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Amendments into the Trademarks law

19 January 2016

The Law of the Republic of Belarus as of 05.01.2016 N 352-3 “On the introduction of amendments and additions to some laws of the Republic of Belarus on legal protection of trademarks and service marks” was issued om January 14, 2016.

The present law introduced amendments into the Law of the Republic of Belarus “On trademarks and service marks” (hereinafter – The Law of trademarks) and Civil Code of the Republic of Belarus.

The law comprises the norms eliminating incorrectness, takes into account present law enforcement practice and introduces additional possibilities for applicants (trademarks owners).

These amendments come into effect on 15.07.2016.

 

1. Introduction of compensation for violation of exclusive trademark right.

It was:

Earlier in order to recover material losses from a violator for violation of trademarks right the trademark owner had the right to claim to recover losses or penalty at the rate of goods’ cost in relation to which the trademark was illegally applied.  

It is:

From the effective date of the Law, the trademark owner shall claim from a violator of exclusive trademark right to pay compensation at the rate of one to fifty basic units defined by the court in recognition of violation nature instead of recovery of losses.

Probably in this case as well as during recovery of compensation for violation of rights to copyright items the trademark holder shall not prove the amount of inflicted losses.

However such type of liability as penalty at the rate of goods’ cost in relation to which the trademark was illegally applied is also applied.

2. The list of right holders eligible to register trademark was extended.

It was:

Earlier the trademark could be registered only by the company or citizen.

It is:

Starting from 15.07.2016 the trademark can be registered by companies and private individuals (including foreign citizens).

3. The Voluntary Licensing Agreements between corporate entities are forbidden.

It was:

Earlier it was possible to include terms of voluntary licensing in the Agreement. There were some peculiarities however, voluntary licensing agreement were not prohibited.

It is:

Starting from 15.07.2016 voluntary licenses between commercial entities are prohibited.

4. The lists of violation of trademarks rights and cases of trademarks use were extended and specified.

It was:

Earlier the list of violation of trademarks rights and ways of trademarks use did not completely relate to each other. That is why the questions regarding admission of violation of trademarks use which was not included into the violation list by the Law arise (for example the trademark use on documentation connected with introduction of goods into the civil commerce or in domain name). However, practice regarded the ways of trademarks use stipulated by the article 20 of the Law of trademarks as violations.

It is:

From the effective day, the Law defines the trademark use, which is expressed in action stipulated by the clause 1 article 20 of the Law of trademarks, without owner’s permission as the violation of the exclusive trademark right.

The ways of trademarks use are also defined by the Law (article 20 of the Law of trademarks). Thus, particularly the types of goods in relation to which the trademarks are applied are regarded as their use (on the goods produced, offered for purchase, sold or introduced in civil commerce by another way, saved, transported or imported on the territory of the Republic of Belarus for introduction in civil commerce). Also the Law directly defines application of trademark readdressed within global Internet network as the trademark use.

5. Changes in the registration procedure.

It was:

Only information regarding trademarks registration was published.

Maximum terms of carrying out expert examination of applied mark were not stipulated.

The possibility to extend the time was omitted.

It is:

Starting from 15.07.2016 the information regarding application passed expert examination shall be published on the official website of the patent authority.

The term on carrying out expert examination of the mark is strictly defined – not more than twenty years from the date of application processing.

The possibility to extend the time (for example the time for submission of application on patent authority refusal to register a trademark to Appeal body) is defined.

The procedure of international trademarks registration is specified, the regulations of transformation of international registration into national application and replacement of national trademark registration by international registration are applied.

Commentaries:

The amendments defined by the Law are introduced in order to update regulations controlling trademarks security taking into account law enforcement practice and to bring these regulations into line with Singapore Treaty on the Law of Trademarks signed in Singapore on March 27, 2006. This Treaty solves several problems and specifies both trademarks registration, and trademarks security.

What can we do:

REVERA’s specialist are ready to provide with full legal support for trademarks registration, disputing patent authority decision, defense of trademarks rights both in administrative and court proceedings and any other support regarding defense of exclusive trademarks right. 
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