03-12-2013 (Newsletter Issue 3/13)
Amendments to Trademark Law in Force
In accordance with the Law “On introduction of changes and amendments to some laws of the Republic of Belarus in matters of legal protection of intellectual property ”, the latest amendments to the Belarus Law “On Trademarks and Service Marks” came into force on January 15, 2013.
There are two main issues:
First, the national regime of exhaustion of trademark rights has been substituted with a regional regime. This amendment has been introduced in pursuance of Article 13 of the Agreement on Unified Principles of Regulation in the Sphere of IP Rights Protection, signed by Belarus, one of the current three member states of the Customs Union of Belarus, Russia and Kazakhstan. According to the amended Article 20.5 of the Belarus trademark law, the use of a trademark with respect to goods placed on the market in the territory of the member states, signatories of the agreement, by the trademark owner or with his consent, is not considered an infringement of the exclusive trademark owner’s rights. In other words, as of January 15, 2013, trademarks owners are not able to stop the import of goods into Belarus from Russia and Kazakhstan and/or prevent any other use of their trademarks in Belarus with respect to the goods which have been placed on the market in Belarus, Russia or Kazakhstan by the trademark owner or with his consent.
Another important amendment that has been introduced to the Belarus trademark law is Article 24, according to which trademark license agreements, trademark assignment agreements or trademark pledge agreements with respect to trademark rights valid on the territory of Belarus are considered null and void unless registered with the Belarus PTO. Before this amendment came into force, the registration of trademark-related agreements in Belarus was not obligatory.
01-18-2013 (Newsletter Issue 1/13)
Accession to Singapore Treaty
On November 27, 2012, the Belarus parliament approved the draft law “On accession of the Republic of Belarus to the Singapore Treaty on the Law of Trademarks”.
The Singapore Treaty will enter into force after Belarus deposits its instrument of ratification with the World Intellectual Property Organization (WIPO) Director General.
The Singapore Treaty, adopted in Singapore on March 27, 2006, establishes common, international standards for trademark registration procedures.
11-13-2009 (Newsletter Issue 4/09)
Trademark Law Amended
On July 15th, 2009 Belarus passed the Law on the Introduction of Amendments to the Law of Republic of Belarus on Trademarks and Service Marks. The Law enters into force on January 25th, 2010.
The amendments shall bring Belarusian law in line with European countries' laws in order to facilitate eventual accession of the country to the World Trade Organization (WTO).
Among other novelties, a chapter on well-known marks is added to the Law, which introduces a definition of a well-known mark an specifies the procedure for recognition of a mark a well-known. The Law is to establish that the term of protection for a well-known mark is infinite, unless its status is successfully changed.
Further there will be the following amendments with regard to the registration procedure of trademarks:
The Law states that it is allowed to register a trademark which term of legal protection has expired, in the name of a new owner not earlier than six months after the expiry of registration. However, if the mark owner has voluntarily withdrawn its trademark registration, the new applicant may register the mark without waiting six months.
The non-use grace period is reduced from five to three years.
The use of trademarks in the Internet and domain names are accepted by the Law.
The Law will not apply to applications that will be pending as of January 25th, 2010.
Source: Dr. Sergey Vinogradov, Pag-e-Pag, Minsk, Belarus and www.bakermckenzie.com
Legal basis is the Trademark Act of February 5th, 1993. The latest amendments were passed on July 09, 2012, effective from January 15, 2013.
Belarus is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, letters, numbers, devices, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks.
The application is filed at the Patent Office (National Center of Intellectual Property).
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient provided that it is either signed by a CEO of the company or the authorities to sign a power of attorney are confirmed by a notary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration or first office action is approx. 3 years.
An accelerated registration is possible against payment of additional fees (approx. 8 months).
After registration, the trademark is published in the official gazette “Trade Marks. Service Marks. Appelations of origin.”
There is no procedure for official consideration of oppositions throughout the process of application and registration. Informal observations, in the form of a letter of protest, may be submitted to the Trade Marks Registry/Office throughout the process.
Cancellation of a trademark registration on the basis of a prior registered trademark or appellation of origin is allowed only within 5 years from the date of registration publication of the contested trademark. Cancellation on the basis of other grounds is allowed throughout the validity of the trademark registration.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
no opposition period
A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
If the trademark has not been used within 5 years from registration or has later not been used for 5 years continuously, it may be subject to cancellation. For trademarks registered after January 25th 2010, the period of non-use of a trademark reduces from five to three years.
The use of trademarks on the Internet and in domain names is accepted by the Law.
The official filing and examination fee is approx. EUR 460.00 for up to three classes and approx. EUR 35.00 for each additional class. Well-known marks are registered according to a special procedure in the register of marks recognised famous in Belarus. A registered well-known mark covers ALL goods and services. The official fee is approx. EUR 620.00.
Trademark Licence Agreement
In Belarus a licence agreement has to be in writing. Licensing of unregistered marks is not permitted. A trademark can be licensed for all or some of the goods or services covered. Current legislation foresees two types of licences: exclusive and non-exclusive licences. Although the sale of a trademark does not terminate the licence, the registered user should be notified about the change of proprietor and should express his consent in writing. This consent may be requested by the Trademark and Patent Office (PTO) during the registration process of a new proprietor. A licence agreement shall impose quality standards on the licensee regarding the licensed goods or services. The proprietor must exercise control over the fulfilment of these conditions.
The licence agreement must be registered with the PTO. The licence agreement is recorded in the State Register. There is no time frame for a recordal but it should be done as soon as possible since unregistered licence agreements are not regarded as valid. There is no standard content for a licence agreement but it should specify the type of licence, the territory and the period of validity.
The following documents are required for a recordal:
1. An application form
2. Copies of the licence agreement (two copies of the original and one copy certified by the person requesting the recordal)
3. The trademark certificate or a copy thereof
4. A power of attorney (if the application for a recordal is filed by a representative of the person requesting the recordal)
5. A document verifying payment of the recordal fee
By means of a special notification form, the parties to the agreement should notify the PTO about any changes to the terms of the agreement or the termination of the licence in due course.
The licence becomes effective and enforceable upon registration. The licence is required to be published in the Official Bulletin after its registration.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings. He can also call upon the owner to institute infringement proceedings. Especially in the event of non-exclusive licences, the right of a registered user to institute proceedings in his own name should be clearly specified in the licence agreement. It should also be specified in the licence agreement whether the licensee has to cite the owner as co-defendant in any such proceedings.
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We would like to thank the following law firms for their assistance in updating the information provided:
PETOŠEVIĆ Client Service Office, Overijse, Belgium
LexPatent, Minsk, Belarus
, Minsk, Belarus Licensing
PETOŠEVIĆ Client Service Office, Overijse, Belgium
IPR Group, Kiev, Ukraine