"Ter-Tachatyan" Legal and Business Consulting CJSC Founder-Manager, "Tierras de Armenia" CJSC External Lawyer Armen Ter-Tachatyan's interview

“Zorah” brand founder Zorik Gharibyan insists that he is fighting not against your company but against monopolizing the word "karas". Let's clarify whether the decision of the court means that from now on only your company can use the word "Karas" in Armenia.

With respect to the concept of “Zorah” brand used in your question I find it mandatory to note that there does not exist such trademark, it does not exist neither as a firm name of a company. The word Zorah, as a part of combined trademark is applied for labeling the wines produced by “Saki and Sons” CJSC. Therefore, a separate use of that word, especially as a brand, cannot be done.


On the basis of judicial acts the registration of trademark “Զ Karasi Zorah”, registered in the name of “Saki and Sons” CJSC, was voided since it is confusingly similar to “Karas” trademark which has earlier priority. There is an application priority for “Karas” trademark, that is to say its application for registration has been filed with earlier date. Any furtherly registered trademarks which contain a mark confusingly similar to that trademark, upon the claim of the owner of “Karas” trademark, can be prohibited to be used. This is not a “monopolization” of a word as you refer to, but rather only an exercise of a right to the trademark, which is stipulated by the Armenia’s Law “On Trademarks”.

I find it specially important to higlight that the trademark is the main and key tool to distinguish the product of one producer from another one. This is the market of the given producer and that is the reason that any trademark is protected by law. By developing its trademark, the producer develops its market, it makes investments thereon so that to make its product recognizable and thus it shall and does have right to protect by law that market and its investments. The exercise of such right cannot be qualified as “monopolization” of a “word”.

You say that "karas" is viewed as a trade mark. With this logic different companies can register, for example, the words "boiler" or "bottle", and prohibit the rest from using them. Don’t you think that your approach to this issue is somewhat vulnerable?

I have to repeat that “Karas” is a trademark registered and protected in the manner prescribed by the Law “On Trademarks”. We do not view it as such, it is as such.

With respect to registation and prohibition of the particular words you mentioned, I can say the following: any company may apply to register a mark preferred by itself and harmonic to its market as a trademark. The registering authority is registering it in lawfully prescribed manner and ensures legal protection. While using, the given company shall use it so that it does not cause confusion with other marks, that is to say, while protecting the trademark, the law protects the market of the given producer. This is highly important for product market of any country.

In Armenia there exist registered and protected trademarks which have general meaning as you refer to, like: “Takar” (cask), “Maran” (cellar), “Kouj” (jug), “Hayastan” (Armenia), “Voski” (gold), “Yeraz” (dream). In particular, Takar and Maran can be identified with technology of wine production, just the way you do with Karas. Still, they are applied as trademarks and have already formed their unique markets and no construing to them should be used to confuse the public. They are clear tools of product markets.

Thus, there is nothing about vulnerability of approach. I am sure that the adverse approach is more than vulnerable.

We should also note that “Tierras de Armenia” CJSC has registered not only the word trademark “Karas”, but a combined trademark, which also contains an image besides the word and the trademark is registered in particular class for a particular product, that is wine. The same word “Karas” is used as trademark by other entity for food services of other class. That is to say the use of the word “Karas” as an element of a trademark, cannot be estimated as an exceptional phenomenon. Here is where the sense of trademark is expressed: to distinguish the particular product and service from other similar products and services.

Still on February 14th, 2018 Armenian wine-making companies made a joint statement/application, calling on “Tierras de Armenia” CJSC to abandon the protection of the word "karas". Have you responded to that call in any way?

Surely we have responded. I am sure you are aware of unprecedented investments of “Tierras de Armenia” CJSC in development of Armenian winemaking and viniculture. They are not simply financial investments, soul is put in it. Those investments have revealed the best opportunities for Armenian wine. Best viniculture has been created in Armenia which had brought forward and developed huge assortment of Armenian wines which are very good ones in their taste features.  

We have all the time stated that any producer not only can but has to mention about producing wine in karas (pot) and notify about its production technology to the market and the consumers. It shall be labeled on the back of the wine bottle. By the way, such labeling is also used by “Saki and Sons” CJSC, on the back side of its wine bottle where is written that the wine is produced in karas. No encumbrance is and can be with respect to such labeling.

It is very important to once and for all understand that the trademark has no relation to the production technology: it has other legal significance, it is only aimed at distinguishing the product of the given producer from that of another producer and nothing more.
    
It is also spoken a lot that your company, calling its wine "Karas", does not prepare it in karas. What can you say about this?       

When responding to the previous question I already mentioned that the trademark has no relation to the technology, it has other sense. If a wine is labeled, for example, with the word Noravank, it does not mean that the wine is produced in Noravank church or if the wine is labeled with the word “Voski” (gold), it does not mean that the wine is made in gold, or placement of the word “Yeraz” (dream) on the trademark does not mean that such wine is made in dream and so on. The sense of the trademark is different and in no case it shall be altered. By the way, the words voski and yeraz are used in the images of trademarks of “Saki and Sons” CJSC.

Are you ready to discuss any compromise solution that will allow you to use the word "karas" without violating anyone's commercial interests? For example, use the example of Georgia where a special order has been developed for “qvevri”.

As it was said, the word Karas is used by “Tierras de Armenia” CJSC as a trademark and thereby the Company, the producer, appears in Armenian and foreign markets. Huge marketing expenses are carried out for its promotion. The mark already has a history and is identified with “Tierras de Armenia” CJSC in the whole world.

The Company will not prohibit any other person to use the word karas in such a way which will not be itentified with or confusingly similar to “Karas” trademark. The Company’s goal is to create new markets for Armenian wines in proper competitive conditions and to develop already existing markets both in Armenia and beyond Armenia. There are very big opportunities for that.

I do not find it our task to give an assessment of Geordian example, since each state in particular period of time and in particular conditions puts tasks before itself and gives solutions to them. But let me mention one very important fact, that, inter alia in Georgia, making use of “qvevri” solution, any producer shall mandatorily apply its separate self-brand. “Qvevri” cannot be everyone’s trademark without other distinguishing and identfying mark.

Another pecularity with this respect: Karas is an Armenian word, in international markets the latin lettered KARAS is not identified with its Armenian meaning, since it has other name in other languages, eg. Qvevri. In the whole world around, wherever the wine with Karas trademark is represented, it is perceived exceptionally as a trademark and our main task is to protect our trademark and thereby to protect our market.

Zorik Gharibyan announced that he is ready to continue the fight in international courts. Are you ready for such a scenario?

I think any business entity shall act in a fair competition environment. Such assertion that Karas should be owned by all, already means that the confusion did obviously took place in the market, which has served as ground for voiding the registration of the trademark confusingly similar thereto. The rest are words which are often offensive for other persons and producers. As to the fight and its continuation, then it should be a fight for establishing  decent attitude to each other and acting rightfully. The Armenian wines, inter alia, the products by “Saki and Sons” company are rather good. The fight should be for increase of quality and promotion of our wines in the international and Armenian markets.

Ara Tadevosyan talked to Armen Ter-Tachatyan