| Text of the oral presentation “Legal Protection of Trademarks in the Republic of Belarus” given by Katerina Zabello at the Conference “Trade Marks in Russia and CIS” organized by Euroforum International which was held in the conference hall of Ararat Park Hyatt hotel on 28-29 May, 2003. |
1. Registration of Trademarks
The necessity to register trademarks is apparent and does not need to be proved since a recognized trademark brings popularity to a product, as over 90 % of customers in the whole world while making a choice in favor of that or another product are guided by a recognizable trademark.
The role of trademarks in Belarus is continually increasing. The number of applications filed with Belarussian Patent Agency which is currently called a National Centre of Intellectual Property of the Committee on Science and Technology under the auspices of the Council of Ministers of the Republic of Belarus is growing each year. At the same time we can finally observe a tendency of an increase of a number of local applicants. In the year 2001 an application was filed with Belarusian Patent Agency to register an audio trademark which is the only example as of now showing an intention to register such an object of industrial property in non-graphical form. At the same time, the total number of registered trademarks in Belarus is not that great, whereas the majority of registered trademarks belong to foreign applicants. Just a little over 50 000 trademarks have been registered in Belarus and approximately 15 000 were registered by the Belarussian applicants.
One of the reasons of a rather small number of registered trademarks could be seen in the previously effective legislation of the Republic of Belarus on taxation of objects of intellectual property. Until the year 2000 the Belarussian companies did not have interest in registration of objects of intellectual property as a type of company’s asset, since immediately after registration of such objects the latter would become subject to VAT and a profit taxation. This conclusion was confirmed by an experiment which was conducted at certain companies of the Ministry of Industry of the Republic of Belarus during the two year period whereby the objects of intellectual property were entered into a civil circulation and were followed up by an analysis of taxation consequences. The experiment showed that as soon as objects of intellectual property were registered and appraised, 42 % of their market value had to be withdrawn for taxation purposes despite the fact that the object did not even start to bring profit. In order to solve this problem the President of the Republic of Belarus issued an Edict which set forth tax exemption from profit related to registration of an object of intellectual property upon its registration in the capacity of intangible assets as well as provided for exemption for payments of VAT, tax on profit and tax on profit from circulation. Most likely this measure was the main ground for the increase of the amount of registration of trademarks during the last couple of years. In particular, after the legislation on tax exemptions became effective the Minsk Automobile Factory appraised its trademark for the amount of 200 000 million US Dollars. Obviously, such an appraisal would be impossible for a state-owned enterprise had there been a duty to make VAT and profit tax payments.
Legislation. Until, the national legislation of the Republic of Belarus was introduced Belarussian producers protected their trademarks pursuant to the procedure approved during the Soviet Union times. The same practice was employed by other post-USSR states. Back then the patent agency which conducted registration of trademarks was under the auspices of the State Committee of Inventions and Discoveries located in Moscow. After gaining independence by the Republic of Belarus the functions of the State Committee of Inventions and Discoveries in the Republic of Belarus were transferred to the State Patent Agency, later on named as a State Patent Committee of the Republic of Belarus. Starting from the year 2002 and until present this functions were transferred to mentioned earlier National Centre of Intellectual Property of the Committee on Science and Technology under the auspices of the Council of Ministers of the Republic of Belarus. Committee on Science and Technology is a new state agency in the area of science which was created in the Republic of Belarus in the spring 2002 by means of separation of the existing earlier Committee on Science under the auspices of the Council of Ministers of the Republic of Belarus. At the same time the President of the Republic of Belarus stipulated that the newly organized Committee shall include a state agency under the name of National Centre of Intellectual Property which will provide for protection of rights related to the objects of intellectual property.
The Law on Trademarks (service marks) became effective on 5 February 1993, i.e. approximately at the same time a similar law was passed in the Russian Federation. The provisions of the Belarussian Law are in many ways identical to the provisions of the Russian Law “On Trademarks, Service Marks and Geographic Names of Origin of Goods” dated 23 September 1992, inter alia in the part of setting forth the procedure for registration of trademarks. The original text of the Belarussian Law contained a number of provisions of the legal act effective during the USSP times. The Law was considerably altered in October 2000 upon the outcomes of the analysis of the respective law of the Russian Federation.
The procedure of registration. Pursuant to the Law, a trademark may be registered on behalf of both legal entity and a physical person. As opposed to the Russian practice whereby a possibility of registration of trademarks is limited to legal entities and physical persons engaged in commercial activity, the Belarussian law provides the right of registration to any legal entity including noncommercial organization and any physical persons. It is necessary to note, that broadening of a number of persons entitled to register a trademark in the Republic of Belarus took place quite recently. Until 27 October 2000 the list of persons was limited by analogy set forth by the respective Russian regulation. Filing of a trademark application is followed by payment of state duty in the amount of three basic amounts what approximately equals 21 US Dollars. In the event more than three classes of goods are registered each further class of goods is subject to the payment of 0.2 of the basic amounts (approximately 1.5 US Dollars). Belarussian applicants may file an application for registration of a trademark by themselves or via their representatives, whereas foreign applicants can file an application only via patent agents. It is worth mentioning that the number of foreign applicants is decreasing whereas the number of local applicants in contrario tends to grow.
This may be dictated by the differentiated schedule of fees for foreign and Belarussian applicants: payment of three basic amounts by a local applicant is considerably lower than 200 US Dollars that have to be paid by a foreign applicant. Such an approach seems to be a problem in light of one of the conditions established for Belarus in order to join World Trade Organization, whereby the legislation of the Republic of Belarus should be put in conformity, inter alia by means of setting forth a single standard for payment of fees by national and foreign applicants.
The application for registration of a trademark should contain the following information:
- application for registration of a sign as a trademark with reference to the applicant and the location of his residence;
- the sign being filed for registration;
- list of goods and services with regard to which registration is sought being grouped under classes of the International Classification of Goods and Services.
The following documents should be enclosed with the application:
- the document proving payment of state fee in the required amount;
- the document, proving the authority of a patent agent if application is filed via patent agent;
- provision on a collective mark, if such application is filed.
The procedure of preparation and filing application for registration of trademarks is set forth in detail by the respective Rules, approved by the Order of the State Patent Committee of the Republic of Belarus # 7 dated 23 February 2001. This legal act has also approved the Rules of Conducting Registration of a Trademark (Service Mark) by the State Patent Agency of the Republic of Belarus . The procedure of reviewing application for registration of a trademark (service mark) is regulated by the respective Rules approved by the Resolution of the State Patent Committee of the Republic of Belarus # 3 dated 31 August 2001 .
Priority of a trademark is established by the date of filing an application to the patent agency. Priority of a trademark may also be established by the date of filing the first application for a trademark in the foreign state – member of the Paris Convention for the Protection of Industrial Property of March 20, 1883 (as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at the Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, and as amended on October 2, 1979) (conventional priority)) if the application was filed to the patent agency during the six month period from the given date. Priority of a trademark placed on displays of official or officially recognized international exhibitions on the territory of one of the States – Parties to the Paris Convention on Industrial Property may be determined by the date of the beginning of an open demonstration of the display at the exhibition (exhibition priority) if the application is filed to the patent agency within six month from the given date. The applicant who is willing to use the right of conventional or exhibition priority must indicate it immediately upon filing an application for registration of a trademark or during the two-month period from the date of the filing of an application to the patent agency and enclose all necessary documents proving validity of such a claim or provide the patent agency with the necessary documents not later than three month from the date of filing an application with the patent agency. Finally, the priority of a trademark may be established by the date of the priority of the international application for registration of a trademark filed pursuant to the international treaties the Republic of Belarus is a party to.
Examination of a trademark includes a preliminary examination and examination of the sign filed for registration. On the grounds of the latter examination a conclusion is made on possibility or impossibility or inadmissibility of such registration. Preliminary examination of the application takes approximately two month. The main examination may take as long as two years. Upon conducting of a preliminary examination the applicant may be advised to incorporate amendments and alterations into materials of the application. Upon the outcome of the preliminary examination a decision is made on admission of the application for consideration or in denial in admission for consideration. Upon admission of the application for consideration the date of filing as well as conventional or exhibition priority are determined. Throughout the examination of the filed sign the priority of a trademark is determined if it was not determined during the preliminary examination and the conformity of the filed sign with the requirements of the Belarussian legislation is determined.
If an applicant does not agree with the outcome of examination, the latter is entitled to file a petition for conducting re-examination with the patent agency during the three month period from the date of receiving the outcome. If the applicant does not agree with the outcome of the preliminary examination on denial in admission of the application for registration or if he/she does not agree with the outcomes of the second examination the applicant is entitled during the three month period to file a petition with the Board of Appeal of Patent Examination under the auspices of the patent agency. The decision of the Board of Appeal may be appealed by the applicant in the Supreme Court of the Republic of Belarus during the six month period from the date of the receipt of denial.
On the grounds of the decision on registration of a trademark the patent agency upon payment of the respective fee registers a trademark in the State Register of Trademark and Service Marks of the Republic of Belarus during one month period. Issuance of the trademark certificate is carried out by the patent agency during one month period from the date of registration of a trademark in the Register.
Registration of a trademark is effective for a ten year period from the date of the filing of the application with the patent agency. The term of registration may be prolonged for additional ten years at a time upon the request of the applicant, filed during the last year prior to expiry of the registration. The applicant is entitled to file for prolongation of the registration during six months after the registration has expired upon payment of an additional fee.
In 1993 thousands of trademarks registered under the Soviet Union procedure were re-registered in Belarus pursuant to the Law of the Republic of Belarus “On Trademarks (Service Marks)”. Their registration will expire in the current year 2003 - something the attention has to be paid to by all trademark holders who re-registered their trademarks in Belarus ten years ago. Especial attention should be paid to a necessity of preliminary preparation of documents in those cases whereby information relating to holder of registration has changed (the name, address, other information) since such changes have to be proved in due manner by the attested documents enclosed to the application for prolongation of the registration. In 2003 the Committee on Science and Technology of the Council of Ministers of the Republic of Belarus approved new Rules of prolongation of a term of registration of a trademark (service mark) . This document among general issues pertaining terms of filing an application for prolongation of the trademark registration sets forth a list of documents necessary for registration.
Legal and physical persons are entitled to register a trademark in the foreign state or conduct its international registration. It is worth mentioning that approximately 4000 applicants employ the international procedure of registration of a trademark annually.
Once the trademark was registered the certificate is issued which establishes priority of a trademark, exclusive right of trademark owner with regard to goods indicated in the certificate and contains image of a trademark.
Prohibition and limitation of registration.
The following trademarks can not be registered:
- without any distinction;
- that are universally used for defining a certain type of product;
- widely accepted terms and symbols;
- consisting exclusively from terms and indications, used for determining type, quality, quantity, characteristics, purpose, value of goods, as well as a place and the time of the manufacturing and sale;
- providing for a shape of goods or packaging, defined exclusively or mainly by the essence and nature of goods, necessity to achieve certain technical result, considerable value of goods.
All signs mentioned above may be included in trademark in the capacity of unprotected elements, under a condition that such signs do not have a predominant position in a trademark. The given grounds on inadmissibility of registration of a trademark are fully identical to the grounds, envisaged by the Russian legislation.
Here is an example of denial in registration of a trademark due to the reason that the registered trademark was rather descriptive, since it referred to the quality of goods.
In the autumn 2001 the Patent Chamber of The Supreme Court of The Republic of Belarus reviewed petition of the German company appealing the decision of the Board of Appeal of Patent Examination Under the State Patent Agency on denial in registration of a trademark “Prima” pertaining 34th class of good (tobacco products). The decision of the Chamber did not uphold the appeal, since according to the Chamber the word “Prima” is of descriptive nature and depicts quality characteristics of goods (“prima” – the highest quality”) and therefore such a trademark can not use legal protection.
Here is another example of a court decision in denial of registration of a trademark, but on another ground – due to the lack of distinctive characteristics of the trademark.
In the summer 2001 the Patent Chamber of The Supreme Court of The Republic of Belarus issued a decision on denial on registration of an international trademark on the territory of the Republic of Belarus on the ground that the sign of a green rectangular does not bare distinctive characteristics. The applicant, the Italian company tried to appeal the decision of the Board of Appeal of Patent Examination under the State Patent Agency and claimed that trademark “Benetton” can not be viewed as any other sign of the goods applied for. The green rectangular is associated in the world with the company since the latter has its name in the sport teams, advertises its trademark by means of placing it on the sport wear, racing cars and other numerous commercials. Nonetheless, despite the given arguments the Patent Chamber of the Supreme Court issued a decision on denial in upholding the appeal and kept the decision of the Board of Appeal effective. According to the courts view, a geometric shape – rectangular does not have any distinctive characteristics. As for the protection of the color, the Board though that since the number of colors is limited, the applicant can not be entitled to a monopoly right for possession of one of them.
Pursuant to the Law it is not possible to register trademarks, containing signs relating to the country’s coat of arms, flags, logos, official names of countries, logos and short or full names of international intergovernmental organizations, official controlling marks, guarantee marks or a marks of assay, awards and other signs of distinction or signs incredibly identical to them. Such signs however may be included in the trademark without having its legal protection upon the receipt of approval of the respective competent agency or owner.
It is also impossible to register the following sign as trademarks:
- misleading signs or signs that may possibly confuse the customer with regard to the goods, the place of its production and a manufacturer;
- representations containing or referring to the place of origin of wines or other strong alcoholic beverages, protected under international agreements Belarus is a party to, defining wine or alcoholic beverages that are not originated from such places;
- representations contradictory to the public order and principles of moral and humanity.
As compared to the Russian law, the Belarussian legislation contains additional grounds on inadmissibility if registration of signs referring to the places of origin of alcoholic beverages, that do not originate from such place.
The following signs can not be registered as a trademark if they are identical or confusingly similar with:
- registered or applied for registration in the Republic of Belarus trademarks belonging to other persons who possess an earlier priority of a trademark with regard to the homogeneous goods;
- trademarks of other persons, protected in the Republic of Belarus on the grounds of international agreements relating to the homogeneous goods;
- trademarks of other persons acknowledged as well-known with regard to any goods.
Registration of a sign, similar or incredibly identical if the registered trademark is allowed under a condition of presenting a written consent of the owner of such a trademark.
A trademark can not be registered if it reproduces:
- famous in Belarus trade names (or their parts) belonging to other persons;
- industrial models belonging to other persons, if the industrial model has an earlier priority as compared with a trademark;
- representations of origin of goods protected in the Republic of Belarus;
- representations of famous in Belarus pieces of scientific works, literature and art, quotations or personages from them, pieces of art or its fragments, names of famous periodicals if consent from the holder of copyright or his/her legal successor was recieved.
- representations of system of certification, protected under a procedure set forth by the legislation.
Collective marks. The Belarussian legislation provides for a possibility of registration of collective marks by associations uniting legal entities. Collective mark is a trademark of an association of legal entities aimed at marking the goods manufactured or sold by the association which share the same quality and other common characteristics. Among other documents required for the registration of a collective mark a Provision on a collective mark should be enclosed, containing the list of persons entitled to use this mark, the purpose of its registration, the list, model quality and other common characteristics of goods, which shall be defined by the collective mark, conditions of its use, the procedure of control over its use, liability for violation of a Provision on a collective mark.
Invalidity of registration of a trademark. Registration of a trademark may be deemed invalid:
- fully or partially during the term of its effectiveness, if it was conducted in violation of the requirements on denial in its registration;
- fully or partially during the five year period from the date of publication information on registration of a trademark in the official bulletin due to the reason of similarity or identity with registered or well-known trademarks;
- during the whole period of its effectiveness in the event of turning of a trademark to the representation, that has become commonly used as a sign for a certain type of goods.
Here is an example of a possibility of declaring invalid registration of a trademark, identical or confusingly similar to the trademark previously registered on the territory of the Republic of Belarus.
Patent Chamber has reviewed an action of English company against German holder of rights for declaring invalid registration of “Express” trademark on the territory of the Republic of Belarus, since the applicant is a holder of a trademark of “State Express 555” registered under the same class of goods (34th class, tobacco goods) identical or confusingly similar in his view to the “Express” trademark. The Chamber upheld the appeal as it believed that the logical emphasis is placed on the very word “Express” in the complicated phrase “State Express 555”and that any reader concentrates his/her attention on that very word. Besides the English word “Express” and Ukrainian word “Express” share external similarity in the coincidence of letter.
At the same time, according to our information a similar dispute was solved totally different in the Russian Federation. The claim for termination of registration of “BOST” trademark similar to the trademark “BOSS” was not upheld, since the trademark “BOSS” contains three words: “BOSS Hugo Boss”. The court considered that since the trademark consists of three words, it can not be similar or incredibly identical to the trademark which is comprised of one word. In other words, the court did not take into account logical emphasis of the customer in the given dispute.
Termination of registration of a trademark. The term of effectiveness of trademark registration is terminated on the grounds of:
- expiry of the term of effectiveness of the registration;
- uninterrupted nonuse of a trademark during any five years from the date of its registration in the Register on the grounds of the decision of the Supreme Court of the Republic of Belarus issued upon a claim of any person, filed during the period of such nonuse;
- use of a collective mark with regard to goods that do not share the same quality or any other common characteristics;
- written application on refusal form registration by the holder of a trademark;
- liquidation of a legal entity or death of a physical person – the owner of a trademark if the trademark was not transferred to his/her legal successors.
Registration of a trademark is terminated by the patent agency upon termination of its effectiveness or declaring it invalid. A record on termination of the registration is placed in the Register and is published in the official bulletin.
The court practice of the Republic of Belarus followed the path, whereby the applicant who claims a pre-term partial termination of the trademark registration on the territory of the Republic of Belarus due to its long-term nonuse by the owner must prove before the court existence of a legal interest in the solving of the dispute in his favor.
In November 2001 a German company brought an action to the court on a partial termination of the international registration of six trademarks belonging to the German company «HUGO BOSS AG» with regard to the classes 09, 14, 16, 18, 20, 27, 28, 4, 35 and 42 having stated that the respondent does not use the given trademarks on the territory of the Republic of Belarus during the five year period from the date of the registration without any reasonable excuse. The applicant has stated in the statement of claim that it has an interest in pre-term partial termination of the effectiveness of trademarks, since it has the intention to start supplies of jewelry, sport gear, perfume and cigarettes bearing the name BOSS. Having analyzed the arguments of the applicant, the court established the all six trademarks with regard to the respective classes in deed weren’t used by their holder during a five year term. At the same time, despite establishing this fact the Chamber did not uphold the applicant’s claim for a pre-term termination of the trademark registration in all classes except the class 14 and 34, since the applicant did not provide any evidence of a legal interest in the outcome of the case. The main activity performed by the applicant was production of tobacco and tobacco accessories i.e. goods named in the two given classes exclusively.
2. Rights to a Trademark, Assignment of Rights
Pursuant to the Belarussian legislation, a trademark owner is entitled to exclusive use and disposal of a trademark as well as right to prohibit its use by third parties. Nobody can use a trademark which is protected on the territory of the Republic of Belarus and with regard to which a certificate has been issued without consent of its owner. Infringement of rights of a trademark owner is deemed to be unauthorized production, use, import, offer to sale, sale or any other import into civil circulation or storage for such purposes of a trademark or goods marked by such a trademark or by a representation identical or confusingly similar with relation to homogeneous goods as well as inhomogeneous goods pursuant to the international agreements Belarus is a party to.
The right for use of a trademark may be granted by the owner of a trademark (licensor) to another person (licensee) under a license agreement for all or a part of goods in relation to which the trademark is registered. License agreement should contain a condition whereby, the quality of goods of the licensee shall not be of less quality than that of a licensor and that a licensee shall perform control over execution of this condition.
The right to a trademark may be assigned to by the owner under a contract to both legal entity or a physical person in relation to all or a part of goods, for which it has been registered. Assignment of rights to a trademark is not allowed, if it may become the reason of misleading customers with regard to goods or its manufacturer.
The right for use of a collective mark can not be granted to third persons.
The court practice of the Republic of Belarus proves that not all judicial organs view existence of a license agreement or a trademark assignment agreement as an obligatory condition of authorization of its use. As an example we would like to analyze the case, reviewed by the Patent Chamber of the Supreme Court of the Republic of Belarus in June 2001:
A Belarussian limited liability company stated in the statement of claim that it is an owner of two trademarks, registered in the 16th class (periodicals, including newspapers). In violation of exclusive rights of the owner, a Belarussian joint company exercised use of one of its trademarks by literally reproducing the name and the color of one of the trademarks in the name of a free advertisement newspaper without entering into the license agreement or an agreement of assignment of trademark rights. The court determined that since 1996 use of the trademark by the respondent was conducted upon the consent and permission of the owner itself and it was not until later on that the parties failed to achieve agreement upon negotiating a number of conditions of a license agreement for use of a trademark which subsequently became the ground for denial in use of a trademark. The respondent objected to the lawsuit referring to the embodied in the Belarussian law principle of exhaustion of rights, stating that first issues were entered into civil circulation by the applicant itself, and consequently he is not entitled to bring claims to the respondent. The court satisfied the claims brought by the applicant. At the same time it was not done due to the reason of absence of a license agreement between the parties since the marked publication were entered into civil circulation not by the applicant but by the enterprise that distributed the newspaper (Belsouzpechat, etc). At the same time the court sought arguments of the applicant to be flawed that despite the consent of the applicant at the initial stage, valid use of the trademark was only possible upon entering into license agreement or agreement on assignment of trademarks rights. The court reached a conclusion that use of a trademark upon having consent and a permission of the owner– something which was the case for a long term period of time was lawful and that entering into a license agreement should not be deemed as an obligatory condition of use of a trademark.
The agreement on assignment of rights to another legal entity or a physical person and a license agreement are registered in the patent agency and are valid for third persons from the date of their registration. State Patent Committee of the Republic of Belarus issued Order # 52 dated December 1998 approving the Rules of reviewing and registration of assignment agreements as well as agreements for providing a right for use of a trademark . Upon establishing compliance of the agreement filed for registration with the legislation of the Republic of Belarus the following issues are considered: whether the parties are authorized to for conclusion of a contract, whether a contract has an object (in particular reference to the of a trademark certificate number), whether the type of transfer of the trademark is determined (assignment or license), whether the amount of the transferred rights (the type of a license, the territory and the term of it effectiveness, the list of goods, works and services with regard to which the license is granted) as well as existence of contracts entered into earlier by the transferring party. Any alterations to the registered contracts are subject to registration.
Since pursuant to the Article 403 of the Civil Code of the Republic of Belarus a contract subject to state registration is deemed to be concluded from the moment of such registration, license agreements on providing rights for use of a trademark, trademark assignment agreements as well as any amendments thereto are considered effective only from the date of such registration.
It is also worth mentioning, that practice of registering authorities followed a path, whereby not only trademark assignment agreements or license agreements are subject to registration, but also agreements on distribution of goods, works, services of relating to a trademark owner on the territory of the Republic of Belarus (distributors agreement, etc) if such agreements contain considerable elements of a license agreement or a trademark assignment agreement.
Plainly speaking, the registering authority deals with a compound agreement containing elements of different contracts set forth by the legislation .
3. Ways of Legal Protection of Trademark Holders
As per statement of a number of international companies the amount of counterfeit products sold on the territory of the Republic of Belarus under shelter of well known trademarks constitutes somewhere from 25 to 50 per cent. This problem was discussed in the end of 2001 at an international seminar held in Minsk that was attended by the representatives of the State Committee on Science under the auspices of the Council of Ministers of the Republic of Belarus, State Patent Committee, WIPO, Coalition for the Protection of Rights of Intellectual Property as well as by patent agents of the Republic of Belarus. Participants of the seminar ascertained that it is possible to receive the necessary documents relating to protection of objects of intellectual property, including trademarks, yet the procedure of challenging the validity of issuance of such documents in courts is not fully effective. Nonetheless, the given procedure exists and the present review referred to a number of cases pertaining raised issue. Subsequently, at this moment the attention will be placed on the judicial organ, authorized to consider disputes relating to trademarks, namely a separate Chamber of the Supreme Court of the Republic of Belarus. Pursuant to the Resolution of Plenums of the Supreme Court and the Supreme Economic Court of the Republic of Belarus dated 22 June 2000 “On Differentiation of Jurisdiction of Cases Between General and Economic Courts”, the Patent Chamber of the Supreme Court of the Republic of Belarus is entitled to view disputes resulting from application of legislation regulating property and personal non-property related rights arising with regard to creation (revelation, inference), legal protection and use of the industrial property, as well as cases pertaining appeals on the decisions of the Board of Appeal of Patent Examination under patent agency.
The Board of Appeal of Patent Expertise under patent agency is a specialized division of the National Centre of Intellectual Property which conducts pre-trial settlement of disputes on issues relating to the protection of objects of industrial property, including trademarks. The Board of Appeal reviews appeals relating decisions of the preliminary expertise, appeals on denial in admission of the trademark application, objections against trademark registration. Moreover, the Appeal Chamber views applications for declaring trademarks well-known in the Republic of Belarus.
As it was stated earlier, pursuant to the Belarussian legislation, infringement of a trademark holder is deemed to be unauthorized production, use, import, offer to sale, sale or any other import into civil circulation or storage for such purposes of a trademark or goods marked by such a trademark or a sign similar or identical with relation to homogeneous goods as well as inhomogeneous goods pursuant to the international agreements Belarus is a party to.
The legislation of the Republic of Belarus as a main method of protection of civil rights of a trademark holder from illegal use of a trademark foresees a possibility to demand from infringer to stop illegal actions and compensation of damages caused by such an infringement.
Additional methods of protection of a trademark holder are as follows:
- removal from the package of goods of the trademark illegally used or removal of a representation, identical or confusingly similar with it and (or) destruction of the image of trademark or a sign, identical or confusingly similar to it.
- seizure or destruction of goods in relation to which a trademark was illegally used;
- levying a fine in favor of the victim party in the amount of the cost of goods;
- transfer of goods that employed illegal use of a trademark in favor of a victim party.
Consequently, for the purposes of elimination of revealed infringement and compensation of the damages caused by such an infringement, the victim party is entitled to file a claim to the judicial organs of the Republic of Belarus seeking the upper mentioned claims.
Especial attention should be paid to the matters of administrative and criminal liability for violation of legislation on trademark infringement. Pursuant to the Article 155-19 of the Code of the Republic of Belarus on Administrative Offences intentional use by a private entrepreneur or a functionary of a legal entity of trademark (service mark) of a competitor, or sale or an offer for sale of goods or services with use of the trademarks that were not registered in the Republic of Belarus causing confusion of products (goods, works, services) or activity with products or activities of a competitor - cause levying of an administrative fine. If these actions reoccur during the year after levying of the administrative penalty, the guilty person may be subject to criminal liability in the form a fine, deprivation of a right to hold certain positions or work in a certain profession, or be subject to disciplinary work for a period not exceeding two years, arrest for the period not exceeding three months or limitation of freedom for a period up to 2 years. Consequently if the nature of a trademark infringement additionally has characteristics of administrative offence or a crime, the victim party is entitled to initiate administrative or criminal proceeding against the guilty persons. Obviously culpable actions of the guilty persons may contain elements of other breaches of law and crimes (for example, smuggling – illicit import of counterfeit products to the territory of the Republic of Belarus), however within the scope of the given review only cases concerning trademark infringements shall be viewed.
In the event your company’s trademark is already registered on the territory of the Republic of Belarus by another person and there are no sufficient grounds to declare registration invalid while there is a potential possibility a trademark is well known it is possible to receive legal protection of a trademark by recognizing it as a well known trademark. The given situation is not artificially designed, as of now one of our clients that has faced the same situation has made such a choice.
The procedure of acknowledging a trademark well known has already been applied in Belarus. The first Belarussian company that referred to the given procedure and whose trademark was recognized as well known was “Milavitsa” (the company specializing in women underwear). The respective Rules of Recognizing a trademark as well known in the Republic of Belarus were approved in 2001 .
Well known trademark in the Republic of Belarus is a legal ground for denial in registration or declaring invalid registration of a trademark similar or identical to such a well known trademark in favor of a third party. The practice of the Republic of Belarus in this sense is similar to European practice, since certain CIS states still employ practice whereby a well known trademark is protected without registration only in one class of goods not in the whole spectrum of goods.
Decision on recognizing a trademark well known in the Republic of Belarus is made by the Board of Appeal of Patent Expertise under patent agency upon the outcomes of reviewing of the respective application. This application should contain information about circumstances allowing to make a conclusion that a trademark is well known. Such information may be inter alia proved by the following information:
- on the extent or recognition of a trademark in the respective sector of the society, in particular on recognizability of the trademark by current or potential consumers of the respective product;
- on duration, intensity and a region of use of a trademark on the territory of the Republic of Belarus;
- on duration, intensity and a region of conducting any activity on promotion of a trademark, including advertisement or popularization and promotion of goods and services on fairs and exhibitions of goods and/or services the given trademark is applied to;
- on duration and the number of registrations of a trademark in other countries of the world and/or the number of trademark application of the respective trademarks in foreign states to the extent, proving use or recognition of this trademark;
- on recognition of a trademark well known in foreign states inducing the country of origin of the trademark or the country of the trademark owner;
- on the value peculiar to this trademark;
- on the outcomes of a poll of customers of goods and/or services relating to the question of common knowledge of the respective trademark, conducted by a specialized independent organization.
Apart from that, the applicant may provide any other information relating to circumstances allowing for making a conclusion that the respective trademark is well known.
If information provided by the applicant proves to the required extent common recognition of a trademark at least in one of the sectors of society of the Republic of Belarus, such a trademark is then declared well known.
Finally, speaking about ways of protection of the trademark owners one can not refrain from noting the following. Development of strategy of protection of rights, sharing experience, solving of current questions and issues is always more effective if done as a result of uniting efforts and experience of the parties concerned. A tendency can be observed recently, whereby trademark owners voluntarily unite for the purposes of sharing experience in the area of promoting trademarks and solving other issues of their use, including but not limited to their legal protection. Back in 2000 in order to draw attention to the issues of creation and development of the local brands in the Republic of Belarus “Club of Belarussian Brands” was created. In the autumn of 2002 the Republic of Belarus hosted an international seminar “Creation and Promotion of a Trademark. Strategy of Achieving Heights of a Brand” which was conducted with the help of a joint company “Milavitsa” – the first Belarussian company whose trademark back then was a nominee for a special status of a well known trademark in the Republic of Belarus. As it was mentioned earlier the company was successful in receiving such a status. In March 2000 representatives of 5 tobacco companies operating in the Republic of Belarus: “Phillip Morris Management Service B.V.”, “R.J. Raynolds” (currently JT International), “British American Tobacco”, “Neman” Tobacco Company and “Tabac-Invest” signed a “Voluntary Code on Advertisement of Trademarks, Used for Identification of Tobacco Products in Belarus” restricting certain types of use of trademarks in the advertisement of products of such firms. Obviously, signing of such a document defines a common strategy of the signatories in the area of advertisement of tobacco products, as well as in the area of suppression of violation on behalf of those organizations that are involved in the sale of the tobacco products marked by the brands of the given companies.
4. Protection of Trademarks in the Internet (Belarussian experience)
Commercial use of the Internet started a new era in the practice of registration of domain names identical to the famous trademarks. As of now the Belarussian segment of Internet is represented by approximately 3 000 second level domain names (www.your_company_name.by). Despite rather inactive use of domain names in Belarus a number of issues arise with regard to protection of famous trademark owners from so called “cyber squatters”. The is no case law in Belarus so far pertaining correspondence of registration of a trademark and a domain name, yet there are already certain conflict situation described below.
First of all it is necessary to analyze correspondence of the procedure of registration of trademarks and domain names in the Republic of Belarus, whether the given objects enjoy the same amount of protection and look into a question whether registration of a domain name similar to a registered trademark can be viewed as infringements of rights of a trademark owner’s.
Pursuant to the “Rules of Registration and Delegation of Second Level Domain Names in the Zone BY” registration and delegation of domain names is carried out by the State Centre of Security of Information under the auspices of the President of the Republic of Belarus (SCCI). The given Rules are not approved by any authority, did not undergo registration in the Ministry of Justice of the Republic of Belarus and may not be deemed as a legal act. Consequently their legal status is unknown yet they are used for registration of domain names. The cost of registration and technical support approximately constitutes 60 US Dollars annually. Application for registration of second level domain names can be filed only by legal entities of the Republic of Belarus and foreign legal entities. At the same time Belarussian legal entities enjoy priority over foreign legal entities for registration and delegation of domain names under the same circumstances. The list of persons entitled to register a trademark in the Republic of Belarus and the list of persons that may register domain names is considerably different. Physical persons can not register a domain name similarly to registration of a trademark by them, i.e. the given Rules groundlessly deprive physical persons of a right to register a domain name in the Belarussian segment of Internet, as well as unreasonably provide Belarussian applicants with priority over foreign applicants while registering domain names.
Pursuant to the given Rules, the applicant upon choosing a domain name is advised to refrain from registration of domain names similar to trademarks. At the same time this provision is rather a recommendation. Consequently a chance of registration of a domain name similar to the wording of a famous trademark in the Belarussian segment of Internet remains rather high.
The time periods for protection of trademarks and domain names are also different (10 years and 1 year respectively). The territory where the given objects enjoy protection differs as well. Effectiveness of a trademark is applied to the territory of the Republic of Belarus and in order to use a trademark on the territory of other states it is necessary to file application to the patent agencies of these states or employ the procedure of international registration of trademarks. As for domain names, registration of the latter due to extraterritoriality of the Internet automatically receives protection in the whole world, since no one can then register the same domain name, while the latter will be available for access in any part of the word.
Everything mentioned so far proves that any applicant has a number of possibilities to register a domain name similar to a famous trademark in the Belarussian segment of the Internet without receipt of any consent of a trademark owner as well as consent of state agencies registering trademarks on the territory of the Republic of Belarus. At the same time it goes without saying that domain names incorporate functions of company’s trademarks in the Internet as it provides for recognizably of the latter in the World Wide Web. This is why the question of bad faith registration of domain names similar to famous trademarks is getting more and more important in Belarus. As far we know, the Law of the Russian Federation “On Trademarks, Service Marks and Names of Origin of Goods” was amended in December 2002 whereby unlawful use of a trademark may be deemed the case in the event of unauthorized use of a trademark in the civil circulation on the territory of the Russian Federation, including the Internet, in particular use in domain names and other means of addressing. Obviously the way the Russian legislator had to go through was rather difficult. At the same time the claim of Eastman Kodak Company to the Russian entrepreneur demanding to terminate use of “Kodak” trademark in the domain name kodak.ru received a lot of publicity. Similar disputes were brought by trademark owners of “Quelle” and “Nivea” against owners of domains quelle.ru and nivea.ru. The Russian way of solving the problem may have both supports and critics, yet as far as Belarus is concerned the problem of correspondence of domain names with registered trademarks is not resolved at all.
Here are a few examples. As of now three cell phone operators are working on the territory of the Republic of Belarus. Before the third operator - MTS came in 2002 only two operators were operating on the market – “Mobilnaya Cifrovaya Svyaz” Joint LLC (owner of trademark “Velcom”) and “Belcel” Joint Enterprise (owner of trademark “Belcel”). On 20 March 2002 two domain names were registered in the Internet: velcom.info and belsel.info. Upon visiting one of the two cited domains the visitor was forwarded to an official page of a competitor, something which obviously caused damage to the business reputation of both companies. This situation lasted for a long period of time, yet none of the parties initiated a court proceeding since the procedure of protection of a trademark owner in the Republic of Belarus under such circumstances is rather vague.
The situation around the domain name google.by recently registered in the Belarussian segment of Internet is also worth mentioning. Content of google.by does not have anything in common with search engine GOOGLE, rights to a trademark of which belongs to the American company Google, Inc. while the domain name undoubtedly has all chances of being recognized as confusingly similar with GOOGLE trademark. Most likely the American Company did not timely register the domain name in Belarus, although it did register domain names on the territory of more than 20 European countries.
The general recommendations that could be given to the Belarussian companies in similar situations are as follows. In the first case we are dealing with generic top level domain names .info, but not with country code top level domains. Subsequently the most effective way to protect the infringed rights shall be filing a complaint with organizations authorized by the Internet Corporation for Assigned Names and Numbers (ICANN) to consider such types of disputes. The given organizations shall consider the dispute pursuant to Uniform Dispute Resolution Policy. As paradoxical as the given statement may seem with regard to a Belarussian company, filing of a claim and receiving a decision on the same object in Belarussian courts shall be much more difficult. What will be even more difficult is to enforce the decision, since .info top level domains are registered outside the territory of the Republic of Belarus. ZAO “Commersant. Izdatelskiy Dom” was the first company that took advantage of the given procedure whereby WIPO Arbitration issued a decision on transfer of the domain name kommersant.com from an American citizen to the Russian company.
We believe that the Belarussian courts can only resolve disputes on use of BY domains, which are registered by the SCCI and consequently the issued decision may than be enforced on the territory of the Republic of Belarus without any considerable difficulties.
If your company has doubts with regard to existence of a domain name in the Belarussian segment of Internet similar to your trademark you can check it by visiting the SCCI’s site at www.tld.by.
In either way imperfection of Belarussian legislation on the matter of protection of trademark holders from unauthorized use of trademarks belonging to them in the domain name allows to make two main conclusions:
- it is advisable to register the domain name before your company has become a victim of use in bad faith;
- in the event you have discovered that your trademark is used in the domain name, registered in the Belarussian segment of Internet it is more expedient to file a complaint to any organizations authorized to consider disputes by the ICANN since national legislation of the Republic of Belarus does not contain relevant provisions and procedures, allowing to effectively protect your rights. Pursuant to the procedure approved by ICANN, the applicant must prove that the disputed domain name is identical or confusingly similar to a trademark belonging to the applicant. Besides it should be proved that the respondent does not have rights to use this representation and that the respondent does not undertake any activity granting him such rights. The applicant should also prove bad faith in actions of the respondent upon registration and use of a domain name.
5. International Agreement the Republic of Belarus is a Party to
Pursuant to the Article 31 of the Law of the Republic of Belarus “On Trademarks (Service Marks)” provision embodied in international agreements in the area of protection of industrial property effective on the territory of the Republic of Belarus are a part of effective Belarussian legislation and are subject to direct application unless it follows from an international agreement that in order to apply such a provision it is necessary to take such measures as a passage of a domestic? legal act consequently having the power of the legal act passed confirming consent of the Republic of Belarus for binding of the respective international agreement. Consequently, analysis of the Belarussian legislation is practically impossible without knowing the list of major international agreements the Republic of Belarus is a party to.
• First and foremost it is necessary to note that Belarus is a party to the Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 (as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Nice on June 15, 1957, and at Stockholm on July 14, 1967). Provisions of Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement and a Protocol to this Agreement are applicable to the Republic of Belarus from 1 January 1998. The Edict of the President of the Republic of Belarus # 474 dated 7 September 2001 confirms consent of the Republic of Belarus for binding force of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989) by means of joining this Protocol. In addition to that the Edict of the President of the Republic of Belarus # 21 dated 14 January 2003 stipulated a number of declarations of the Republic of Belarus to the this Protocol. In particular, the Republic of Belarus has declared that in order to forward a notification to the Bureau that protection can not be granted to a trademark in the event the international registration filed extends to the Republic of Belarus the one year period set forth by the Article 5 subparagraph 2 a) of the Protocol is changed to 18 months. In addition to that Belarus has declared its fees for registration of trademarks to be compliance with the Protocol in the amount of 600 Swiss Franks for registration of three classes of goods and services and 50 Swiss Franks for each additional class, whereas prolongation is subject to payment of 700 Swiss Franks.
• Republic of Belarus is also a party to Convention Establishing the World Intellectual Property Organization dated 14 June 1967;
• Republic of Belarus is also a party to Geneva Trade Mark Law Treaty signed on 27 October 1994. This Treaty sets forth a system of unification of requirements for the application for trademark registration by a national agency and the list of necessary documents;
• Republic of Belarus is also a party to two bilateral agreements in area of cooperation in the area of protection of industrial property:
- Agreement Between the Government of the Russian Federation and the Government of the Republic of Belarus On Cooperation in the Area of Protection of Industrial Property dated 20 June 1994;
- Agreement on Cooperation in the Area of Protection of Industrial Property between the Ukraine and the Republic of Belarus.
Provisions of the given agreements provide Russian and Ukrainian holders of rights on the territory of the Republic of Belarus with the same rights, privileges and means of legal protection in the area of registration, protection and use of industrial property provided to residents of the Republic of Belarus. Both documents provide that payment of fees for filing application, issuance of protection documents, keeping them effective and conclusion of other legal actions are made in the currency envisaged for payment of fees at a rate agreed on by the respective agencies of both states. In practice, among a huge number of foreign applicants, incorporation of amendments or prolongation of registration of trademarks on the territory of the Republic of Belarus only Russian and Ukrainian applicants pay fees set forth in the amounts envisaged for national applicants, which is currently is a few dozen times less than the amount set forth for foreign applicants.
• Within the framework of the participation in the Intergovernmental Council on Matters for Protection of Industrial Property the Republic of Belarus has entered into the following agreements:
- Agreement on Measures on Protection of Industrial Property and Creation of Intergovernmental Council on Matters for Protection of Industrial Property dated 12 March 1993;
- Agreement on Cooperation on Suppression of Infringements in the Area of Intellectual Property dated 6 March 1998;
- Agreement on Measures on Prevention and Suppression of Use of Misleading Trademarks and Geographic Indications dated 4 June 1999. Signing of this Agreement became a prerequisite for inclusion in the Law “On Trademarks (Service Marks)” of a provision on impermissibility of registration of representations referring to the place of production of alcoholic beverages protected under international agreement for marking products that do not originate from this location.
Summary
Summarizing everything mentioned above the following conclusions can be made. From the moment of passing the Law of the Republic of Belarus “On Trademarks (Service Marks)” in 1993 up until present a sufficient legal infrastructure was created regulating in details any procedures pertaining registration of trademarks and protection of its holders. At the same time, while registration procedures and a possibility of receiving legal protection documents do not encounter certain difficulties, the mechanism of challenging the validity of its issuance in courts as well as a mechanism of protection of rights of holders is not that effective, although the courts practice is gradually improving. Belarus is a party to a number of international agreements and treaties, allowing local applicants to employ the procedure of international registration of trademarks, providing certain privileges for foreign applicants as well as obliging Belarus to use certain standards in the area of trademark registration. Unfortunately there is no legal base or any court practice pertaining trademark infringements in the Internet despite the fact that actuality of this issue is increasing every day. Another problem is absence of interest of Belarussian commercial entities in protection of rights belonging to them with regard to objects of intellectual property. In most cases they do not even want to receive information on existence of such rights. Possibly, this is dictated by that circumstance that intellectual property protection is not as an urgent and important problem of the Belarussian business right now as compared to solving taxation matters, meeting currency and customs regulations as well other acute matters of the business activity. Unfortunately we have to acknowledge that civilized observance of the legislation in the field of protection of intellectual property is rather typical to stable economies. At the same time a number of new recognizable brands have appeared in Belarus during the last couple of years; the procedure of recognizing a Belarussian trademark well known finally took place; according to statistics the number of local trademark applicants tends to increase. Subsequently, there is a hope that the interest of the Belarussian companies and citizens in protection of their intellectual property shall become greater along with improvement of the legislation and court practice in this area.
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