On November 24, 2022, the 17th session of the Intellectual Property Advisory Office for exporters completes its work.
The founder of the Belarusian company providing specialized household services, whose registration has been already scheduled, turned to the advisory office with a question about the mandatory essential conditions of the commercial concession agreement intended for conclusion with the Russian copyright holder. It also turned out that the Russian copyright holder owns only the brand name and production secrets (know-how) so far and has applied for registration of a service mark.
The answer concerned the need to comply with the minimum conditions in the contract required for registration of the contract with the authorized body of the Republic of Belarus:
There is no concept of "commercial concession" in the legislation of the Republic of Belarus. In accordance with Chapter 53 of the Civil Code, a franchising agreement performs this function instead. Therefore, the contract must be renamed in accordance with Belarusian legislation.
In accordance with the legislation of the Republic of Belarus, the license package of rights transferred for use must necessarily include the brand name of the Russian Copyright Holder. Such a condition can be fulfilled if during the signing of the contract the User registers in advance his brand name or makes a change in it , reproducing a significant part of the Copyright Holder's brand name with some addition, for example, indicating the location of the business (Gomel).
There should be no uncertainty in the contract regarding the scope of the transferred rights and these rights should not change in the contract depending on the articles of the contract.
The contract must specify where, how and in what form the right to the Copyright Holder's brand name was acquired.
The contract transferring rights to use the trademark must contain a reference to the trademark's number of the Republic of Belarus, its validity period and the goods or services in respect of which the trademark is registered. The presence of the application does not indicate the existence of rights to the trademark (service mark) on the territory of the Republic of Belarus and the Russian company does not have rights to dispose of the rights to it.
The judicial body for resolving disputes concerning franchise agreements is the Chamber for Intellectual Property Disputes of the Supreme Court of the Republic of Belarus.
If production secrets, standards or technical conditions of the Rightholder are to be transferred for use, then separate appendices concerning production secrets (know-how), standards or technical conditions of the Rightholder, which are respectively transferred within the framework of the contract, must be provided for and signed in the contract.
Thus, in order to register a franchising agreement, the Russian copyright holder has yet to obtain the rights to a service mark in the Republic of Belarus and agree with the Belarusian franchise user on the nuances of using its brand name.
