“Baccara” CJSC failed to prove its case
- 2017-09-23
“Baccara” cjsc filed a lawsuit in the Court of First Instance of Arabkir and Kanaker-Zeytun Administrative Districts against “Baccara Glass” LLC by which demanded from the respondent to cease the use on its website of the word “Baccara”.
The respondent was represented by Karen Karapetyan, an advocate at HS Partners Law Firm.
Facts of the case
The plaintiff had registered the word «Baccarat» as part of its trademark for the classes 8, 9, 11, 14, and 21 of the Nice Classification of Goods and Services.
The respondent had registered the word «BACCARA» as part of its trademark for the class 35 of the Nice Classification of Goods and Services.
Arguments of the parties
The plaintiff argued that the use by “Baccara Glass” LLC of the word “Baccara” was a violation of its IP rights. It stated that the respondent did not have a right to sell such goods which belong to classes 8, 9, 11, 14, and 21 of the Nice Classification of Goods and Services because the respondent’s trademark was not registered for those classes.
The respondent argues that the plaintiff had failed to present any evidence confirming the fact that it had been using the trademark for classes 8, 11, 14 and 21 of the Nice classification of goods and services.
Additionally, the respondent claimed that the use of the word “Baccara” on the website would not be illegal because that word was registered as part of its trademark for class 35 of the Nice classification of goods and services. The respondent referred to a reference letter given by the Intellectual Property Agency of the RA which stated that Class 35 (titled “Advertising; business management; business administration; office functions”), among other things, covers retail services. Therefore, the respondent argued that having the word “Baccara” registered for retail services as part of its trademark provides with the exclusive right to sell any kind of goods.
The issue of law
The significance of this dispute for the area of IP law was due to the fact that both parties of the dispute had registered almost identical trademarks for different classes of the Nice classification of goods and services which created an overlap. The plaintiff had registered its trademark for certain goods whereas the respondent had registered a similar trademark for a certain class of service.
Court decisions
The Court of First Instance of Arabkir and Kaanaker-Zeytun Administrative Districts granted the claim.
The respondent’s representative lodged an appeal against the decision. After reviewing the appeal, the Civil Court of Appeal overturned the decision of the lower court and dismissed the claim.
The Civil Court of Appeal found that there was absolutely no evidence to establish the fact that the respondent had been using the word “Baccara” for classes 8, 11, 14 and 21 of the Nice classification of goods and services. The appellate court concluded that this fact itself was enough to overturn the decision and there was no need to examine other arguments in the appeal.