On May 14, 2019, the Civil and Administrative Chamber of the Court of Cassation of the Republic of Armenia (hereinafter referred to as the Court of Cassation) addressed the issue of the material and procedural deadlines established for declaring a registered trademark invalid in Administrative Case No. VD/3317/05/17.
Brief facts of the case.
- On July 26, 2016, the Intellectual Property Agency registered the trademark GUSTO DEL CAFFE ROBUSTA under No. 24788 in the name of "Violent" LLC.
- On April 18, 2017, "Parisian Coffee Factory" LLC (hereinafter referred to as the Company) filed a lawsuit in the administrative court against the Intellectual Property Agency regarding the demand to declare the registration of the trademark GUSTO DEL CAFFE ROBUSTA No. 24788 in the name of "Violent" LLC invalid.
- The administrative court and the Administrative Court of Appeal rejected the acceptance of the submitted claim.
Legal grounds.
- According to the first part of Article 72, point 1 of the Administrative Procedure Code of the Republic of Armenia, a claim can be submitted to the administrative court within a two-month period from the moment the administrative act comes into force in the case of a dispute.
- According to the sixth point of the first part of Article 80 of the Administrative Procedure Code of the Republic of Armenia, the administrative court rejects the acceptance of the claim if the deadlines established by the same code for submitting a claim have expired, and the request for restoring the deadlines has been rejected by the administrative court.
- According to the first part of Article 23.1 of the Law of the Republic of Armenia on Trademarks, a claim can be submitted by a person who holds rights to an earlier trademark or another right mentioned in the same part within 5 years from the date of publication of information about the registration of the trademark in the official bulletin "Industrial Property".
That is, on one hand, there is a procedural deadline of 2 months, and on the other hand, the material legal norm establishes the possibility of contesting within 5 years.
Thus, which deadline should individuals expecting protection of their rights against possible violations follow?
Legal questions and conclusions of the Court of Cassation.
1) What deadlines can be followed to submit a claim to the administrative court regarding the invalidation of the trademark registration based on the material legal grounds established by Article 23 of the Law on Trademarks of the Republic of Armenia?
2) Can the fact that the 5-year deadline established by Article 23.1 of the Law on Trademarks of the Republic of Armenia has been preserved serve as a basis (per se) for satisfying the applicant's request to restore the missed procedural deadline for submitting a contestation claim? The Court of Cassation found that the 5-year deadline established by the Law on Trademarks of the Republic of Armenia for submitting a claim to the court to contest the trademark registration is the maximum time limit within which an interested person can apply to the court with a request to declare the trademark registration invalid.
According to the Court of Cassation, there is no actual contradiction between the seemingly contradictory provisions established by the Administrative Procedure Code of the Republic of Armenia and the Law on Trademarks of the Republic of Armenia regarding the deadlines for submitting a claim to contest the trademark registration.
The two-month deadline for submitting a contestation claim established by the Administrative Procedure Code of the Republic of Armenia and the 5-year deadline for submitting a claim to contest the trademark registration established by the Law on Trademarks of the Republic of Armenia are applied in parallel and do not contradict each other:
That is, a person who has missed the two-month deadline established by point 1 of the first part of Article 72 of the Administrative Procedure Code of the Republic of Armenia is obliged to submit a request to restore the right to perform actions due to the missed procedural deadlines.
Moreover, the fact that the 5-year deadline established by Article 23.1 of the Law on Trademarks of the Republic of Armenia has been preserved cannot, in itself (per se), serve as a basis for satisfying the applicant's request to restore the missed procedural deadline for submitting a contestation claim. This fact is merely the minimum condition under which the court is obliged to consider the circumstances underlying the applicant's request to restore the missed procedural deadline in accordance with the procedure established by the Administrative Procedure Code of the Republic of Armenia and to determine whether the reason for missing the procedural deadline is justified or not.
It should be noted that in this case, the Company simultaneously submitted a request to consider the missed procedural deadline as justified, which was rejected by both the Administrative Court and the Administrative Court of Appeal.
That is, the Company was obliged to preserve both the 5-year deadline for submitting a claim to contest the trademark registration established by Article 23.1 of the Law on Trademarks of the Republic of Armenia and the two-month deadline for submitting a contestation claim established by point 1 of the first part of Article 72 of the Administrative Procedure Code of the Republic of Armenia, and in the case of missing that two-month procedural deadline, to submit a request for its restoration, and the examination of the case would only take place after the court satisfied that request.
The Court of Cassation noted that when applying to the court, the Company preserved the 5-year deadline for submitting a claim to contest the trademark registration established by Article 23.1 of the Law on Trademarks of the Republic of Armenia. However, the Company did not preserve the two-month deadline for submitting a contestation claim established by point 1 of the first part of Article 72 of the Administrative Procedure Code of the Republic of Armenia. In such circumstances, the Company was obliged to submit a request to restore the right to perform actions due to the missed procedural deadlines; this procedural obligation was fulfilled by the Company.
Although the Company submitted a request, it did not substantiate or prove in any way in the request that (a) it took all reasonable and sufficient measures to apply to the court within the two-month deadline established by the Administrative Procedure Code of the Republic of Armenia, but missed that procedural deadline for reasons beyond its control, or (b) it applied to the court within two months after learning about the registration of the contested administrative act, the trademark registration in the name of "Violent" LLC under No. 24788 on July 26, 2016.
In summary, the Court of Cassation concluded that the request submitted by the Company to restore the missed procedural deadline was subject to rejection, which led to the rejection of the Company's claim, and the 5-year deadline established by Article 23 of the Law on Trademarks of the Republic of Armenia does not guarantee the opportunity for judicial review.
Therefore, the Company's cassation appeal was rejected, and the dispute will not be examined in the judicial system of the Republic of Armenia.
Our assessment.
The Court of Cassation stated in its decision that the fact that the 5-year deadline for submitting a claim to contest the trademark registration established by Article 23.1 of the Law on Trademarks of the Republic of Armenia has been preserved cannot, in itself (per se), serve as a basis for satisfying the applicant's request to restore the missed procedural deadline for submitting a contestation claim.
That is, although the Law on Trademarks of the Republic of Armenia clearly states that a trademark registration can be declared invalid as a result of the examination of the relevant claim submitted to the court within 5 years from the date of publication of that trademark in the official bulletin, the existence of other procedural deadlines requires the applicant to first justify why the claim was submitted 2 months after the registration, and even that is not sufficient; the court may refuse to examine the case altogether if it considers the missed two-month deadline to be unjustified. This case is evidence of the fact that the owner of a registered trademark is not given the opportunity to benefit from the 5-year protection of their rights established by the Law on Trademarks.
I believe that such applicability of the law primarily does not align with the general concept of intellectual property rights and subsequently unjustifiably restricts the judicial protection rights of individuals with registered rights guaranteed by conventions and laws on the following grounds.
Armenia has ratified the Paris Convention for the Protection of Industrial Property (the Convention has been in force for the Republic of Armenia since December 25, 1991):
Article 6 bis of the Convention directly states that "a period of not less than five years is granted for the submission of a request for the cancellation of the mark, which is calculated from the date of registration of the mark."
Thus, the five-year period is a direct right under the Convention and cannot be limited by domestic formal procedural deadlines, especially considering that the norms established by the Convention have supremacy over domestic legislation...