Trade Marks & Copyright 2025

Definitive global law guides offering comparative analysis from top-ranked lawyers

CHAMBERS GLOBAL PRACTICE GUIDES

Definitive global law guides offering comparative analysis from top-ranked lawyers

Contributing Editors Dale Cendali and Joshua L. Simmons Kirkland & Ellis LLP

Global Practice Guides

Trade Marks & Copyright

Contributing Editors Dale Cendali and Joshua L. Simmons Kirkland & Ellis LLP

2025

Chambers Global Practice Guides For more than 20 years, Chambers Global Guides have ranked lawyers and law firms across the world. Chambers now offer clients a new series of Global Practice Guides, which contain practical guidance on doing legal business in key jurisdictions. We use our knowledge of the world’s best lawyers to select leading law firms in each jurisdiction to write the ‘Law & Practice’ sections. In addition, the ‘Trends & Developments’ sections analyse trends and developments in local legal markets. Disclaimer: The information in this guide is provided for general reference only, not as specific legal advice. Views expressed by the authors are not necessarily the views of the law firms in which they practise. For specific legal advice, a lawyer should be consulted. GPG Director Katie Burrington Content Management Director Claire Oxborrow Content Manager Jonathan Mendelowitz Senior Content Reviewer Sally McGonigal, Ethne Withers, Deborah Sinclair and Stephen Dinkeldein Content Reviewers Vivienne Button, Lawrence Garrett, Sean Marshall, Marianne Page, Heather Palomino and Adrian Ciechacki Content Coordination Manager Nancy Laidler Senior Content Coordinators Carla Cagnina and Delicia Tasinda Content Coordinator Hannah Leinmüller Head of Production Jasper John Production Coordinator Genevieve Sibayan

Published by Chambers and Partners 165 Fleet Street London EC4A 2AE Tel +44 20 7606 8844 Fax +44 20 7831 5662 Web www.chambers.com

Contents

INTRODUCTION Contributed by Dale Cendali, Joshua Simmons and Dana DeVlieger, Kirkland & Ellis LLP p.5

ISRAEL Law and Practice p.209

Contributed by Reinhold Cohn Group Trends and Developments p.236 Contributed by Sanford T Colb & Co ITALY Trends and Developments p.240 Contributed by Spheriens

ARMENIA Law and Practice p.10 Contributed by Concern Dialog BANGLADESH Trends and Developments p.29 Contributed by H&H Company

JAPAN Trends and Developments p.248 Contributed by Nagashima Ohno & Tsunematsu

CANADA Law and Practice p.33 Contributed by Cassels Brock & Blackwell LLP

LUXEMBOURG Law and Practice p.257 Contributed by Elvinger Hoss Prussen

CHINA Law and Practice p.59 Contributed by CCPIT Patent and Trademark Law Office Trends and Developments p.83 Contributed by Jingtian & Gongcheng COSTA RICA Law and Practice p.92 Contributed by Zurcher, Odio & Raven

MALAYSIA Law and Practice p.284

Contributed by LAW Partnership Trends and Developments p.311 Contributed by LAW Partnership

MEXICO Law and Practice p.318

Contributed by BC&B Law & Business Trends and Developments p.344 Contributed by BC&B Law & Business NETHERLANDS Law and Practice p.354 Contributed by Greenberg Traurig, LLP Trends and Developments p.373 Contributed by Greenberg Traurig, LLP

FRANCE Law and Practice p.116

Contributed by Cabinet Bouchara Trends and Developments p.138 Contributed by Fiducial Legal By Lamy GERMANY Law and Practice p.144 Contributed by SZA Schilling, Zutt & Anschütz Trends and Developments p.164 Contributed by SZA Schilling, Zutt & Anschütz INDIA Law and Practice p.171 Contributed by Anand and Anand Advocates Trends and Developments p.204 Contributed by Anand and Anand Advocates

NORWAY Law and Practice p.379 Contributed by Advokatfirmaet Thommessen AS Trends and Developments p.399 Contributed by Advokatfirmaet Thommessen AS

PAKISTAN Law and Practice p.405 Contributed by Ali & Associates

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Contents

PHILIPPINES Law and Practice p.433

SWITZERLAND Law and Practice p.625 Contributed by MLL Legal TÜRKIYE Law and Practice p.656 Contributed by Ankara Patent UKRAINE Law and Practice p.679 Contributed by Mamunya IP Trends and Developments p.709 Contributed by Mamunya IP

Contributed by Villaraza & Angangco Trends and Developments p.464 Contributed by Villaraza & Angangco PORTUGAL Law and Practice p.473 Contributed by SÉRVULO Trends and Developments p.495 Contributed by SÉRVULO

SERBIA Trends and Developments p.501 Contributed by Mikijelj, Janković & Bogdanović

USA Law and Practice p.717 Contributed by DLA Piper LLP Trends and Developments p.749 Contributed by Young Conaway Stargatt & Taylor, LLP USA – NEW YORK Trends and Developments p.755 Contributed by Cowan, DeBaets, Abrahams & Sheppard LLP

SINGAPORE Law and Practice p.505 Contributed by Drew & Napier LLC SOUTH AFRICA Law and Practice p.533 Contributed by KISCH IP Trends and Developments p.562 Contributed by KISCH IP SOUTH KOREA Law and Practice p.569 Contributed by Yoon & Yang LLC

USA – TEXAS Trends and Developments p.762 Contributed by Baker McKenzie

SPAIN Law and Practice p.596

Contributed by Arochi & Lindner Trends and Developments p.619 Contributed by Arochi & Lindner

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INTRODUCTION

Contributed by: Dale Cendali, Joshua Simmons and Dana DeVlieger, Kirkland & Ellis LLP

Kirkland & Ellis LLP is one of the world’s lead - ing law firms, with approximately 2,500 lawyers practising from 14 offices in the United States, Europe and Asia. The firm’s clients and expe - rience cut across every major industry and

discipline. Clients across the globe call upon Kirkland to handle their most important and complex corporate, litigation, intellectual prop - erty and restructuring matters.

Contributing Editors

Dale Cendali is the firm-wide head of Kirkland & Ellis’s copyright and trade mark practice group. Chambers and Partners has repeatedly named Dale as a Star Individual in the

Joshua Simmons is a nationally recognised appellate and trial court litigator in the USA. He has won every kind of IP litigation and related commercial disputes. In addition to his practice at Kirkland & Ellis, Josh hosts PLI’s IP Discussions with Joshua Simmons, and frequently speaks about and authors numerous articles on emerging IP trends. He is an active member of the Bar, serving as an officer and council member for the ABA IP Law Section, and chairing INTA’s Internet Global Policy Subcommittee and previously sitting on its Online Counterfeiting Task Force.

field and ranked her in Band 1 for Intellectual Property: Trademark, Copyright & Trade Secrets as well as for Media & Entertainment: Litigation. Dale is a leader in the Bar, having served as counsel to the board of INTA, chairing numerous committees and serving on the Council to the ABA’s IP Litigation Section. Dale is a prolific writer, speaker and long-time adjunct professor at Harvard Law School, where she teaches copyright and trade mark litigation. Co-Author

Dana DeVlieger is an associate in Kirkland & Ellis’s copyright, trade mark, internet and advertising litigation group. Her practice includes copyright, trade mark and trade secret litigation in

federal courts, as well as trade mark disputes before the Trademark Trial and Appeal Board. Dana holds a PhD in music theory and her academic research focuses on the use of music analysis in copyright litigation. She frequently presents on music and copyright law and has served as a guest lecturer in undergraduate, graduate and law school classes.

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INTRODUCTION Contributed by: Dale Cendali, Joshua Simmons and Dana DeVlieger, Kirkland & Ellis LLP

Kirkland & Ellis LLP 601 Lexington Avenue

New York NY 10022 USA

Tel: +1 212 336 4800 Fax: +1 212 446 4900 Web: www.kirkland.com

In the wake of the landmark US Supreme Court decisions Warhol v Goldsmith and Jack Daniels v VIP Products, both decided in 2023, 2024 pro - vided courts and practitioners across the world with the opportunity to grapple with the practi - cal applications of these decisions. In addition, 2024 brought its own landmark copyright and trade mark rulings in the EU, including deci - sions defining the parameters of the referential trade mark use exception and articulating the standard governing the scope of protection for works of applied art. Perhaps the most intrigu - ing developments in copyright and trade mark law in 2024, however, came from the govern - ment reports, changes in law, clarifying judicial decisions, and revisions to practice standards dedicated to untangling the interaction between technological innovation and intellectual prop - erty, including the challenges and opportunities presented by generative AI and the metaverse. Interaction Between Innovation and IP Challenges and opportunities posed by generative AI The continued development of generative AI, which uses machine learning to generate con - tent, presents a number of challenges and oppor - tunities for copyright and trade mark law. On 1 August 2024, the EU’s AI Act came into effect. Implementation of the regulations contained in the Act began in February 2025. In the absence

of court decisions or statutes definitively ruling on the use of AI, other countries, like the US, are left to speculate about the effects of generative AI on derivative works and trade mark infringe - ment. Still other countries, like Japan, have com - missioned reports on the infringement risks and have drafted guidelines for the use of AI. While the practical effects of these statutes, writings, reports and guidelines are yet to be determined, it is worth taking a look at different approaches and concerns in the field of generative AI. The EU The EU AI Act took effect in August 2024, although the limitations and rules it contains did not begin to apply until 2025. The Act incorpo - rates the exceptions and limitations on the use of copyrighted works for the purposes of text and data mining (TDM) first articulated in EU Directive 2019/790. This Directive provided a mandatory exception “to the exclusive right of reproduction and to the right to prevent extrac - tion from a database” for universities, cultural heritage institutions, public-private partnerships with private sector research organisations, and other research organisations, when copyrighted works are used lawfully. Recital 105 of the EU AI Act allows copyright holders to “reserve their rights over their works or other subject mat - ter to prevent text and data mining” where the TDM is not done as part of scientific research.

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INTRODUCTION Contributed by: Dale Cendali, Joshua Simmons and Dana DeVlieger, Kirkland & Ellis LLP

If the copyright holder opts out “in an appropri - ate manner”, then researchers need to obtain permission to use the work for TDM. At this point, it is unclear what constitutes opting out “in an appropriate manner”, but organisations like Pictoright (Netherlands) and Sacem (France) have issued public statements that use of their members’ works for TDM purposes requires prior authorisation. The use of such statements is expected to increase as the provisions of the Act take effect. In addition to implementing measures to avoid infringement, there are other considerations worth keeping in mind for AI developers, includ - ing: • getting legal access to the copyrighted con - tent used as training data; • checking for the existence of opt-out state - ments; • creating agreements with dataset owners and AI customers to divide liability for infringe - ment; and • limiting the use of training data content for other infringing purposes. Japan In Japan, as in much of the world, there have not been many laws or regulations passed or any judicial decisions regarding generative AI, although Japan did incorporate a TDM excep - tion in Article 30(4) of its Copyright Law in 2018. As AI capabilities have increased, this excep - tion has become increasingly relevant and Japan has responded by commissioning non-binding reports and guidelines addressing the challeng - es that generative AI presents for copyright law. The first such report is the “Report on AI and Copyright Issues”, published on 15 March 2024 by the Legal System Subcommittee of the Cul -

tural Council of Japan. It addresses three main topics: first, the risk of copyright infringement during the development of generative AI models; second, the risk of copyright infringement when using generative AI models; and third, the gov - erning law that applies to copyright infringement regarding generative AI. Infringement risk in development : While the Copyright Act of Japan does not have a gen - eralised fair use defence, it does have the Non- Enjoyment Purpose Requirement, which allows for use of a copyrighted work in any way where the purpose is not for the user to enjoy the work. The use cannot, however, unreasonably preju - dice the copyright holder’s interests. The test for whether a copyright holder’s interests are unrea - sonably prejudiced is whether the use conflicts with or hinders the market for the copyrighted work. The report addressed scenarios in which use of copyrighted works in the development of generative AI models hinders the market of the copyrighted work. The remedies for copyright infringement in the development of generative AI are injunctive relief and monetary damages. Infringement risk in use : Evaluation for copyright infringement in Japan is the same for AI out - puts as for traditional works – the infringing work must be similar to the copyrighted work and the infringing work must have relied on the copy - righted work. The report addresses two ways that an AI-generated work meets the reliance requirement and therefore infringes the copy - righted work – when the AI user recognises the copyrighted work, and when the AI user was unaware of the copyrighted work but the copy - righted work was included in the training data. On the other hand, if an AI user is not aware of the copyrighted work and the copyrighted work was not included in the training data, the reli - ance requirement is not likely to be met. When

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INTRODUCTION Contributed by: Dale Cendali, Joshua Simmons and Dana DeVlieger, Kirkland & Ellis LLP

infringement occurs in the use of generative AI, the copyright holder could obtain injunctions against the user, the developer or the service provider. Governing law: If the result of the copyright infringement occurs in Japan, then Japanese copyright law applies. Similarly, in claims for injunctive relief, Japanese law will apply to infringement occurring in Japan. In addition, Japanese law is more likely to apply when the server collecting the training data is located in Japan, when infringing AI outputs are gener - ated by a program running on a server in Japan, and when a service provider publicly transmits infringing outputs created by generative AI to users in Japan. In addition to the “Report on AI and Copyright Issues”, the Study Group on Intellectual Prop - erty Rights in the AI Era produced its interim report in May 2024. The interim report primarily considered risks of generative AI to intellectual property, and the protection of AI-based inven - tions. It concluded that, to fully address the risks regarding generative AI, the law needs to use a combination of the Intellectual Property Act, technology law and contract law. Finally, the Japanese Ministry of Economy, Trade and Industry produced the AI guidelines for busi - nesses, the “Guidelines for Utilization of Genera - tive AI for Content Creation” and the “Checklist & Guidance on AI and Copyright”. These docu - ments provide practical guidance for develop - ers, providers and users working with AI. While these reports and guidelines are not legally bind - ing, they provide valuable information to those working with AI in Japan.

The USA There are several prominent cases involving AI that are working their way through the fed - eral courts, most of which address the use of copyrighted works as inputs to train AI models. These cases include The New York Times Co v Microsoft Corp; Silverman v Open AI, Inc; and Kadrey v Meta Platforms. None of these cases have reached a verdict yet. In this time of relative uncertainty in US intellec - tual property law, there are theoretical concerns about the outputs of generative AI, including the extent to which generative AI programs create unauthorised derivative works, infringing the copyrighted works used to train the AI model. The right to create derivative works belongs to the copyright holder. Yet when the output of a generative AI model reproduces or resembles elements of the copyrighted works used to train the model, one could argue that such output constitutes copyright infringement through the creation of an unauthorised derivative work. Such concerns have only been amplified since the Supreme Court’s 2023 decision in Warhol v Goldsmith, which sharpened the distinction between uses that are merely derivative and those that can be considered transformative, and therefore potentially non-infringing. Digital evolution of trade mark law in Spain In Spain, one key area of interest is the protec - tion of trade marks in virtual environments. The development of NFTs, growth of online branding, and expansion of the metaverse have caused both Spain and the European Union to revise their trade mark practices. The US “MetaBirkin” case, finding that NFTs of Hermès’ famous Birkin bag infringed Hermès’ trade mark, highlights the issue of how trade marks should be treated in the digital space. In

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INTRODUCTION Contributed by: Dale Cendali, Joshua Simmons and Dana DeVlieger, Kirkland & Ellis LLP

anticipation of similar cases, the Spanish Pat - ent and Trademark Office (SPTO) and the EU Intellectual Property Office (EUIPO) revised their guidelines, now requiring trade mark applica - tions involving NFTs to detail the digital goods and services protected under the mark. The same is true for trade marks applying to virtual goods and services. To accommodate these new requirements, the Nice Classification sys - tem, the international classification for trade mark goods and services, has been revised to provide more detailed descriptions for NFTs and virtual goods and services. In addition to preparing Spanish and EU trade mark applications for NFTs and virtual goods and services with the appropriate level of speci - ficity, businesses offering both tangible and virtual goods and services are encouraged to make sure their existing trade marks adequate - ly protect their virtual offerings. As trade marks are becoming increasingly important in the metaverse, there are also significant opportuni - ties for infringing or counterfeit content. Spanish courts may be faced with disputes over digital uses of trade marks with increasing frequency moving forward.

Given the fast pace at which technological developments occur, practitioners working in Spain and the EU are encouraged to pay close attention to the legal changes in this space mov - ing forward.

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ARMENIA

Russia

Georgia

Armenia

Yerevan

Azerbaijan

Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan Concern Dialog

Turkey

Iran

Contents 1. Trade Mark and Copyright Law p.14 1.1 Governing Law p.14

1.2 Conventions and Treaties/Rights of Foreign IP Holders p.14 2. Trade Mark Ownership, Protection and Rights p.15 2.1 Types of Trade Marks p.15 2.2 Essential Elements of Trade Mark Protection p.15 2.3 Trade Mark Rights p.15 2.4 Use in Commerce p.15 2.5 Notices and Symbols p.15 2.6 Related Rights p.16 3. Copyright Ownership, Protection and Rights p.16 3.1 Types of Copyrightable Works p.16 3.2 Essential Elements of Copyright Protection p.16 3.3 Copyright Authorship p.16 3.4 Copyright Rights p.17 3.5 Term of Protection and Termination p.17 3.6 Collective Rights Management Systems p.17 3.7 Copyright Registration p.17 3.8 Copyright Application Requirements p.17 3.9 Refusal of Registration p.17 3.10 Related Rights p.17 4. Trade Mark Registrations and Applications p.18 4.1 Trade Mark Registration p.18

4.2 Trade Mark Register p.18 4.3 Term of Registration p.18 4.4 Application Requirements p.18

4.5 Use in Commerce Prior to Registration p.19 4.6 Consideration of Prior Rights in Registration p.19 4.7 Revocation, Change, Amendment or Correction of an Application p.19

4.8 Dividing a Trade Mark Application p.19 4.9 Incorrect Information in an Application p.19

4.10 Refusal of Registration p.20 4.11 The Madrid System p.20

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ARMENIA CONTENTS

5. Trade Mark Procedure for Inter Partes Proceedings p.21 5.1 Timeframes for Filing an Opposition or Cancellation p.21 5.2 Legal Grounds for Filing an Opposition or Cancellation p.21 5.3 Ability to File an Opposition or Revocation/Cancellation p.22 5.4 Opposition or Revocation/Cancellation Procedure p.22 5.5 Legal Remedies Against the Decision of the Trade Mark Office p.22 5.6 Amendment in Revocation/Cancellation Proceedings p.22 5.7 Combining Revocation/Cancellation and Infringement p.23

5.8 Measures to Address Fraud p.23 6. Assignments and Licensing p.23

6.1 Assignment Requirements and Restrictions p.23 6.2 Licensing Requirements or Restrictions p.23

6.3 Registration or Recording of an Assignment or Licence p.23 7. Initiating Trade Mark and Copyright Lawsuits p.23 7.1 Timeframes for Filing Infringement Lawsuits p.23 7.2 Legal Claims for Infringement Lawsuits and Their Standards p.23 7.3 Factors in Determining Infringement p.24 7.4 Prerequisites and Restrictions to Filing a Lawsuit p.25 7.5 Lawsuit Procedure p.25 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants p.25 7.7 Small Claims p.25 7.8 Effect of Trade Mark and Copyright Office Decisions p.25 7.9 Counterfeiting and Bootlegging p.25 8. Litigating Trade Mark and Copyright Claims p.26 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings p.26 8.2 Effect of Registration p.26 8.3 Costs of Litigating Infringement Actions p.26 9. Defences and Exceptions to Infringement p.26 9.1 Defences to Trade Mark Infringement p.26 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) p.27 9.3 Exhaustion p.27

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ARMENIA CONTENTS

10. Remedies p.27 10.1 Injunctive Remedies p.27 10.2 Monetary Remedies p.27 10.3 Attorneys’ Fees and Costs p.27 10.4 Ex Parte Relief p.28 10.5 Customs Seizures of Counterfeits or Parallel Imports p.28 11. Appeal p.28 11.1 Appellate Procedure p.28 11.2 Timeframes for Appealing Trial Court Decisions p.28 12. Additional Considerations p.28 12.1 Emerging Issues p.28 12.2 Trade Mark and Copyright Use on the Internet p.28

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

Concern Dialog is a top-tier, full-service law firm, headquartered in Yerevan, Armenia. It has been a trusted partner for businesses and individuals seeking legal counsel and representation since 1998. The firm is renowned for its work in the areas of corporate law, labour law, competition law, tax law, contract law, family law (including child abduction cases), and regulatory issues. Concern Dialog has extensive experience in regulatory matters in TMT, mining, energy, utili - ties, banking and finance, medical services, real

estate, and not-for-profit sectors. In addition to its renowned consulting and transaction prac - tice, the firm’s litigation practice is regarded as one of the leaders in Armenia for landmark liti - gation and arbitration cases. Concern Dialog’s membership of TagLaw and Nextlaw networks, as well as its co-operation with individual law firms from various jurisdictions, allow the firm to provide services to its Armenian clients virtually worldwide.

Authors

Sarkis Knyazyan is a non-equity partner, and licensed patent and trade mark agent at Concern Dialog, leading the IP practice and specialising in trade marks, industrial designs, geographical

Svetlana Mkrtchyan is an associate, attorney at Concern Dialog. She is involved in

providing advice and judicial representation in the fields of civil law and litigation. She joined the Concern Dialog team in 2023, prior to which she worked in law firms and a construction company.

indications and copyright. He has been a partner at Arluys CJSC, Armenian IP Law Firm, worked at Arlex International Law Office and the American University of Armenia, was an adviser to the Ministry of Economy of Armenia, and served as an IP expert for the Council of Europe and the World Intellectual Property Organization. He is a board member of Armenia’s IP Rights Center Foundation and played a key role in drafting Armenia’s national IP Strategy.

Anahit Aloyan is a junior associate at Concern Dialog. As a newly graduated lawyer, she specialises in civil law. Anahit joined the Concern Dialog team in 2023. Rita Parzyan is a legal assistant at Concern Dialog. She specialises in civil law, having joined the firm in 2024.

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

Concern Dialog Law Firm 1 Charents Street Office 207 Yerevan, 0025 Armenia

Tel: +374 60 278888 Email: info@dialog.am Web: www.dialog.am

1. Trade Mark and Copyright Law 1.1 Governing Law Trade marks are regulated by the Armenian Civil Code, the Trade Mark Law, and Government Resolutions regulating trade mark prosecution/ registration procedures. Copyrights are regulat - ed by the Armenian Civil Code and the Law on Copyright and Related Rights. 1.2 Conventions and Treaties/Rights of Foreign IP Holders Armenia is a member of the following interna - tional treaties in the field of trade marks: • Agreement on Trade-Related Aspects of Intel - lectual Property Rights (TRIPS Agreement); • Madrid Agreement Concerning the Interna - tional Registration of Marks; • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; • Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks; • Paris Convention for the Protection of Indus - trial Property; • Vienna Agreement Establishing an Interna - tional Classification of the Figurative Elements of Marks;

• Agreement on Trade Marks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union; and • Singapore Treaty on the Law of Trade Marks. Armenia is a member of international treaties in the field of copyright and related rights, includ - ing: • Berne Convention for the Protection of Liter - ary and Artistic Works; • WIPO Copyright Treaty; • Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled; • Beijing Treaty on Audiovisual Performances; • WIPO Performances and Phonograms Treaty; • Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations; and • Convention for the Protection of Producers of Phonograms Against Unauthorized Duplica - tion of Their Phonograms.

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks Armenian Trade Mark Law protects the following types of signs or source-identifiers: • trade marks/service marks (word marks, pic - torial marks, combined marks, audio-visual marks, slogans, three-dimensional trade marks); • collective marks; • certification marks; • geographical indications; • designations of origin; • traditional speciality guaranteed; and • designs. Scent is not subject to registration as a trade mark. Trade marks solely consisting of Arabic, Chinese, Japanese, Korean, Georgian or other similar words, letters, characters are not sub - ject to registration due to lack of distinctiveness. Trade marks containing such words, letter or characters may be registered, if they are dis - claimed and are combined with Armenian, Latin or Cyrillic words/letters, any symbols or pictorial elements. Armenia does not have any specific marks that are protected by statute in a way different than ordinary marks. Foreign famous trade marks, per se, are not pro - tected in Armenia, without registration. However, the Armenian IP Office may refuse registration of a trade mark (i) which is confusingly similar to a trade mark being in use in Armenia or outside of Armenia, and (ii) is likely to cause confusion among consumers in Armenia, and (iii) if the applicant acted in bad faith (ie, knew or could have known about the use of the earlier mark).

2.2 Essential Elements of Trade Mark Protection Armenian law does not require use in commerce. However, any third party, having legal interest, may file a court action to cancel registration of a trade mark based on non-use, if the mark was not in use for a consecutive period of three years. Only distinctive trade marks are subject to reg - istration. A descriptive trade mark may become registrable, if it acquires distinctiveness (sec - ondary meaning) over some period of time, as a result of extensive use, when consumers identify the brand with a specific source (owner). 2.3 Trade Mark Rights After registration, the applicant (trade mark owner) receives the exclusive right to use the registered trade mark and exclude others from using any identical or similar trade marks that is likely to cause confusion among consumers. All these rights are granted for a period of ten years and may be renewed every ten years. 2.4 Use in Commerce Use in commerce is not required in Armenia for the purposes of registration or maintaining reg - istration. Trade marks that are not in use will not get abandoned automatically. However, any third party having legal interest in an identical or simi - lar trade mark, may file a court action to cancel registration of the mark, if it was not in use for more than three years. The trade mark owner bears the burden of proof. If no evidence of use is submitted by the owner of the trade mark, the court is likely to make a decision on cancellation, based on non-use. 2.5 Notices and Symbols Armenian law does not require use of any sym - bol with a trade mark. However, according to

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

the Trade Mark Law only owners of registered trade marks have the right to use the letter “R” inside a circle. There are no consequences for not providing notice of trade mark ownership. 2.6 Related Rights Copyrightable images may be registered as a trade mark (eg, logo). If a trade mark consists of or includes a copyrightable object, the copy - right may co-exist with the trade mark. If a trade mark consists of or contains a surname of a well- known person, then that person or their hairs/ successors may oppose the registration of such trade mark. 3. Copyright Ownership, Protection and Rights 3.1 Types of Copyrightable Works In Armenia, copyright is regulated by the Civil Code and the Law on Copyright and Related Rights. Works eligible for copyright protection include but are not limited to literary and scien - tific works, computer programs, painting, sculp - ture, graphics, design and other works of visual and fine arts, scenarios, sketches, librettos, choreographic and pantomimic works, musical works with or without words, audiovisual works (cinematographic, movies, animation, cartoons, advertisements, documentary and other similar works), photographs, architectural works, land - scape designs, maps, topography, derivative works (translations, adaptations, arrangements, transformations, compilations), encyclopaedias, databases, fonts, etc. Industrial designs may also be subject to copyright protection. 3.2 Essential Elements of Copyright Protection A copyrightable subject matter shall be original (ie, be a unique outcome of a creative activity in

the fields of science, literature and art) created by one or more authors, expressed in spoken, written or any other objectively perceivable man - ner, fixed in a tangible medium (including in elec - tronic form), regardless the scope, significance, merits and the purpose of its creation. 3.3 Copyright Authorship According to the Armenian Copyright Law, only individuals (humans) may be considered as authors of copyrightable works. Unless proved otherwise, an author is a person whose name appears on the work or whose name is men - tioned at the moment of making the work public, or in whose name the work is deposited in the relevant collective management organisation, or if it is certified by a notary or any other organisa - tion having relevant authority by the law. Armenian law does not define the term “work made for hire”. However, it regulates the rela - tions between the employer and employee (author). Unless otherwise agreed by the parties in writing, the copyright to any work created by an employee (author), within the scope of their employment duties, or by employer’s orders (instructions), is transferred to (or owned by) the employer. In case of non-employment relations (eg, service contracts), the copyright belongs to the author of the work, unless otherwise agreed by the parties in writing. Armenian law is silent on whether someone may claim authorship of a work that was not created by a human (eg, by artificial intelligence software, an animal, etc). However, it is highly unlikely that the interpre - tation of the law would allow any human to be considered as an author of such work. If a work is created by multiple authors, such authors are considered as co-authors of that work. In the absence of authorship agreement,

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

co-authors are considered as joint owners of such work and the royalty is shared equally. 3.4 Copyright Rights According to the Armenian Law on Copyright and Related Rights, an author has the exclu - sive right to use their work, as well as authorise or exclude others from using their work. Such rights include but are not limited to the right of reproduction, distribution, rental, lending, trans - lation, creation of derivative works (arrangement, rearrangement, adaptation and other transfor - mations), communication to the public, pub - lic performance, public display, broadcasting, simultaneous broadcasting or re-broadcasting, transmission of a work by cable or by other means, as well as the use of a work in any other manner that does not contradict with the Arme - nian law. Armenian law recognises moral non-economic rights – ie, the author’s intellectual and personal ties to the work, which includes the right to be recognised as an author of the work (authorship right); the right to use the work by their name, pseudonym or anonymously, and the right to authorise such use; the right of prohibiting of distortion or any modification to the work that may harm the author’s good will and/or reputa - tion; the right to make the work publicly available for the first time, or to assign that right to a third party, etc. Authors’ moral rights are inalienable, non-transferable and are not subject to exhaus - tion with the exception of the right to withdrawal, which expires with the author’s death. 3.5 Term of Protection and Termination The copyright is protected for the whole dura - tion of the author’s life, plus 70 years after the author’s death. The copyright owner’s rights terminate after the expiration of the copyright

term or after the rights get transferred to another owner, within the copyright term. Personal non-property rights are inalienable and non-transferable and are preserved indefinitely, except for the right of withdrawal, which is effec - tive only during the author’s lifetime. 3.6 Collective Rights Management Systems ArmAuthor NGO is the only collective rights management organisation in the field of music industry, established in accordance with the Copyright Law of Armenia, in 2001. The main function of ArmAuthor NGO is collection and dis - tribution of authors’ royalties locally and interna - tionally, through sister organisations. ArmAuthor is a member of CISAC. 3.7 Copyright Registration As a member of the Bern Convention, Armenia does not require copyright registration and there is no state institution that registers copyright in Armenia. A work is considered created if it is expressed in an objective form that allows for perception and does not depend on the official certification, registration or performance of any other action. 3.8 Copyright Application Requirements

This is not applicable in Armenia. 3.9 Refusal of Registration This is not applicable in Armenia. 3.10 Related Rights

Copyrightable works, such as artworks, designs, images, motion pictures, sounds, music and short audiovisual works may be protected by trade mark, as well. Some copyrightable objects of visual arts may be protected by industrial designs. However, there is a clear distinction

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

between copyright and related rights and each object is protected separately without any over - lap. 4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration In order to acquire all exclusive rights prescribed by trade mark law, a trade mark must be regis - tered. Unregistered trade marks are not protect - ed, and owners of unregistered trade marks do not have the right to exclude others from using identical or confusingly similar trade marks. However, the Armenian IP Office may refuse reg - istration of a trade mark (i) which is confusingly similar to a trade mark being in use in Armenia or outside of Armenia, and (ii) is likely to cause confusion among consumers in Armenia, and (iii) if the applicant acted in bad faith (ie, knew or could have known about the use of the earlier mark). All types of trade marks are registered by the same standards. However, trade marks that are not distinctive may become registrable, if they acquire distinctiveness (secondary mean - ing). 4.2 Trade Mark Register Armenia has one principal trade mark register for the whole territory of the Republic of Armenia. All registered trade marks are publicly available and may be searched on the official website of the Armenian Intellectual Property Office. Trade mark rights are acquired through registra - tion, in Armenia. It is not advisable to use any trade mark without registration. Therefore, it is normal practice in Armenia to search for prior trade marks before applying to register a mark. It is advisable to use not only local, but also the WIPO international database of trade marks des -

ignating Armenia. It is also advisable to search for unregistered trade marks, since the Armenian IP Office may refuse registration of a mark, if an identical or confusingly similar mark is in use in or outside of Armenia. 4.3 Term of Registration Trade marks are registered for a period of ten years in Armenia and may be renewed for anoth - er ten-year period perpetually. Trade mark owners may also renew registrations within six months after the expiration date and with 50% additional state/official fee. There are no other requirements for renewing trade mark registrations. 4.4 Application Requirements Armenia allows multi-class trade mark applica - tions, but each application must relate to one trade mark and contain a description of the mark. The application must be filled in Armenian, and all accompanying foreign language docu - ments should be translated into Armenian. The application must be accompanied with a receipt confirming the payment of official/state fees for filing and examination. The state registration fee is paid after the Armenian IP Office makes a decision on registration of the mark. Trade mark applications may be filed electronically. The images/drawings of a trade mark must be attached to the application. The Armenian law does not require specimen of use, the date of first use in commerce or creation in commerce, or sworn declaration of accuracy. The official/state trade mark filing fee for one trade mark in one class is AMD30,000. The official/state fee for each additional class is AMD15,000. The official/state examination fee, which is paid together with the filing fee is

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

4.7 Revocation, Change, Amendment or Correction of an Application The trade mark application may be revoked and corrected. Changes and amendments in the application may be allowed, provided that they are not substantial (ie, are not material altera - tions from the initial application). Amendments with additional classes of goods and services will be rejected, but reduction of classes or spe - cific goods and services is allowed. If allowed, the applicant must pay a state/official fee for making amendments, changes and corrections to the application. There is no state/official fee for revocation of a trade mark application. 4.8 Dividing a Trade Mark Application Armenian law allows division of a trade mark application into two or more applications, pro - vided that the applicant pays the official/state fees and files a relevant application. As a rule, applications get divided in the event of partial registration. If an applicant wishes to register the approved classes and appeal the rejected once, it normally divides the application into approved and rejected classes. Thereafter, applicants request to register applications with approved classes and appeal applications with rejected classes. 4.9 Incorrect Information in an Application The provision of false documents and/or infor - mation by the applicant, for the purposes of achieving trade mark registration, may lead to rejection of the trade mark application by the Armenian IP Office or invalidation of the trade mark registration by the Administrative Court. In the event of typos or other incorrect infor - mation (mistakes, errors) the applicant may be

AMD40,000. The official/state registration fee is AMD50,000 and is paid, after the Armenian IP Office makes a decision on registration of the trade mark. Trade mark applications may be filed by both individuals and legal entities. Foreign applicants are not required to appoint and be represented by an attorney licensed to practice in Arme - nia. However, considering that all documents are filed and received in Armenian language, it is practically impossible for foreign applicants (non-Armenian speakers) to draft and file appli - cations in Armenian. 4.5 Use in Commerce Prior to Registration Armenian law does not require that an applicant use its trade mark in commerce before the reg - istration is issued. 4.6 Consideration of Prior Rights in Registration The Armenian IP Office does consider the exist - ence of prior rights in the examination of an application for registration. Such prior rights may include pending or registered trade marks filed through national procedure or through interna - tional procedure designating Armenia. In addi - tion, the Armenian IP Office may consider the actual use of trade marks in Armenia or outside of Armenia, if they are confusingly similar to the filed trade mark, are likely to confuse consumers and the applicant acted in bad faith (ie, knew or could have known about the existence of such prior rights). Copyright, designs, geographical indications and other prior rights may also be considered by the Armenian IP Office.

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

allowed to make changes in the application or in the trade mark registry. 4.10 Refusal of Registration Based on absolute grounds, a trade mark may be refused if it: • is not distinctive; • is descriptive or generic; • is contrary to the public policy or to the principles of humanism or morality, or under - mines national or spiritual values; • may deceive the public in regard to the geo - graphical origin, quality, nature, or producer of the goods or services; • reproduces or includes state emblems, flags or symbols, official state names or their abbreviations, full or abbreviated names of international and intergovernmental organisa - tions, official symbols, as well as hallmarks denoting state control, guarantee and fine - ness, stamps, seals, awards, and other dis - tinguishing signs (as stipulated by the Article 6ter of the Paris Convention), or is likely to create confusion with them; • reproduces marks or emblems, which are not protected by Article 6ter of the Paris Conven - tion, but represents particular public interest; • includes symbols of great importance, in particular religious or cultural heritage, if it contains elements disgracing religious or moral values; • reproduces or includes elements which are identical with or confusingly similar to the images or official names of a cultural heritage of the Republic of Armenia or an international cultural heritage, or is confusingly similar to images of cultural values kept in funds and collections, where the registration is claimed in the name of a person who is not the pro - prietor thereof and does not possess relevant authority;

• consists of or includes a geographical indica - tion and has been filed for such goods, which are not originated from the area bearing this indication, if the use of that mark in the Republic of Armenia misleads the public as for the real origin of the goods; and • consists of or contains a geographical indica - tion ascertaining wines, for wines not origi - nated from the area bearing the geographical indication specified or a geographical indica - tion ascertaining spirits, for sprits not origi - nated from the area bearing the geographical indication specified, even if the real origin of the product is specified or the geographi - cal indication is used in a translated version or in conjunction with such expressions as “sort”, “type”, “style”, “imitation” and similar to them. Registration of a trade mark may also be refused under other circumstances, prescribed by the law. In the event of any office actions (notifications, objections or refusals), applicants have the right to submit responses to such actions and overcome such objections and/or refusals. The basis for overcoming such refusals would greatly depend on the legal grounds of such objections or refusals (absolute or relative). Applicants have two months to submit responses to office actions and/or request additional time of up to six months. 4.11 The Madrid System Armenia is a member of Madrid Agreement and the Protocol. International applications may be filed either in parallel with national application or after completion of the national registration. Applications are submitted through the Arme - nian IP Office, after making the payments of relevant national and international official fees.

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ARMENIA Law and Practice Contributed by: Sarkis Knyazyan, Svetlana Mkrtchyan, Anahit Aloyan and Rita Parzyan, Concern Dialog

Applications may be filed by any person who has an industrial or commercial establishment in Armenia, or resides in Armenia, or is a citizen or national of Armenia. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Third parties having legal interest are allowed to file oppositions within two months after publica - tion of the trade mark application in the Official Gazette of the Armenian IP Office. The law does not allow extension of time for fil - ing oppositions. The general statutory limitation for challenging any trade mark registration is two months from the date of publication of information regarding trade mark registration. Non-use cancellation actions may be filed at any time, where the trade mark was not in use for a consecutive period of three years preceding the date of filing a non-use cancellation action. Copyright is not subject to registration in Armenia. Therefore, revocation/ cancellation actions are not applicable. In the event of non-use cancellation actions, the burden of proof is on the owner of the mark. Failure to submit relevant evidence will result in cancellation of registration. 5.2 Legal Grounds for Filing an Opposition or Cancellation Trade mark oppositions may be filed in the event. • the trade mark is identical or confusingly simi - lar to an earlier trade mark registered for the same goods and/or services;

• the trade mark is identical or similar to an earlier trade mark and is filed for goods and/ or services that are not identical to those cov - ered by the earlier trade mark, if the applicant may unfairly benefit from the distinctive char - acteristics or reputation of the earlier trade mark; or harm the distinctive characteristics or reputation of the earlier trade marks; • the trade mark is identical or confusingly simi - lar to another person’s trade name (company name); • the trade mark is identical or similar to a geographical indication or place of origin protected in the Republic of Armenia; • the trade mark reproduces or incorporates an earlier industrial design or any other object of industrial property with earlier priority rights in the Republic of Armenia; • the trade mark reproduces or incorporates lit - erary, scientific, or artistic works protected by copyright, or their titles, quotations, excerpts, characters; and • the trade mark reproduces or incorporates the name, surname, pseudonym, or image of any famous person. Non-use cancellation actions may be filed in the event bad faith applicants registered similar or identical trade marks in Armenia with an objec - tive to benefit from such registrations. Such action may be also filed to overcome a refusal based on a similar trade mark which has not been in use for a period of three years prior to filing the application or the non-use cancellation action. Re-examination is possible after receiving a notification of a potential refusal, a preliminary refusal or a partial registration. A re-examination is also possible after receiving a final refusal, by appealing the refusal to the board of appeals.

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