The third session of the Intellectual Property Consultation Point for Exporters concluded its work on 27 March.
The owner of a kebab business asked about the consequences of using the trade mark of an entrepreneur who was forced to shut down his business due to non-payment of rent, dismantle the equipment in the rented premises and move out, while ‘forgetting’ to dismantle his sign above the entrance.
However, the consultee, after a counter-question from the consultant, said that the trademark owner refused to grant the new tenant of the premises a licence to use its service mark registered in respect of services in Class 43 of the ICTU class providing food and beverages; providing food and beverages in restaurants, preparing and providing food and beverages.
The consultant's answer was based on the norms of the legislation of the Republic of Belarus on trade marks.
According to Article 139 of the Civil Code of the Republic of Belarus (CC), third parties may use means of individualisation, including trademarks, which are the object of exclusive rights, only with the consent of the right holder.
In accordance with Article 3 of the Law of the Republic of Belarus ‘On Trademarks and Service Marks’ (hereinafter - the Law), no one may use a trademark protected in the territory of the Republic of Belarus without the permission of its owner.
Violation of the exclusive right to a trademark is the use of a trademark or a designation similar to it to the extent of confusion without the permission of the owner of the trademark, which is expressed in the actions provided for by paragraph 1 of Article 20 of this Law in respect of homogeneous goods, as well as heterogeneous goods designated by a trademark recognised as well-known in the Republic of Belarus.
In accordance with subparagraph 1.4 of paragraph 1 of Article 20 of the Law, the use of a trademark for individualisation of goods in respect of which the trademark is registered shall be carried out, inter alia: 1.4. in advertising, printed publications, on signboards, when displaying exhibits at exhibitions and fairs held in the Republic of Belarus.
In the consultant's opinion, the ‘forgetfulness’ of the former tenant of the premises was not accidental. Therefore, the consultant voiced to the questioner the norm of Article 29 of the Law:
For infringement of the exclusive right to a trade mark, the guilty persons shall be liable in accordance with legislative acts.
Goods, labels, packages of goods on which a trademark or a designation similar to it to the extent of confusion is illegally applied are counterfeit. The owner of the trademark or the person who has been granted the right to use the trademark under the exclusive licence agreement shall have the right to demand removal from counterfeit goods, labels, packages of goods of the illegally applied trademark or designation similar to it to the extent of confusion, and in case of impossibility of removal - withdrawal from civil turnover and destruction of counterfeit goods, labels, packages of goods. A person who has violated the exclusive right to a trade mark when introducing goods into civil turnover, performing work and (or) rendering services shall be obliged to remove the trade mark or a designation confusingly similar to it from the materials that accompany the introduction of such goods into civil turnover, performing such work and (or) rendering such services, including documentation, advertising, printed publications, signs, as well as from the global computer network Internet. Taking measures provided for by parts two and three of this paragraph shall be at the expense of the guilty person.
The owner of the trademark or the person who has been granted the right to use the trademark under an exclusive licence agreement may, at their option, demand from the person who has infringed the exclusive right to the trademark, instead of compensation for damages, the payment of compensation in the amount from one to fifty thousand basic units determined by the court taking into account the nature of the infringement.
Such court, the consultant noted, is the Judicial Board for Intellectual Property of the Supreme Court of the Republic of Belarus.
In addition, liability measures are also provided for in Article 10.15. Code of Administrative Offences of the Republic of Belarus. According to this article, illegal use of intellectual property objects is punishable by a fine from ten to thirty basic units with confiscation of the object of the administrative offence regardless of whose ownership it is or without confiscation, for an individual entrepreneur - from fifty to one hundred basic units with confiscation of the object of the administrative offence regardless of whose ownership it is or without confiscation, and for a legal entity - from one hundred to three times the fine.
