On May 23, 2024, the 8th session of the work of the Intellectual Property Advisory Point for Exporters is held
A Belarusian trademark applicant, who received a request for preliminary examination by the National Intellectual Property Center regarding the semantics of the claimed sign similar to the Italian surname, addressed the Consultation Point with the question how to respond to the request.
For reference: In accordance with paragraph 5 of Article 4 of the Law of the Republic of Belarus “On Trademarks and Service Marks” it is not allowed to register as trademarks designations that are false or capable of misleading the consumer about the goods, the place of its origin or its manufacturer.
The answer was based on the categories of trademarks that are not present in Belarusian law, but are present in other jurisdictions: fantasy and arbitrary words, indications with a hint, descriptive words.
The designation similar to the Italian name, declared on behalf of the Belarusian applicant is capable of misleading the consumer as to the manufacturer of the goods. At the same time, being similar to the Italian surname, the claimed verbal designation may turn out to be fantasy.
In addition, as it turned out from the dialog with the person who consulted, this designation was previously registered as a trademark by a “related” company and there is a 10-year term of its use in the past. This speaks in favor of the registration of the newly applied for designation similar to the Italian surname in the name of the Belarusian applicant.
The applicant was advised to put the attention of the examination to the fact that an identical trademark had already been registered earlier, as well as to the relatedness of the members of the company that previously owned the trademark and the members of the company applying for this designation.
