On September 27, 2023, the 14th consultation session on intellectual property for exporters is held
A Belarusian manufacturer of toilet paper raised a question about the likelihood of possible complaints from the owner of an identical trademark registered in respect of advertising services. The manufacturer of toilet paper was interested in the possibility of advertising his mark in this situation.
The answer was based on the definition of a trademark as stated in the Law of the Republic of Belarus “On Trademarks and Service Marks” (hereinafter – the Law). In accordance with paragraph 1 of Article 1 of the Law “A trademark and service mark (hereinafter – trademark) is a designation that allows to distinguish goods, works and (or) services (hereinafter, unless otherwise provided – goods) of one person from similar goods of other persons”.
As can be seen, the norm of the Law provides for the possibility of registration of the same trademark in the name of different persons, if the goods and services are not similar. Toilet paper is included in class 16 of the International Classification of Goods and Services for the Purposes of the Registration of Marks. Advertising agency services are included in class 35 ICGS. If a Belarusian manufacturer of toilet paper, having obtained registration of his trademark in respect of goods of class 16 ICGS, begins to advertise it in the form of outdoor advertising, on the Internet on his own website and on various trading platforms, then he advertises his products, i.e. toilet paper.
As for the advertising agency, which has an earlier registration of an identical service mark in class 25 ICGS, it advertises the products or services of other persons, their trademarks, their “brands”. The advertising agency registered its service mark so that it could advertise the products and services of third parties, i.e. customers of services which promote their own products.
In order to advertise one's own products, registration of a trademark in respect of services of class 35 ICGS is not necessary. Accordingly, there can be no complaints on the part of the advertising agency against the manufacturer of toilet paper advertising his own products, since he does not advertise the products and trademarks of other manufacturers under the same designation.
