Summary of decisions in Belarus

There is now a Patent Court in Belarus, which is the last instance for problems of registration and opposition. Appeals against the decision of the Appeal Board of the Patent Office are filed to the Patent Court. The Court decided that the decisions of the Board of Appeal of the Patent Office are correct establishing that words being descriptive or lacking distinctiveness due to a lengthy use on the territory of Belarus are not protectable. As an example they cited the mark "Prima", which was rejected for the goods of class 34 as the cigarettes were sold in Belarus even during the Soviet times. The applicant argued that "Prima " is a musical term and is translated from Latin as "the first", which has nothing to do with the quality of the goods as just the first figure. The Court argued that "Prima" means higher quality and is so descriptive and enlightens the quality of the goods. The board of Appeal was right with the statement that the word lost the registrability as it was used for a long time for cigarettes, local ones and foreign ones from different sources starting in the years 1946 and1947. At the moment there are four producers and suppliers for the cigarettes of the mark "Prima". "Prima" is used by more than 30 firms. As far as the protection of colours is concerned the Court feels that as the number of colours is limited, there cannot be a monopoly for one of the basic colours of the spectrum, specifically green for instance. There was a dispute between two parties whereby an American firm and an English firm asked for the cancellation of the trademark "Express" in Cyrillic of a German firm and the Board of Appeal denied the similarity between the mark "Express" in Cyrillic and the "State Express 555" in Latin. The board of Appeal argued that the "State Express 555" consists of three different parts whereby the focus is on "555" and both marks are phonetically and visually different. The Court asked for a linguistic expertise. The outcome was that Interalia falsified the logical accentuation on the word "Express". The rest of the components are secondary, therefore both words in both languages have the same meaning: so the client won. In another case the cancellation of an international registration due to non-use in Belarus was decided. There the plaintiff has to show his juridical interest in the cancellation of a mark for certain classes of goods or services. A German firm was the plaintiff asking for the cancellation of a international registration for classes 09, 16, 18, 20, 27, 28, 35 and 42. They could not show their interest in the cancellation. The defendant could not show that he used the mark in those classes in the last five years. The plaintiff sold only cigarettes of high quality but had no other business activities in Belarus and in the commercial register extract of the town Hamburg there was no hint of different activities of the firm. Only the class 34 and partly the class 14 were cancelled. The Court determined the five years period of use. The Court decided that the five years period started with the registration of the mark in question in 1993 and ended in 1998; and in the intermediate time between 1998 and the court decision on November 2001 the trademark owner had no exclusive rights anymore. There were some cases with patents as well where the inventor asked for preliminary protection against the production and use in July 1995. The Court stated that the preliminary protection started with the publication of the application in April 1995. The plaintiff only filed the application at the Patent Office but the patent was granted 15 months later, was registered in November 1996 and published in March 1997: so the plaintiff had no preliminary protection at all in July 1995. Finally there was a case of the right of an inventor to file an application on his behalf. The Court decided that the inventor presented his invention at a round table in his firm but the employer did not react as there was no written presentation of the invention to the employer. After a while the employee filed an application on his own name and sold it. The Court decided that a presentation of an invention at a round table in the presence of the management of the firm is enough and no written confirmation is necessary anymore.

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