents thereto. In the case of exclusive licence the licensee may file such a claim if the licensor of the trademark, after receiving the notification, does not file the appropriate claim within a reasonable time.
9. A licensee shall, for the purpose of obtaining compensation for damages, be entitled to be a party in the proceedings on protection of rights brought by the proprietor of the trademark.
10. Subsequent corrections to the terms of licensing contract specified in paragraph 4 of this Law, as well as the declaration of revocation of the licence shall be entered in the State Register upon submission by one of the parties to the licensing contract of the following documents to the State Authorised Body:
(1) a request on registration the changes in license or the declaration of revocation;
(2) a document certifying the changes of the licence or its declaration of revocation, or a declaration on changes of the licence or its revocation, signed by the licensor and the licensee.
11. The blank forms of the requests specified in this Article, the order of their completion, submission and consideration shall be defined by the Government of the Republic of Armenia.
12. The requests provided by this Article may not be refused before the applicant has been given the opportunity to present facts for registration of the licence or its amendment.
13. The State Authorised Body may request relevant evidence if any denotations in the requests or authenticity of documents submitted in accordance with this Article, raises reasonable doubts.
14. The provisions of this Article shall apply mutatis mutandis to sub-licences and, in cases provided for by law, to franchising.
Article 28. The rights on Pledging to a Trademark and Ban Thereof
1. Rights to a trademark may, in accordance with the order established by law, be guaranteed (pledge) or banned (temporary limitation of the rights to use, possess and alienate).
2. Being notified by the relevant competent authority on pledging the trademark or its ban, the State Authorised Body shall enter the relevant data in the State Register and publish information thereon in "Industrial Property” official bulletin.
