On Thursday, August 24, 2023, the thirteenth session of the intellectual property consultation point for exporters ends
The owner of a trademark registered in respect of such goods as asbestos cement; asphalt; concrete; bitumens; clay; gravel; granite; limestone; lime; stone; non-metallic structures; elements of construction made of concrete, etc., in Class 19 of the ICGS has asked how vulnerable his trademark is to possible annulment. In the course of counter questions it became clear that there was a competitor operating in the market of concrete products in our country, a significant part of whose brand name was confusingly similar to the registered trademark of the company whose manager had asked for advice.
The answer was based on the norms of Article 5 "Other Grounds for Refusal of Registration" of the Law of the Republic of Belarus "On trademarks and service marks". In accordance with subparagraph 4.3 of paragraph 4 of this article, designations that are identical or confusingly similar to a firm name protected in the Republic of Belarus (separate elements of this name), the right to which in the Republic of Belarus appeared to another person earlier than the priority date of the registered trademark, cannot be registered as a trademark in respect of similar goods.
Since the right to the brand name of a competitor engaged in the production of similar products (concrete products) in accordance with its statutory activities appeared earlier than the date of the application for a trademark of the person who applied for consultation, and the registered trademark of this person is confusingly similar to the competitor's brand name, the competitor has the right to raise an objection against the granting of trademark protection to this person. This was confirmed during of the consultation.
The person who requested the consultation was advised to request mediation or to settle the matter amicably before the Board of Appeal of the Patent Office prior to the hearing of the opposition.
