Civil and Administrative Court of Cassation of the Republic of Armenia on May 14, 2019; (Hereinafter the Court of Cassation) Case No. DD / 3317/05/17 referred to the issue of material and procedural time-limits for the recognition of a registered trademark as invalid.

Case facts brief:

On 26.07.2016 ‘’GUSTO DEL CAFFE ROBUSTA’’ trademark No. 24788 was registered under the name of "Violent" LLC by the Intellectual Property Agency of Armenia.
"Parisian Coffee Factor" LLC (hereinafter referred to as "the Company") on 18-04-2017 filed an administrative lawsuit against the Intellectual Property Agency for the abrogation of the registration of the trademark under the name of "Violent" LLC ‘’GUSTO DEL CAFFE ROBUSTA’’ No. 24788.
The Administrative Court and the Administrative Court of Appeal dismissed the application.

Legal grounds:

Pursuant to Article 72 (1) (1) of the RA Administrative Procedure Code, the claim may be filed with the administrative court in the case of a dispute within a two-month period from the entry into force of the administrative act.
Pursuant to Article 80 part 1 (6) of the RA Administrative Procedure Code, the administrative court rejects the application if the time-limits set out in the same code for the application have expired, and the administrative court rejected the motion to reinstate the terms.
Pursuant to Article 23 (1.1) of the RA Law on Trademarks, Part 1 of the same Article, a holder of a right to an earlier trademark… may submit a claim against a registered trademark from the date of publication of such in the Official Bulletin ... within 5 years.
That is, on the one hand there is a two-month procedural period, on the other hand the substantive law provides for a possibility of dispute within 5 years.
And so, for what timeframe should those who expect protection for possible violations of their rights be led?

Legal issues and findings of the Court of Cassation:

1) within what timeframe can a lawsuit be filed in an administrative court for a claim for a declaration of invalidity on the basis of Article 23 of the RA Law on Trademarks?

2) Whether the five-year period for filing a lawsuit preserved under the Article 23 (1.1) of the RA Law on Trademarks by itself (per se) be the basis for a claim? and whether it may serve as an unconditional basis for satisfying the plaintiff's motion to reinstate the term of 2 months period provided by the RA Administrative Procedure Code.

The Court of Cassation has found that the five-year time limit set by the Republic of Armenia Law on Trademarks is the maximum time limit within which the person concerned may apply to the court with a request to have the later registration of a trademark invalid.
In the Court of Cassation's assessment, there is no contradiction between the seemingly contradictory provisions of the RA Administrative Procedure Code and the RA Law on Trademark Laws seeking to declare a trademark registration invalid.
The two-month time limit set by the RA Administrative Procedure Code for filing a lawsuit and filing a trademark lawsuit with the five-year time limit set by the RA Law on Trademarks have a parallel application and do not contradict each other.

That is to say, a person who has missed the two-month time limit set forth in Article 72 (1) (1) of the RA Administrative Procedure Code is required to file a motion to reinstate the terms to take action based on the missed procedural time.

Moreover, the right of the five-year time-limit to appeal set by Article 23 (1.1) of the RA Law on Trademarks cannot serve by itself (per se) as a ground to reinstate the 2 moths procedural terms.
The abovementioned fact is only the minimum condition where the court is obliged to discuss the circumstances of the plaintiff's motion for restoring the missed trial terms in the manner prescribed by the RA Administrative Procedure Code and to decide whether the reason for missing the trial date is admissible or not.
It should be noted that in the present case, the Company has at the same time filed a motion to reinstate the missed trial terms of admissibility, which was rejected by both the Administrative Court and the Administrative Court of Appeal.

The Court of Cassation noted that in applying to court, the Company complied with the five-year time-limit set forth in Article 23, Section 1.1 of the RA Law on Trademark Law, to contest the registration of a trademark. However, the Company did not comply with the two-month deadline set forth in Article 72 (1) (1) of the RA Administrative Procedure Code for litigation. In such circumstances, the Company was required to file a motion for restitution of the right to act on the basis of missed procedural deadlines. This procedural obligation has been fulfilled by the Company.
Although the Company filed a motion, the Company nevertheless did not substantiate or prove in the motion that: (a) it was beyond its control to bring the case to court within a two-month period prescribed by the Administrative Procedure Code of the Republic of Armenia, (b) has filed a lawsuit against the trademark within two months of being notified of such trademark registration.
Summing up, the Court of Cassation concluded that the Company's motion to reinstate the missed the terms was subject to rejection, and the 5-year time-limit provided by Article 23 of the RA Law on Trademarks does not per se guarantee the right of a trial.
Therefore, the Company's Cassation Appeal has been rejected as well.

Our assessments:

The Court of Cassation stated in its decision that the right of the five-year time-limit for filing a lawsuit against a newer registered trademark pursuant to Article 23 (1.1) of the RA Law on Trademarks cannot in itself (per se) be an open ground for filing a litigation claim and to reinstate the expired procedural date.

That is, although the RA Law on Trademarks clearly stipulates that a Trademark registration may be declared invalid within 5 years after the date of publication of that mark in the Official Journal, the existence of a different procedural deadline (2 month period to fill a claim) requires by the applicant to substantiate why the claim was filed later than two months after registration and is still insufficient, the court may refuse to consider the case at all. This case is a proof that the right holder of a registered trademark is not entitled to a 5-year protection under the Trademark Law.
I believe that such applicability of the law first of all does not derive from the general concept of intellectual property rights and then unreasonably restricts the right of registered right holder of legal protection guaranteed by their Conventions and laws on the following grounds:

- Armenia has ratified the Paris Convention for the Protection of Industrial Property / The Convention has entered into force for the Republic of Armenia since December 25, 1991. /

Article 6bis of the Convention expressly states that "A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.’’
That is to say, the five-year term is a direct right under the Convention, and its application cannot be restricted by formal domestic procedural limits, especially given that the rules laid down in the Convention take precedence over domestic law…