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News-Archiv

01.08.2009
Weißrussland, News-Archiv

Comments on Trademark Law in Belarus

Comments on the Law of the Republic of Belarus "About Amendments and Supplements to the Law of the Republic of Belarus 'About Trademarks and Service Marks'" of July 15, 2009


by D. D. Lando (Doctor of Law, Minsk, Republic of Belarus)

The Law of the Republic of Belarus “About Amendments and Supplements to the Law of the Republic of Belarus “About Trademarks and Service Marks” of July 15, 2009 (hereinafter referred to as the Law) coming into force on January 25, 2010 contains significant amendments to the present registration system, the systems of the legal protection, the use of trademarks and service marks and protection of rights of trademark and service mark owners in comparison with the former Law of the Republic of Belarus “About Trademarks and Service Marks” of February 5, 1993 in the edition of the Law of the Republic of Belarus of October 27, 2000 (the latest amendments were carried out on May 7, 2007).

In order to protect the interests of the applicants the Law provides that applications for the registration of trademarks and service marks, the examination of which has not been finished by the date of coming into force of the Law, shall be examined by the patent authority (State Authority “The National Centre for Intellectual Property”) according to the norms that were effective before coming into force of the Law (Art. 2).

The procedures with regard to the examination of applications for the registration of trademarks have been adjusted to the requirements of the Law of the Republic of Belarus “About the Main Principles of Administrative Procedures” of October 28, 2008.

The definition of a trademark and service mark has been amended. A trademark and service mark (hereinafter referred to as trademark) shall be considered a designation suitable for distinguishing goods or services (hereinafter referred to as goods) of one person from goods or services of the same type of other persons. Previously, trademarks have been defined as designations suitable for distinguishing goods or services (hereinafter referred to as goods) of one legal or natural person from goods or services of the same type of other legal or natural persons. The following signs are subject to registration as a trademark: word signs including personal names, combinations of colors, letter, numeral, graphical and three-dimensional signs including the shape of goods or of their packaging as well as combinations of such signs. Other signs are registrable as trademarks in cases provided by the legal acts of the Republic of Belarus (i.e. the Constitution of the Republic of Belarus, laws of the RB, decrees and ordinances of the President of the RB).

The Law provides that trademarks can be registered in the name of organizations or persons. Thus, the circle of persons having the right to file an application for the registration of trademarks has been extended by organizations, which are not legal persons.

Some absolute grounds for refusal of registration have been specified. Not allowable is the registration of trademarks consisting exclusively of signs or indications, which are used to designate the kind, quality, quantity, property, purpose and value of goods as well as the time and place of production thereof and the process of the production or distribution thereof.

The definition of the relative grounds for the refusal has been significantly amended.

Article 5. Relative grounds for refusal of protection

1. There shall not be registered as trademarks signs, which are identical with or confusingly similar to
1.1 trademarks for the goods of the same type which are registered or for which registration is applied for in the Republic of Belarus in the name of other persons and which have an earlier priority;
1.2 trademarks of other persons which are protected in the Republic of Belarus on the basis of international agreements of the Republic of Belarus with regard to the goods of the same type;
1.3 trademarks of other persons which in the Republic of Belarus have been considered well known in the order established by the patent authority with regard to any goods.

2. Signs which are confusingly similar to trademarks listed in Item 1 of the present Article are subject to registration, if there is submitted a written consent of the owner of the trademark.

3. The registration as trademarks with regard to any kind of goods is not allowable for signs, which are identical with or confusingly similar to designations of origin which are protected in the Republic of Belarus with the exception of the case, when such a designation is included as a not protected element in the trademark, which is to be registered in the name of a person having the exclusive right to said designation, if the registration of the trademark is applied for with regard to the goods, for which identification the designation of origin has been registered.

4. The registration as trademarks with regard to the goods of the same type is not allowable for signs, which are identical with or confusingly similar to company names (individual elements of said names) protected in the Republic of Belarus, the right to which has arisen in the Republic of Belarus for another person prior to the priority date of the trademark applied for.

5. The registration as trademarks is not allowable for signs, which are identical with
5.1 industrial designs, the right to which in the Republic of Belarus is owned by another person, if the industrial design has an earlier priority than the trademark applied for;
5.2 name of a work of science, literature or art, which is known in the Republic of Belarus, characters or citations from such works, work of art or a fragment thereof without consent of the right owner, if the right to the corresponding work has arisen prior to the priority of the trademark applied for;
5.3 name of a mass media registered in the Republic of Belarus without consent of the promoter(s) for the goods of the same type;
5.4 surname, name, pseudonym or a sign derived therefrom, portrait or facsimile of a person known in the Republic of Belarus without consent of the person or his legal successors.

6. The fact, whether signs or persons indicated in Items 5.2 and 5.4 of the present Article are known, shall be established by the patent authority on the priority date of the sign applied for registration as a trademark.

The priority of the trademark shall be established according to the date of filing the application with the patent authority. The filing date of an application is the date of receipt of the following documents by the patent authority:

1. application for the registration of a sign as a trademark with an indication of the applicant and his place of location or place of residence;
2. the sign applied for;
3. the list of goods, for which the registration has been applied, as well as if possible an indication of the corresponding class(es) according to the International Classification of Goods and Services for the registration of trademarks. Whereas earlier the applicant was obliged to classify the goods and services applied for, now, if the applicant does not indicate the class(es), the patent authority shall classify the goods according to the International Classification of Goods and Services for the registration of trademarks.

The requirements to the application documents, the procedure of the examination of the application and taking a decision upon the results of the examination shall be established by the Council of Ministers of the Republic of Belarus.

After filing the application any person has the right to inspect the application documents submitted on the date of filing thereof. The inspection procedure of the application documents and the issue of copies of such documents shall be established by the Council of Ministers of the Republic of Belarus.

The Law provides that the examination of an application shall be carried out by the patent authority and comprise the preliminary examination and the examination of the sign applied for, which shall be conducted according to the Law “About trademarks and service marks” and the Rules established by the Council of Ministers of the Republic of Belarus.

If the documents submitted or data indicated therein do not comply with the established requirements, the patent authority issues an office action inviting the applicant to submit materials drawn up correctly within a three months term from the date of receipt of the office action. Upon request of the applicant the three months term can be extended up to twelve months provided that the request has been submitted before the expiry of the three months term. If the applicant does not submit the requested materials or a request for an extension of term, there shall be issued a decision to refuse the registration of the trademark. Said rules shall be applied in the examination of the sign applied for after the preliminary examination has been finished.

The appeal procedure against decisions on applications has been amended. If the applicant does not agree with the decision of the preliminary examination to dismiss the application or the decision to refuse the registration of the trademark, which have been taken because the materials requested by the examiner had not been submitted (Art. 10 Item 3 of the Law “About trademarks and service marks”) or the decision taken as a result of a re-examination of the sign applied for, the applicant has the right to lodge an appeal to the Appeal Council at the patent authority (hereinafter referred to as the Appeal Council) and/or to the court within one year from the date of receipt of the decision.

An appeal shall be examined within one month from the date of receipt by the Appeal Council. The procedure of the examination of appeals by the Appeal Council shall be established by the Council of Ministers of the Republic of Belarus.

For the first time the law provides that a trademark, the duration of which has been expired, may be registered in the name of a new owner not before the expiry of a six months term from the date of the expiration of the duration. If the former trademark owner has filed to the patent authority a revocation of protection for his trademark, the registration of said trademark for a new owner can succeed before the expiry of the six months term.

The law comprises a new chapter I-1 “Well-known Trademarks”. Thus, regulations on well-known trademarks have been reflected in the legislation of the Republic of Belarus, i.e. the Law provides for a definition of a well-known trademark and regulates the procedure of considering a trademark notorious. The duration of well-known trademarks is not limited.

The number of cases which are considered legal use of a trademark has been increased significantly. The use of a trademark shall constitute the use thereof by the owner or a person, who has been granted the right to use the trademark by a license agreement, by affixing the trademark to the goods, for which the trademark has been registered, as well as to the labels, the packaging, by using the trademark in Internet (including domain names), in the documentation with regard to putting the goods on the market, when executing works or rendering services, or by using the trademark in a form differing in elements which do not alter the distinctive character of the trademark and does not limit the legal protection conferred on the trademark.

Important is the fact that the Law has amended the duration of the grace period for use of a trademark, which was former 5 years. From January 25, 2010 the legal protection of a trademark may be cancelled with regard to all goods or a part thereof, for which individualization the trademark has been registered, because of non-use of the trademark without proper reasons within any continuous period of three years after the registration thereof. An application for the cancellation of the legal protection of a trademark because of non-use may be filed by any person to the Supreme Court of the Republic of Belarus after the expiry of said three years provided that the trademark has not being used up to the date of filing said application. Unfortunately, the Law does not contain any transitional provisions with regard to the amendment of the grace period for use.

For the first time the Law provides that the right to a trademark can be subject to pledge.

The procedure of the registration of an agreement of cession of rights to a trademark, a pleadge agreement and a license agreement has been altered to the procedure of notifying about an agreement of cession of rights to a trademark, a pledge agreement and a license agreement. The parties of an agreement of cession of rights to a trademark, a pledge agreement and a license agreement shall notify the patent authority about making, amending and expiry of such agreements in the order established by the legislation of the Republic of Belarus.

The procedure of revocation of the legal protection of a trademark (Art. 25 of the Law “About trademarks and service marks” with amendments of July 15, 2009) has been amended. There has been specified that granting legal protection to a trademark can be revoked totally or partially during the duration of the legal protection, if the actions of the trademark owner with regard to the registration has been considered unfair competition by an antimonopoly authority or a court. Earlier it was provided that the actions of the trademark owner with regard to the registration have had to be considered unfair competition in the established order.

The procedure of the examination of oppositions against the grant of legal protection to a trademark by the Appeal Council at the State Authority “The National Centre for Intellectual Property” shall be established by the Council of Ministers of the Republic of Belarus (earlier the competent authority for such cases was the patent authority).

There has been tried to specify the reasons for the termination of the legal protection of a trademark.

The former wording “the validity of the registration of a trademark expires on the basis of the liquidation of the legal person or death of the natural person, i.e. the trademark owner, if the rights to the trademark have not been transferred to his legal successors” has been amended to “The legal protection of a trademark expires on the basis of the termination of the activity of the organization of the death of the citizen”.

The legislator of the Republic of Belarus has paid attention to the peculiarities of the expiry of the legal protection of well-known trademarks. The legal protection of well-known trademarks expires upon a decision of the Appeal Council, which has been taken upon a request of any person, if the trademark has lost its well-known character in the Republic of Belarus among the corresponding consumers with regard to a definite group of goods, for which the trademark had been considered well-known. The decision of the Appeal Council can be appealed to the Supreme Court of the Republic of Belarus within one year from the date of receipt thereof by the person, who has filed the request, or by the owner of the well-known trademark.

For the first time the Law provides for a definition of counterfeit goods, labels and packaging of goods. Goods, labels or packaging shall be considered counterfeit, with regard to which (on which) there has been used illegally a trademark or a sign confusingly similar thereto.

The method of protecting civil rights against the illegal use of a trademark by transferring the goods affixed with the trademark to the injured party has been cancelled.

According to the Law, the infringer shall be charged with the costs for
- the removal of a trademark or a sign confusingly similar thereto, which have been used illegally, from the goods or the packaging thereof and (or) destruction of depictions of the trademark or a sign confusingly similar thereto;
- the confiscation or destruction of goods, with regard to which the trademark has been used illegally.

The relation between the Law “About trademarks and service marks” and the international agreements of the Republic of Belarus has been specified. If the international agreements of the Republic of Belarus provide for other regulations than those of the present Law, the regulations of the international agreement shall be applied.