HETQonline
A Successful Businessman and a Not-So-Successful Businessman Fight over the
Noy Trademark
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April 9, 2007
The Bjni Mineral Water Plant, owned by businessman and parliament member
Khachatur Sukiasyan, has produced Noy spring water since 1999, and in 2000
the Intellectual Property Agency (IPA) of Armenia registered its trademark
for producing mineral water in accordance with Class 32 of the International
Classification of Goods and Services (ICGS) . Before that, in November 1998,
Gagik Sargsyan, president of the Firma Noy Cooperative, registered the Noy
trademark with the Patent Department and on March 23, 2000 the IPA
registered his property right to the Firma Noy combined trademark. In order
to start production he was awarded a number of ICGS classes including Class
32, under which, according to the president of Firma Noy Cooperative, he
produced syrup.
On March 24, 2005 Bjni Mineral Water Plant, cjsc informed the Intellectual
Property Agency that the Noy trademark had been registered for five years
and since the trademark proprietor hadn’t used it continuously for five
years it asked the agency to suspend the usage of the trademark for combined
production under the name Firma Noy because of disuse.
In a July 8, 2005 decision, the Board of Appeal of the IPA complied in part
with the request of the Bjni Mineral Water Plant and prematurely terminated
the effectiveness of the registration (certificate #4,971) of the combined
trademark given to Firma Noy in accordance with ICGS Classes 16, 21, 22, 29,
30, 32, 33 and 35. The Board of Appeal of the IPA stated that Firma Noy had
presented as an argument only a lottery ticket which proved only the usage
of goods under Class 41 and could not be considered proof for using goods
under other classes. The Board of Appeal revoked nine classifications from
Firma Noy allowing it to use only class 41.
On February 1, 2006, the Intellectual Property Agency registered the
property rights of the Bjni Mineral Water Plant to the Noy trademark in
accordance with seven ICGS classes – 16, 21, 22, 29, 30, 32, 35. By allowing
Firma Noy to use class 41 the agency acknowledged that Firma Noy did operate
under at least one class and allowed it to use the name Noy. Firma Noy was
granted the trademark for a period of ten years up to November 12, 2008
after which the term can be extended if the owner continues to operate.
"The argument by Bjni Mineral Water Plant that we haven’t used the trademark
for five years does not correspond to reality since we used it under all
classes. I have a stamp with the imprint of the Noy trademark, we have
operated in a variety of ways – we issued lottery tickets, and engaged in
advertising and publishing activity using the trademark," said Firma Noy’s
director. According to Gagik Sargsyan, they had been producing syrup under
Class 32 but later on halted the production to improve the quality of the
syrup. He showed us samples of plastic bottles that they produced in 2002.
When asked why he didn’t complain five years ago when Bjni was producing
spring water under the trademark with the same Class 32, Gagik Sargsyan
responded: "I was not concerned about the usage of my trademark because I
knew that the production of Bjni was not licensed and my property right to
the trademark was protected by the law."
Disputing the decision to revoke the classes of goods, Firma Noy brought an
action against the Intellectual Property Agency in the Economic Court on
January 8, 2006 requesting that the July 8, 2005 decision by the IPA Board
of Appeal on the Bjni Mineral Plant be reversed. "If we used the trademark
just once over the last five years it means we’ve been using it," Sargsyan
maintained. His lawyer, Vardan Safaryan, believes that the decision by the
Board of Appeal was adopted with violations of the law and the by-laws of
the Board.
The lawyer insists that the trademark owner used it many times – producing
syrup, advertising on TV and through other means. He also used the trademark
on labels of the goods he produced. In particular, in 2001 the Firma Noy
president was granted by the Ministry of Finance and Economy a license to
produce all kinds of foodstuffs. He was also granted by the Ministry of
Justice a license for printing. "We presented the IPA with all this but they
didn’t consider it," Sargsyan said.
Bjni, cjsc argued in the court that apart from the lottery tickets Sargsyan
had not present to the Board of Appeal any other proof, that the bottles had
been presented without labels and did not show that he produced any goods
using these bottles and sold them in stores. The agency shares this opinion:
"The plastic bottle alone cannot be viewed as valid proof of using the
trademark." It concerned also other types of activity – advertisement,
printing, etc.
"He only used one class of goods or services – organization of a lottery –
and I didn’t appeal in connection with that. He doesn’t use other classes
but wants to keep them for himself and prevent others from using them. After
all, the law sets the five-year term for using the trademark to exclude any
unfair competition. If Gagik Sargsyan had an intention to have a place in
the market he would have done that between 1998 and 2005," said the
executive director of the Bjni Mineral Water Plant, Sayad Hovhanisyan said.
Today Noy is one of the fifteen best-known trademarks in our country. The
Bjni Mineral Water Plant has used the name Noy since 1999 – producing Noy
spring water under the Class 32 granted to it only for the spring water.
Grand Tobacco Company produces Noy cigarettes under Class 34. Class 33
envisaged for alcoholic beverages is used by the Yerevan Wine and Cognac
Factory whose owner, parliament member Gagik Tsarukyan, produces cognac
under the name Noy. Sayad Hovhannisyan of the Bjni plant believes that none
of these companies have contributed to making the Noy trademark as well
known as his company did. "In 2004 we appealed to the World Intellectual
Property Organization (WIPO) for an international registration to be able to
operate all over the world. We can use the trademark on the grounds of being
well known and make Firma Noy’s registration invalid. We have this right
under Article 6 Bis of the Paris Convention for the Protection of Industrial
Property of December 25, 1991, which states: ‘The countries of the Union
undertake, ex officio if their legislation so permits, or at the request of
an interested party, to refuse or to cancel the registration, and to
prohibit the use, of a trademark which constitutes a reproduction, an
imitation, or a translation, liable to create confusion, of a mark
considered by the competent authority of the country of registration or use
to be well known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for identical or
similar goods. These provisions shall also apply when the essential part of
the mark constitutes a reproduction of any such well-known mark or an
imitation liable to create confusion therewith,’" Sayad Hovhannisyan
explained.
The Noy trademark has been well known in Armenia since 2000 but the IPA
registered this fact in January 2006. The significance of being well known
is that the law doesn’t set a term for using such a type of the trademark
and besides it is protected from unfair competition. We learned from the
Intellectual Property Agency that in 2006 usage of 24 trademarks was
terminated prematurely and another 15 trademark owners terminated their
usage voluntarily since they registered the trademarks but hadn’t used them
continuously for three years as required by the law. The agency has
submitted amendments to the existing legislation to the National Assembly to
replace the 3-year-term for terminating prematurely the trademark for not
being used with a 5-year-term as in other countries. The agency maintains
that registering and later on selling a trademark has not become a business
activity in Armenia yet though there have been such cases.
Sara Petrosyan