BELARUS
IN USE OR NOT IN USE?
Darya Lando and Veranika Shypitsa LexPatent
In Belarus, as in many other countries, a claim for the early termination of a trademark registration is one of the most eff ective means for a newcomer to work its way into a certain market when blocked by a trademark that is not being used. Such a claim may also become a defence against an infringement action brought by a trademark owner who uses the prohibitive component of the exclusive trademark right but not the trademark itself.
According to Article 20.6 of the Trademark Law of the Republic of Belarus, “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 ”. T e request to terminate trademark protection prematurely for lack of use must be fi led to the IP Chamber of the Supreme Court, which is the only court in Belarus empowered to consider disputes relating to IP, irrespective of the subject and parties involved.
Non-use actions are tried in accordance with all rules of civil procedure, including that of sharing of the burden of proof. According to Article 170.1 of the Civil Procedural Code of the Republic of Belarus “each party shall prove those facts to which it refers as to the grounds of its claims or objections”. T is means it is the plaintiff that proves the trademark has not been actually used within the prescribed period for those goods and/ or services for which it was registered. T e defendant’s passive position or failure to appear in court doesn’t make the plaintiff ’s task any easier. T e most commonly used means of proof are responses from customs, certifi cation authorities and shops given to the plaintiff ’s inquiries and confi rming that in a certain period goods bearing the trademark in question were neither imported in Belarus, nor submitted for compulsory quality control, nor sold. But it is much more diffi cult to prove non-use of a service mark.
T e Civil Procedural Code also provides that only an interested person is entitled to apply for court protection of his/her violated or disputed right or
36 World Intellectual Property Review e-Digest 2013
interest. T is means that having lodged a claim for the early termination of a non-used trademark, a plaintiff has to prove his/her interest in satisfaction of the claim. If the interest isn’t proved, the court cannot rule for the early termination of a trademark registration even if the mark hasn’t been used by its owner without due cause. Having summarised the practice of the Supreme Court, its Plenum provided that interest may be substantiated inter alia by the plaintiff ’s intention to use a disputed mark or by refusal of the Patent Offi ce to register an identical or similar designation applied by the plaintiff . Mere fi ling of a trademark application will not be suffi cient; likewise the intention to use a similar trademark on similar goods must be supported by the facts of actual plaintiff ’s manufacturing or service activity or preparations for the start thereof. If for a certain activity a special permission (licence) is required, the plaintiff must have already obtained one.
T e ground for early termination of a trademark registration is the lack of its real (substantial) use without due cause within any uninterrupted period of three years aſt er the registration date, provided it has not been used up to the date of fi ling a claim. But a three-year grace period of non-use shall be applied only to those trademarks which have been registered on or aſt er January 25, 2010. T is is the date when amendments to the Trademark Law came into force and replaced the previous fi ve-year grace period by a three- year one.
Commencement of the grace period on the date of trademark registration appears to be a problem if a trademark registered according to the Madrid procedure is concerned. Even in case of positive outcome of the national examination, there is an approximately 18-month lag between the date of international registration and the date on which the mark is granted protection in a specifi c country. In case of provisional refusal, grant of national protection may be deferred by a much longer time. In Belarus, taking into account that
re-examination may be extended for up to 21 months, re-examination itself is conducted within two months, then within one year its decision may be appealed to the Appeal Board and further to the Supreme Court—thus
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the term for fi ling a request for trademark
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