On March 14, 2024, the fourth session of the Intellectual Property Advisory Point for exporters completes its work
In the territory of the Republic of Belarus , The Belarusian applicant received a refusal to register a trademark on his application due to the presence of a confusingly similar senior trademark filed for registration under an international procedure on behalf of the Ukrainian applicant before the application of the Belarusian applicant.
The registration period for the international trademark of the Ukrainian copyright holder has expired, but it still retains a grace period of six months for the extension of such international registration.
The question of the consultant concerned the possibility of extending the response period to the refusal decision of the expert examination, issued almost 3 months ago.
The consultant's response was based on the norms of the Regulation on the Procedure for Registration of a Trademark and Service Mark, approved by Resolution of the Council of Ministers of the Republic of Belarus No. 1719 on December 28, 2009 and article 10 of the Law of the Republic of Belarus "On Trademarks and Service Marks" dated February 5, 1993 No. 2181-XII.
In accordance with paragraph 178 of the Regulation, if the applicant does not agree with the decision taken based on the results of the examination, he has the right to file with the patent authority within the time limit established in part one of paragraph 6 of Article 10 of the Law on Trademarks and Service Marks, a request for a re-examination of the claimed designation. In accordance with paragraph 6 of Article 10 of the Law, if the applicant does not agree with the decision of the examination, he has the right, within three months from the date of receipt of the decision, to file a petition to the patent authority for a re-examination of the claimed designation. A document confirming payment of the patent fee in the prescribed amount is attached to the application. At the request of the applicant, this period may be extended for no more than eighteen months, provided that the application and the document confirming payment of the patent fee in the prescribed amount have been received by the patent authority before the expiration of this period.
The consultant was advised to submit as soon as possible an application for an extension of the deadline for submitting a request for re-examination for a period exceeding the grace period for extending the validity of the international trademark of the Ukrainian copyright holder. At the same time, the consultant was informed that the deadline missed by the applicant for filing a request for re-examination of the claimed designation may be restored by the patent authority at the request of the applicant.
In case of non-renewal of the international trademark by the Ukrainian copyright holder during the grace period, the Belarusian applicant will be able, after notifying WIPO of the termination of its legal protection, to file a request for a re-examination of his application, indicating the fact of termination of protection of the interfering trademark.
