No one can argue with the fact we live in a world of brands today. Many products and services are homogeneous (and almost all of the same quality). Some people buy better and some others buy worse. This is because people are not attracted to abstract goods and services but to the brands they are associated with.
The brand’s promises, expectations and feelings are bought along with the product or service. These are nurtured in advertising. Marketers can clearly tell that consumers buy confidence in quality and a feeling of belonging.
Today, it is more important than ever to produce quality goods and provide high-quality services in order to be successful in business. You need to be able to distinguish your product from similar goods or services provided by other companies. This will allow you to give your products or services the desired value in the eyes consumers.
It is the intangible part – the name – that determines the success or failure of products or services in the market.
These designations are known as trademarks or brands in everyday life. Legally, these designations can be denoted using two terms: “trademark” to denote goods and “service marks” to denote services. We will refer to both these terms as a trademark.
This article will address the following basic questions: What is a trademark? Who owns it? How is it protected?
What does a trademark do?
The Law of the Republic of Belarus “On Trademarks and Service Marks”, (hereinafter the Law) states that a trademark and service mark are designations that help to distinguish goods or services (hereinafter referred as goods) of legal entities or individuals from the homogenous goods and services of other legal entities and individuals.
Designations can be registered as trademarks. They can be verbal, including proper and numerical names, color combinations, graphic representations, three-dimensional designations including the form of the goods, packaging, or combinations of these designations.
Verbal and figurative trademarks are the most popular.
Internationally, sound trademarks can also be registered (especially for call signs for radio stations), odor trademarks, which are specific smells of goods, and another, equally exotic, for Belarus.
It is clear that a trademark’s main purpose is to distinguish goods from homogeneous ones. Individualizing is the function of a trademark as it appears in legal literature.
Parallel to it, trademarks also serve other functions, including advertising and identifying.
Everything is clear with the advertising function. It lies in the fact the trademark can be used to advertise the product indicated by this sign.
A trademark’s identifying function is that the consumer can associate a product with its manufacturer.
According to the Law, the most basic use of a trademark is to apply it to goods for which it is registered or to their packaging by the trademark owner, or to a person to whom such rights are granted under a license agreement.
It is possible to recognize the use of the trademark in advertisements, printed publications, signs and when displaying exhibits at fairs or exhibitions in the Republic of Belarus. This is only possible if the goods or packaging are not being used for legitimate reasons.
The Law makes it clear that a trademark registered must be used.
The trademark registration can be terminated prematurely if it is not used for valid reasons during the three-year period from the date of its filing. The Supreme Court of the Republic of Belarus makes such a decision. Any person can file an application to the Supreme Court for an early termination of trademark registration. However, the trademark must not have been used prior to the submission of such an order.
The rule regarding the possibility of early termination of trademark registration was established to prevent abuses in the registration of trademarks. A trademark may be registered for the purpose of being used, but not for subsequent speculative sales to someone who is interested in the trademark.
In order to warn others, the trademark owner can place the Latin letter R orR in a circle near the trademark or the word symbols “trademark” and “registered mark” to indicate that the symbol is a registered trademark in the Republic of Belarus.
The Law in Belarus does not fix the “TM” mark used abroad. This means that the used designation was submitted for registration as a trademark but not yet registered. This does not prohibit its use. However, it can be used but not officially marked.
Trademark rights and infringements, as well as the possibility of protection
The law gives the trademark owner the exclusive right to use and dispose the trademark as well as the right of interdiction.
The Law does NOT provide specific rights for the trademark owner. This is in contrast to the Law of the Republic of Belarus “On Copyright and Related Rights”, however, which includes such a list. Both cases are based on the theory that exclusive rights. It implies the owner’s right to use the corresponding object (in our case, a trademark) in whatever form or manner.
The Law also lists certain violations of trademark owners’ rights. This list can be analyzed to determine what actions are prohibited in order to not violate the exclusive trademark owner’s right.
This means that trademarks protected on the territory of Belarus are not allowed to be used without permission of their owners.
The violation of trademark rights is specifically the unauthorised manufacture, use, importation and sale of trademarks or products indicated by these marks, or a designation related to it to the level of confusion, with respect to homogeneous goods as well as heterogeneous items indicated by trademarks that are well-known in Belarus.
Let’s look at these examples of possible violations.
If someone imports into Belarus and stores there, sells, or distributes free sportswear and footwear (goods similar in nature to those for which the trademark “ADIDAS”, is registered), then the trademark owner’s rights will be violated. The designation “ABIBAS”, in this instance, will be confusingly similar with the trademark “ADIDAS”.
In addition, the violation by the trademark owner “ADIDAS” could also occur in a situation in which goods imported to the territory of Belarus or produced in Belarus will bear the designation “ADIDAS”, which can be applied by someone who doesn’t have the right. These goods are often referred to as fake.
A third option to violating trademark owner “ADIDAS” is the import into Belarus and/or subsequent sale of legal goods “ADIDAS”. These activities are done by someone who doesn’t have the right import or import goods of the brand “ADIDAS”.
This type of violation of Belarusian rights was initially considered only theoretically. However, the Supreme Court of Belarus’ Judicial Board for Intellectual Property examined two similar disputes in spring-summer 2007. The plaintiff was the Belarusian company that owned the trademark “MARTINI”, while the defendants were two Belarusian businesses that imported alcoholic beverages identified by the trademark “MARTINI”.
Plaintiff alleged that he was infringing his trademark “MARTINI” because the defendants imported into Belarus the goods identified by the corresponding trademark. The plaintiff did not receive the right to import such goods into Belarus.
The defendants’ positions were based on the principle that trademark rights are exhausted. This principle states that trademark registration does not give rights to the owner of the trademark to prevent others from using the trademark for goods that were introduced directly into civil circulation by the trademark owner, or with his consent. The plaintiff imported the goods into Belarus from abroad, while the defendants purchased the goods.
The court however granted the claims. This was because the plaintiff had entered into an agreement with a specific legal entity of Belarus that gave it the exclusive distributor status in the Republic of Belarus of goods identified by the plaintiff’s mark. The plaintiff granted the right to import relevant goods into Belarus to only this individual. The principle of exhaustion can only be applied to goods imported into Belarus through an exclusive distributor. The rights of the plaintiff, and, according to our opinion, the exclusive distributor, are violated if the same goods are imported into Belarus from other people.
We have briefly reviewed the judicial precedent. It is very important. This shows that the Republic of Belarus can limit importers of the product if it is manufactured by a foreign manufacturer or a holder of trademark rights.
This restriction may serve several purposes. One reason for such a restriction can be called simplification in the fight against counterfeit goods. It is much easier to manage the import channels of relevant goods into Belarus if there is one importer. We have also had for many years a system that allows us to suspend customs clearance on goods containing intellectual properties objects upon request by a person with rights to those objects.
Only one person can import certain goods to the Republic of Belarus. This will allow him to apply to the customs authorities to block any other attempts to import them into the republic at its border. An effective mechanism! It will also be cheaper than identifying goods in Belarus and having them removed from Belarus retail chains.
Importing goods from EAEU countries is an exception. The right to import goods from the EAEU countries is revoked if they are brought into the Union’s territory. Any company from another EAEU member country may import the product in its territory. The copyright holder cannot do anything about it.
The Law provides that the law stipulates that the trademark and any designation similar to it, to the extent of confusion, may be used for homogeneous goods.
The following measures can be used to protect civil rights against the illegal use of trademarks.
1. The goods are removed from their packaging and the trademarks or similar designations that were illegally used to cause confusion to the extent of it.
2. Seizure or destruction goods for which the trademark was illegally applied
3. Recovery of damages
4. Fines starting at 1 to 50000 base values
These measures are applied to those who are guilty of illegally using a trademark.
The legal protection of trademarks in Belarus is provided by their registration at the National Center for Intellectual Property (hereinafter called the patent authority).
A trademark can currently be registered under the name of an individual or a legal entity.
The registration and submission to the relevant patent authority of the appropriate application is the first step in the process for trademark registration. Because there are many nuances to the design of an application, it is easier to attract professionals such as a patent attorney.
A trademark application must include certain information. This includes information about the applicant and the declared designation. The list of goods and/or services for which registration is requested should be grouped by classes of the International Classification of Goods and Services for the Register of Marks (abbreviated ICGS). It now contains 11 classes of goods and 34 classes of services.
The relevant patent fee must first be paid before you can file an application. If the trademark is registered under class 1, its minimum size is 38BV (approximately 400USD). Additional classes require a fee of 5 bv (approximately $50).
Once upon a time, the registration fee was only 3 bv if there were three classes of trademarks under the ICGS. The additional 0.2 bv was charged for every class beyond three. The NCIP received thousands of applications each year for trademark registration. The term for trademark registration was therefore extended to 3 years. The number of trademark applications declined and the time period for consideration fell after the rise in state duty.
After the examination, NCIP will decide to register a trademark. In that case, an additional fee of 19BV (approximately $200 USD) will be required for registration and issuance.
In general, two identical trademarks or confusingly similar trademarks must be filed for registration. The application for registration for the priority trademark is the one that was filed first. You can also choose between exhibition and conventional priority.
The patent authority examines trademark applications for registration. It includes two stages: preliminary inspection and examination of the claimed design.
The preliminary examination lasts for two months starting from the date that the patent authority received the application. This is in addition to the time for examination of the declared designation.
The preliminary examination checks the accuracy of the application and the correctness of its documents. The preliminary examination results are used to decide whether to accept or reject the application for consideration.
Acceptance of a request for consideration is based on the submission date and the exhibition or conventional priority.
After the preliminary examination, the declaration is examined. If the priority of the trademark was not established during the preliminary exam, it is determined. The Law also requires that the declared designation be in compliance with all requirements.
The examination results are used to decide whether a trademark should be registered or not.
The Law and other regulatory enactments do not provide for a specific time frame for the examination of a declared designation. It is currently about one year.
You can request an expedited registration of your trademark in the NCIP for an additional fee. After the applicant has applied, the amount and term of the NCIP registration are calculated by him.
A trademark is considered registered and, therefore, legal protection is granted from the date it is filed with the patent agency. This applies regardless of how long the patent authority takes to examine the claimed designation.
Transfer of trademark right
Two ways are available for trademark owners to dispose of their trademark rights: a) to assign them for all or part the goods for which they are registered (that’s, irrevocably transfer); or b) to grant the right of use the trademark under license agreements (that’s, transfer for awhile) for all or part the goods for which it is registered.
Two restrictions are placed on trademark rights assignments by law. The first is if the assignment could cause confusion for the consumer about the manufacturer or the product. It is also impossible to assign the rights to a collective trademark (the same applies to the transfer rights to trademarks under a license agreement).
The Law provides a requirement for license agreements. It states that the licensee must not produce goods of lower quality than those of the licensor. This condition will be monitored by the licensor.
A contract to assign a trademark or license agreement to another legal person shall be registered with patent authorities and shall become effective on the date of registration.
Failure to meet the registration requirements can result in the invalidation of relevant contracts and amendments/additions.
The trademark’s ratio to the copyright object
Another aspect of trademarks is worth examining, mainly figurative. The following is an example of this aspect.
A trademark is an image that is used to identify a particular object. It is also a work, or the object of copyright, and it has its author. Two questions arise here.
First, we need to know if it is legal to use such images on goods without having it registered as a trademark. Second, are they protected against illegal third-party use?
This question needs to be answered in the affirmative. Yes, you can use an image without having it registered as a trademark. However, the rights to that image must be owned by the person using it. In this instance, the image will not be registered as a trademark but as an object with copyright (by virtues of creation).
The second question is: How will rights to figurative trademarks and rights to images that are registered as trademarks be related?
This question should be answered in the contract between the author and the image. If the author gives up all rights to an image he created to someone who registers it as a trademark, he will not be able to use the image. The author can transfer (or grant) the right to register an image for trademark registration, but the rights to use the image in any other form and in a different manner are not affected.
Despite the above, I recommend that you register as a trademark any image that will be used in this capacity. This will make it easier, faster, and more affordable than protecting your rights to the designation.
Now, I have a case that has been in the works for eight months.
My client requested a logo design by a designer. The logo, which was a combination of verbal designation and picture, was used for many years on the company’s products. In advertising, the verbal portion of the logo was used as the name of the product in various registers (Ministry of Industry and BelCCI, National Center for Marketing and Price Study etc.). ).
He decided to register the logo as his trademark when he discovered that his rival had also applied for this designation.
To bring a competitor under administrative liability for illegally using the copyright object, we filed a police department application. The police department and the prosecutor’s offices did not see the elements of an administrative offense in this case. They recommended they go to court as they do often.
We are now waiting for the NCIP’s consideration of our complaint regarding the registration of the trademark for a competitor as well as MART’s decision on our application to unfair competition.
These decisions have been received and I will add information to the article.