BELARUS
BELARUS
are debatable issues with regard to both these persons. For example, if the owner is a foreign company, importation of the trademarked goods in Belarus and their introduction into civil turnover is actually effected by its local contractor, and those relationships are much more frequently formalised by distribution agreements than by licence agreements.
Although the most reasonable position here is that if the trademark and the territory of Belarus are explicitly mentioned in the contract, the distributor’s actions should be considered proper use of the trademark by its owner, there aren’t any solid legal grounds for the confident assertion of such a position. Some practitioners suggest that in each particular case the court should evaluate those provisions of a distribution contract which concern responsibility for the organisation of a shipment, customs clearance of goods etc, and acknowledge the use of the trademark by its owner only if it is the owner who performs these actions. But this is also just a point of view.
In the year 2012 the Supreme Court considered a series of claims for the early termination of trademarks registered for goods in class 33 in the name of the Moldavian company ‘L’. Te company ‘L’ itself had never had a licence for the manufacture and sale of alcoholic beverages, but in one of the cases it was proved that champagne with the disputed trademark was produced and exported from Moldova to Belarus by the company ‘V’. Although ‘L’ and ‘V’ had neither a licence, nor any other contractual relations, the court established that ‘V’ had been using the trademark with the owner’s consent, which followed from the two companies having the same shareholder and the same registered address, and also from the fact that ‘L’ had not taken any actions against the use of its trademark by ‘V’.
Te court ruled that since the use of the trademark with the consent of its owner does not contradict the legislation, the disputed registration can be kept in force. In our opinion, although the owner’s consent guarantees that a third person doesn’t infringe the owner’s exclusive right, such a consent, let alone reticence, cannot be a satisfactory evidence of proper trademark use in terms of Article 20.1 of the Trademark Law.
As for use of the trademark by the licensee, the legislation doesn’t explicitly say whether it is sufficient to have a licence agreement executed by the beginning of court proceedings, or if it is also necessary to fulfil the formal requirement of its recordal with the national Patent Office or the World Intellectual Property Organization (WIPO). Before January 25, 2010, licence agreements not registered with the Patent Office of Belarus were considered invalid. As of January 25, 2010, the registration procedure was replaced by the requirement to notify the Patent Office of a concluded agreement. But although the law said that parties must notify the Patent
38 World Intellectual Property Review e-Digest 2013
Office, there were no provisions for legal consequences for failure to fulfil the obligation.
On January 15, 2013, registration of licence agreements was re-introduced in Belarus. Agreements signed aſter this date and not registered with the Patent Office will be considered invalid. But two opposite views of how this provision should be construed have already arisen. Te first position is that a licence agreement becomes valid only from the date of its registration. Te second one is that fulfilment of a registration procedure makes a licence agreement valid retrospectively, from the date of its conclusion.
It is obvious that there is a strong need for legislative clarification of all mentioned debatable issues, as well as clear and detailed enumeration of all possible forms and subjects of proper trademark use. Until this is done both parties in non-use cases, when working out their positions and assessing chances of success, should keep in mind the existing, although not absolutely consistent, practice of the Supreme Court.
Darya Lando is head of LexPatent’s legal department. She can be contacted at:
office@lexpatent.by
Veranika Shypitsa is a legal adviser at LexPatent. She can be contacted at:
office@lexpatent.by
Darya Lando was granted a PhD in 2006. She deals with various issues of enforcement of IP rights, including court protection and disposition thereof by means of contracts, and participates in research work devoted to perfection of civil legislation of the Republic of Belarus, particularly in the field of IP.
Veranika Shypitsa graduated with honors from the Faculty of Law of the Belarusian State University in 2008 and has since been working at LexPatent. She specialises in measures for enforcement of granted IP rights, including customs anti-counterfeiting measures, administrative and criminal prosecution of counterfeiters; opposing trademark registrations and decisions of the Patent Office.
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119