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Innovations in the legal protection of the Trademark

47101EC1A283017F0C4On July 15, 2016 the main provisions of the Law of the Republic of Belarus of 05.01.2016 N 352-З on introduction of amendments and additions to some of the laws of the Republic of Belarus on legal protection of trademarks and service marks (hereinafter - the Law), which adjusted the legislation in the sphere of use of trademarks and service marks (hereinafter – the trademark), will enter into force.

Organizations and individuals (in particular, foreign nationals) will have the right to register trademarks. Previously a trademark could be registered in the name of an organization or a national.

Applicants permanently located/residing in foreign states, will be able to prosecute cases relating to the registration of trademarks only through patent attorneys, unless otherwise provided by international treaties.

The trademarks, in which the dominant position belongs to signs and (or) designations used to indicate the type, quality, quantity, properties, purpose, value of goods as well as time, place and method of their production or marketing will not be allowed for registration. The criteria for defining the dominant position of signs and (or) designations will be established by the Council of Ministers of the Republic of Belarus.

The following grounds for refusal of the acceptance of an application for examination upon results of the preliminary examination were introduced:
- failure to provide a substantive response to a request of the Patent Office;
- absence of the information in the application required by the law (applicant’s name, its location, applied designation, list of goods);
- absence of the regulations on a collective mark (when filing a collective mark application).

The provisions are made as regards the publication of the information on application which passed the stage of preliminary examination and has been accepted for examination by the Patent Office. Any person has the right to familiarize itself with the application and the attached documents after such publication.

An applicant has obtained the opportunity to restore the missed term: 1) the term for filing a response to the request of provisional examination; 2) the term for filing a response to the request of substantive examination; 3) the term for filing a request for re-examination; 4) the term for filing an appeal with the Appeal Board. The restoration of the said terms is possible not later than three months from the date of their expiration upon condition of payment of relevant patent fees and provision of a reasonable excuse.

It is set out that the exclusive right to a trademark arises as of the date of its registration.

Applications which consideration has not been completed before 15.07.2016, are examined by the Patent Office in the order which was applied before the Law N 352-З has entered into force.

In the event of violation of the exclusive right to a trademark, the offender will be required to delete it or to delete a confusingly similar designation from the materials which accompany the introduction of the goods to the market (or the implementation of works and (or) services), including documentation, advertising, print publications, shop signs, as well as to delete the aforesaid materials from the Internet.

A trademark owner (or a person to whom the trademark has been granted by virtue of the exclusive license) can claim the payment of compensation by the offender in the amount of 1 to 50 basic units instead of reimbursement of the losses incurred. The specific amount of compensation is determined by the court taking into account the nature of the violation.

It is worth mentioning that the terms for appealing against the decision of the Appeal Board taken upon the consideration of the application on recognition of the trademark as publicly known as well as on the cessation of legal protection of the publicly known trademark due to loss of its renown were reduced from one year to six months.

The changes also covered the provisions of the Civil Code of the Republic of Belarus. In particular, the grant of the right to use an IP object without payment of consideration as between commercial entities will not be allowed, unless otherwise provided in the acts of legislation.



Koubriakov, Tseliatsitskaya & Partners, Ltd.   220004 Minsk , avenue Pobediteley, 17, of. 1015, Republic of Belarus.    Tel/Fax: (017) 226 99 34.  License for rendering of legal services No. 02240/1410 issued by the Ministry of Justice of the Republic of Belarus  pursuant to the decision No. 181/1 dated November 29, 2013/span>