Presentation on theme: "Trademark enforcement in Belarus AIPPI Baltic, Vilnius, 2013 Darya Lando, Head of Legal Department LexPatent, Minsk, Belarus."— Presentation transcript:
Trademark enforcement in Belarus AIPPI Baltic, Vilnius, 2013 Darya Lando, Head of Legal Department LexPatent, Minsk, Belarus
Trademark registration (general information) LAW ON TRADEMARKS AND SERVICE MARKS Article 2 Legal Protection of Trademarks 1. The legal protection of a trademark in the Republic of Belarus shall be based on its registration with the State Authority National Center of Intellectual Property (hereinafter referred to as «the Patent Authority»), made in accordance with a procedure laid down by the trademark legislation or under international treaties to which the Republic of Belarus is party. 2. The trademark may be registered in the name of an organization or in the name of a citizen. 3. The right to the trademark is protected by the State. The registration of a trademark shall give rise to the issue of a trademark certificate. The trademark certificate shall attest the priority date of the trademark and the owners exclusive rights in the trademark in relation to the goods specified in the certificate; it shall contain a representation of the trademark.
Examination system of trademark registration The examination of the trademark application includes preliminary examination substantive examination of the applied mark
Agreements and registration procedure National TM registration – Belarus Patent Office International TM Registration – WIPO Registration of agreements in Belarus Patent Office: before January 25, 2010 – registration procedure January 25, January 14, 2013 – notification procedure since January 15, 2013 – registration procedure
Enforcement of the granted rights All civil disputes relating to intellectual property, irrespective of the parties involved, are considered by the Intellectual Property Chamber of the Supreme Court. Patent attorneys are entitled to be representatives in court.
Trademark infringement cases Article 29 Liability for Infringements of the Legislation on Trademarks 1. Any person who, in a manner contrary to the provisions of this Law, makes use of a trademark or of a sign confusingly similar to the trademark for goods of the same type shall incur liability in accordance with the legislation of the Republic of Belarus The goods or the labeling and packaging thereof in relation to which (on which) the trademark or the sign confusingly similar to the trademark is unlawfully affixed shall be counterfeit. 2. The unlawful use of a trademark may give rise, independently of the filing of a restraining injunction or a petition seeking compensation for damages sustained, to the following additional civil sanctions: 2.1 removal from the goods or the packaging thereof of the unlawfully used trademark or of the sign confusingly similar to the trademark, or destruction of existing reproductions of the trademark or of the sign confusingly similar to the trademark; 2.2 seizure or destruction of the goods for which the trademark was unlawfully used; 2.3 imposition of a fine for the benefit of the injured party amounting to the value of the goods for which the trademark was unlawfully used; 3. The remedies under paragraph (2) of this Article concerning persons guilty of the unlawful use of the trademark shall be applied as prescribed by the legislation of the Republic of Belarus. The guilty party shall pay the expenses in respect of the remedies specified under subparagraphs (2.1) and (2.2) of paragraph (2) of this Article.
Non-use cases Article 20.6 Use of the Trademark and Consequences of Failure to Use the Trademark The legal protection of the trademark may be terminated prematurely in relation to all or some of the goods for the distinguishing of which the trademark is registered, if the said trademark is not used without due cause during an uninterrupted period of three years from the date of registration thereof. The request to terminate prematurely the legal protection of the trademark for lack of use may be filed to the Supreme Court of the Republic of Belarus by any person after the said period of three years expires, provided that the trademark has not been used at all up to the date on which the request is filed.
Use of the Trademark Article 20.1 Use of the Trademark and Consequences of Failure to Use the Trademark The application of a trademark to goods for which it is registered and upon labeling, packaging, in the global computer network Internet (including domain names), in documents concerning the putting of the goods on the market, in connection with the performing of work and rendering of services, or the exploitation of a trademark with amendments to some of its elements, which amendments have no effect on its distinctive character and do not limit the scope of legal protection granted to the trademark, by the owner of the trademark or by any person to whom the right to use the trademark has been granted under a license contract as provided in Article 23 of this Law shall be deemed to constitute use of the trademark.
Use of the Trademark Supreme Court case 12-01/ in Belarus Since the use of the trademark with the consent of its owner does not contradict the legislation, the disputed registration should be kept in force.
Exhaustion of Trademark Rights National exhaustion Regional exhaustion Article 20.5: Use of the trademark in relation to goods that have been lawfully placed on the market in the territory of the Member States to the Agreement on Common Principles of Regulation in Protection and Enforcement of Intellectual Property Rights signed on December 9, 2010 in Moscow, directly by the owner of the trademark or by other persons with his consent, shall not constitute infringement of the exclusive trademark right.
96 trademarks Customs Register as of April 05, 2013
Suspension of release of goods Suspension of release For 10 working days May be extended for another 10 working days, provided the rightholder has turned to the competent authority for protection of his rights Further proceedings Administrative procedure Civil procedure Criminal procedure
National Register vs. Common Register Agreement on the Common IP Customs Register of the Member States of the Customs Union Ratified by the Law of the Republic of Belarus of May 8, 2011 Application may be filed through the Customs Committee of Belarus – no applications by now Shall refer to an IP object protected in all three countries
Administrative sanctions Fine at the rate of: 20–50 basic units* USD – on a natural person up to 100 basic units 1200 USD – on a private entrepreneur up to 300 basic units 3600 USD – on a legal entity with or without confiscation of the object of administrative offence. * 1 basic unit 12 USD
Trademark Law Customs Code The goods or the labeling and packaging thereof in relation to which (on which) the trademark or the sign confusingly similar to the trademark is unlawfully affixed shall be counterfeit. Counterfeit goods are goods containing intellectual property, if transfer of such goods across the customs border or other actions with such goods placed under the customs control entail infringement of the rightholders rights. Destruction of goods
Common Economic Space Draft Agreement on Trademarks, Service Marks and Appellations of origin Trademark registration in Common Economic Space National trademark registration