On November 14, 2024, the sixteenth session of the Intellectual Property Advisory Center for exporters is held
The director of a Belarusian ice cream company that is already ready to ship its sweet products to Russia and China, but doesn’t have a trademark for the product name either in these countries or in his own country, asked how he could insure himself not to get into a situation where a trademark is registered by one of the Russian or Chinese companies. Chinese buyers, thus outstripping the manufacturer itself.
The answer was based on the norms of international treaties: the Paris Convention for the Protection of Industrial Property (hereinafter referred to as the Paris Convention) and the Protocol to the Madrid Agreement on the International Registration of Trademarks (hereinafter referred to as the Protocol).
First, you need to be very careful when choosing your own products.
Secondly, when signing an agreement with a dealer or other distributor of the plant's products, you don’t need to give permission to register your mark on behalf of the agent in the country of export. This will avoid further unfair actions by such a person. If this happens, then it is necessary to be guided by the norms of article 6 septies of the Paris Convention.
In accordance with article 6 of the Paris Convention:
1. If, without the permission of the owner, an agent or representative of the owner of a mark in one of the countries of the Union submits an application for registration of this mark on his own behalf in one or more of these countries, the owner has the right to prevent registration or to demand its cancellation or, if the law of the country permits it, to re-register the registration in in his favor, unless the agent or representative provides evidence justifying his action.
2. The owner of the mark has the right, subject to the conditions provided for in paragraph 1, to prevent the use of the mark by an agent or representative, unless he has consented to such use.
As for the prevention of unfair actions by other persons, it is necessary to use the mechanism not of the national application in the country of export, but the mechanism of the convention priority provided for by the Paris Convention and the Protocol.
Convention priority is a rule according to which an application filed in one country party to the Paris Convention for the Protection of Industrial Property has priority in all other countries for 6 months for a trademark, calculated from the date of filing the application in the first country.
The condition for granting convention priority is the correct registration of the national application in accordance with the domestic legislation of the country.
According to the Protocol, unlike the Madrid Agreement on the International Registration of Marks (hereinafter referred to as the Agreement), in order to file an international application with an extension to China and other countries, it is sufficient to have a basic national application in the Republic of Belarus that has passed a preliminary examination, rather than a valid trademark registration, as under the Agreement. The date of filing the application in the Republic of Belarus will be counted as the date of international registration with the World Intellectual Property Organization (hereinafter – WIPO), indicating China and the Russian Federation, provided that the international application is submitted to WIPO within 6 months.
In addition, the applicant was advised not only to file the national application as soon as possible, but also to file a request to expedite its preliminary examination in order to contact the International Bureau of WIPO as soon as possible with the international registration of the trademark distributed to China and the Russian Federation.
