On April 27, 2023, the sixth session of the consultation point for exporters ends.
The owner of a trademark in the Republic of Belarus, a manufacturer of sausage products, has applied for the same trademark in the Russian Federation. However, after some time he received a notification from the expertise of the Federal Institute of Industrial Property (FIPS) about the results of a verification of the compliance of the applied-for designation with the requirements of the legislation.
The FIPS expertise contrasted the designation applied for by the Belarusian applicant with a confusingly similar senior trademark of the owner Bushido Group Ltd., British Virgin Islands (VG), registered in respect of similar goods and a whole list of goods and services from 01 to 45 classes of the International Classification of Goods and Services (hereinafter - ICGS).
The question of a Belarusian trademark owner related to the possibility of overcoming a preliminary refusal to register his trademark in the Russian Federation.
The response was based on several components received from additional research conducted during the consultation session.
In particular, the list of goods and services for which the senior trademark was registered, was researched.
The response was divided into two components:
The first is a proposal to obtain from the owner of the senior trademark a letter of agreement to register a similar designation.
For reference: obtaining letters of agreement for registration of designations that are similar to senior trademarks is allowed by the legislation of the Russian Federation as well as by the legislation of the Republic of Belarus.
Such agreement usually involves the payment of some remuneration in favor of the owner of the senior trademark. Cases of gratuitous granting of letters of agreement are quite rare.
The second is to prematurely terminate the interfering senior trademark due to its non-use within the period established by the legislation of the Russian Federation.
