On July 27, the 12th consultation session on intellectual property for exporters is held
Representatives of a Belarusian center from the field of ecology asked whether they could register a trademark (service mark), the right to which they wanted to transfer to other ecological and tourist organizations under licensing agreements.
During counter-questions it became clear which services the mark will be registered for, and that the center itself is not going to use the service mark for services of 39, 41 and 43 class ICGS.
The answer referred not only to the list of services for registration of the mark, but also to the requirements of trademark law regarding the need to use a trademark.
According to Article 20 of the Law of the Republic of Belarus “On Trademarks and Service Marks” (hereinafter - the Law):
1. The use of a trademark for individualization of goods in respect of which the trademark is registered is carried out, including through the use of the trademark:
- on goods that are produced, offered for sale, sold or otherwise introduced into civil circulation, stored, transported or imported into the territory of the Republic of Belarus for the purpose of introduction into civil circulation, as well as on labels and packages of such goods;
- on documentation related to the introduction of goods into civil circulation;
- when performing work and (or) providing services;
- in advertising, printed publications, on signboards, displays at exhibitions and fairs held in the Republic of Belarus;
- in the global computer network Internet (including in the domain name, in other addressing methods).
2. The use of a trademark may be recognized as its use with insignificant changes of individual elements not affecting its distinctiveness.
It was clarified that use of the service mark is intended primarily by future licensees in advertising, on signs, in the provision of services and on documentation.
The consultee was informed that under the same Article 20 of the Law, the legal protection of a trademark may be terminated prematurely in respect of all goods or part of the goods for the individualization of which the trademark is registered, due to non-use of the trademark without valid reasons continuously for any three years after its registration.
The main emphasis in the answer was put on the fact that for the purposes of proving the use of a service mark, the above actions performed by a person to whom the right to use a trademark is granted on the basis of a license agreement and not directly related to the introduction of services into civil circulation cannot be recognized as the use of a trademark.
The consultee's attention was brought to article 23, paragraph 2, of the Law, which prescribes that the license agreement must contain the values of the licensee's service quality indicators or a condition that the quality of the licensee's services will not be lower than the quality of the licensor's services, as well as a condition on the implementation by the licensor of quality control over the licensee's services.
Since the future licensor has not achieved a certain quality of service, he will have to establish for his licensees the value of their quality indicators in accordance with the current regulations in the industry.
Only if the above conditions are met the right holder, who does not use the trademark himself, will have an opportunity to prove the fact of use of his service mark by licensees.
