Some aspects of the Azerbaijan Trademark Law

The new Azerbaijan Trademark Law (Law No. 504/1G) entered into force on June 12, 1998. It was not until now that a Russian- language version of said Law was published (Bulletin Biznesmena 17 (216) 1999). The most interesting aspects of the Law are, first of all, the definition of a Trademark, the opposition procedure and the possibility of enforcement. "Trademark" is defined as the graphical design or any arbitral ry combination of signs for distinguishing the goods or services of one enterprise from the goods or services of another enterprise (§ 1). This definition is explained more in detail in § 4, where it is stated that words, proper names, letters, figures (numerals), pictorial elements, shapes of packaging, or the colour of goods and any combination of the afore-mentioned elements can be protected by Trademarks. Excluded by this definition are family names of third parties, three- dimensional marks as such, i.e. the representation of goods, as well as colours. Further exempted from Trademark protection are acoustic marks and fragrance marks. What is interesting in § 5 dealing with the absolute grounds for rejection is the fact that elements compromising personages are also excluded from Trademark protection, thereby putting a stop to irony. Questionable is the definition of "personality". Can this also be a firm, i.e. a juristic person? No information about this is given in § 5. Words and geographical names being in use for a long time in Aserbaijan cannot be protected either. Interesting is the fact that pursuant to the new Law, non-registrable Trademarks that are already in the register can be cancelled ex officio. Firm names used by third parties prior to the filing of the respective Trademark Application can be registered neither for identical nor for similar goods and services. Importance is also attached in the new Law, particularly in § 7, to the protection of notorious, i.e. famous marks. Pursuant to § 6bis ICPIP. (International Convention for the Protection of Industrial Property = Paris Convention), protection without registration is granted in Azerbaijan to notorious, i.e. famous marks. In this connection, a certain restriction seems to have been made, because the degree of notoriety in Azerbaijan - also in association with the claimed goods or services -, the distribution channels, the marketing, i.e. the consumer information, and the distinctiveness when using a mark, i.e. the whole appearance of the mark, - however, always in terms of the Azerbaijan market - should be determined. Only in the last place the other states wherein the mark is used are touched. The Trademark owners' concern in 90% of the cases will probably be the fact that the mark is not used in Azerbaijan but instead in the U.S.A., in Germany, in Europe or in Asia. The Law provides an examination of formalities, followed by the examination as to the merits. The division of a mark is also possible. The examination can be performed in three instances, i.e. by the examining division, before the Board of Appeal and before the Court. All decisions of the Patent Office are subject to the examination by the Board of Appeal, i.e. the 2nd instance - corresponding to the Patent Court in Germany -, and subsequently to the examination by the competent Court. The jurisdiction of the Court is regulated in § 33. Decisions of the Patent Office may be appealed within 3 months. The Board of Appeal has to deal with the appeal within 2 months. Against the decision of the Board of Appeal a suit can be filed at the competent Court within 3 months. Reinstatement of missed terms within 6 months is provided. Oppositions can be filed at the Board of Appeal within 3 months from the publication date of a Trademark. The Trademark owner has then to submit his counter statement within a one month's term. A particularity with respect to collective marks is the fact that 3 years after the expiration of a collective mark, the respective mark cannot be re-filed by a third party (§ 23). There is no particular register for notorious or famous marks. Nevertheless, in § 25, under the heading "Exclusive right to a mark", the notorious mark is once again mentioned. The owner of a famous mark can take legal actions against misuse if the reproduction of an analogous mark or a translation of his mark is used for identical and similar goods or services, i.e. if a wrong impression of his mark is caused thereby, even if the goods or services are not similar. This wording is somewhat strange. Why the mentioning of identical and similar goods and services at first and then a repetition with the citation of the non-identical and non-similar goods and services? Maybe there is an inaccuracy of the translation into Russian. As already mentioned above, subject to re-examination by the competent Court according to § 33 are, apart from any decisions of the Board of Appeal, also the infringement of rights of Trademark owners, as well as decisions concerning licence agreements and assignments, whereby business secrets of the Trademark owners have to be held under secrecy. § 34 provides as sanction not only the discontinuation of the infringement act but also the payment of damages, the confiscation and liquidation of the mark and of the means for their production, as well as the seizure and liquidation, i.e. the destruction of the good if the illegally placed Trademark cannot be removed. This means that the infringer bears the full responsibility. Unfortunately, it is not possible to stop piracy products in the course of transit. Upon order of the public prosecutor, the Court or other executive bodies, imported articles may be seized, i.e. the customs authorities are given the possibility of interfering, even in case of mere suspicion, if they discover wrong indications of origin, i.e. wrong indications with regard to place and manufacturers. In case of transit, the Trademark owner or his licensee has the right to apply to the customs and to obtain information as to the amount of goods and their addressee. The customs authorities may detain the goods for a period of 15 days; thereupon the Trademark owner has to present a document evidencing that he has instituted proceedings before a Court and that he will bear the expenses for the seizure and storage of the goods. If the confiscation is unfounded, the claimant is liable to pay damages. If the quality of the seized goods is different from that of the original, the infringer bears responsibility in conformity with the other legal regulations in force in Azerbaijan.

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