03-06-2012 (Newsletter Issue 4/12)
Electronic System for IP Rights Registration
Azerbaijan has formed a special group on creation of electronic system for registration of intellectual property rights. The work will be implemented at the expense of 4.2 million USD (3.2 million EUR) grant provided by the Korean government for 2-year project realization.
On October 11, 2011 the State Committee on Standardization, Metrology and Patents of Azerbaijan signed a grant agreement with the Korean Foreign Affairs and Trade Ministry on automation of intellectual property rights registration. The agreement is aimed at securing the effictive system of IP rights management, establishing a digital library and information system, training specialists and providing the stable intellectual rights registration system in Azerbaijan.
Source: Mikhailyuk, Sorokolat and partners, Ukraine
Legal basis is the Trademark Act, in force since June 12th, 1998 and amended on April 03, 2009 which in force since May 17, 2009.
Azerbaijan is a member of the Madrid Agreement and Madrid Protocol.
Trademark protection is obtained by registration.
Trademarks which were protected in the former Soviet Union are protected in Azerbaijan only, if they were transcribed until December 31st, 1995.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, combinations or shades of colours, three-dimensional marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks and collective marks.
The application is filed at the Patent Office.
Multiple-class applications are possible.
Foreign applicants need a local agent. Only licenced patent attorneys are authorized to act on behalf of the foreign applicant before state agencies on trademark issues.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Furthermore, an examination of the national market is conducted for similar or identical well-known trademarks used for similar or identical goods or services. Under the Trademark Law, the registered well-known trademarks gain unlimited protection. However, as a matter of practice, existing well-known trademarks in use may serve as grounds for rejection of a trademark registration.
After registration, the trademark is published in the Patent Office Gazette.
No opposition period.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
no opposition period
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
The grace period is 6 months from the expiration date of the trademark.
If the trademark has not been used within 5 years from registration or has later not been used for 5 years continuously, it may be subject to cancellation.
Trademark examination fee for one class is AZN 60.00 (approx. EUR 58.00); for each additional class after 5th class AZN 25.00 (approx. EUR 24.00); Trademark registration fee is AZN 45.00 (approx. EUR 44.00).
Trademark Licence Agreement
In Azerbaijan a licence agreement has to be in writing. Licensing of unregistered or pending marks is not permitted. A trademark can be licensed for all or some of the goods or services in respect of which the mark is registered. There are exclusive, non-exclusive and sole licences. The sale of a registered trademark automatically terminates the licence agreement.
The following statutory provisions prescribe the terms of licensing:
1. The licence agreement should provide for quality clauses regarding the licensed goods/services.
2. The proprietor must exercise control over the fulfilment of these conditions.
There are provisions in law for the mandatory recordal of a licensee. Non-recorded licences are not valid before the Patent and Trademark Office of Azerbaijan (AzP-TO) and use by the licensee will not be attributed to the owner. Therefore, the trademark may become vulnerable to cancellation actions by third parties on the ground of non-use. There is no prescribed form for a licence agreement but it shall contain the form of the licence, the period of validity and the territory in which the trademark rights use will be exercised.
The following documents are required for the recordal of a licence agreement:
1. The original of the licence agreement (or a certified copy, a confirmatory declaration or an abstract)
2. A document stipulating the quality of goods and services to be produced or rendered
A licence agreement must be notarised and certified by apostille. No legalisation is required. If the licence agreement has been signed by a representative of the proprietor and the licensee a power of attorney from both is required.
The licence agreement becomes effective and enforceable against third parties from the date of its registration in the State Trademark Register and is published in the AzPto’s Official Bulletin within six months from its date of recordal.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. The licensee can call upon the owner to institute infringement proceedings. In the event that the licensor refuses or neglects to do so, the licensee can institute infringement proceedings in his own name. In the case of exclusive licences, the licensee can institute infringement proceedings in his own name any time.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
|Word Mark Search (availability)
|Word Mark Search (identical)
|Extended Search (word mark, company name, domain)
|Device Mark Search (availability)
|Trademark Owner Search
|Company Name Search
|Domain Name Search (extended)
|i-Search (word mark availability + legal opinion)
The Prices above are S.M.D. Markeur Search Fees
We would like to thank the following law firms for their assistance in updating the information provided:
Baker & McKenzie, Baku, Azerbaijan
Bipa, Baku, Azerbaijan
Baker & McKenzie, Baku, Azerbaijan
Bipa, Baku, Azerbaijan
IPR Group, Kiev, Ukraine