On October 28, the 12th session of the Intellectual Property Counseling Center for Exporters concludes
The question was burdened with a vivid history.
Background of the question.
A manufacturer of wallpaper glue has lost a case in the judicial panel for intellectual property of the Supreme Court of the Republic of Belarus on the claim of a competitor. The Supreme Court recognized signs of unfair competition in the actions of the manufacturer of glue related to the introduction of goods into the civil turnover in packaging, the appearance of which imitated the color scheme and layout of the main elements of the competitor's packaging, despite some differences in the verbal elements of the packaging. This was established by the court, despite the fact that the glue manufacturer has an industrial patent for packaging for that type of product. Subsequently, a competitor of the glue manufacturer challenged the validity of the industrial patent in the Board of Appeals at the Patent Office on such grounds as lack of originality due to the fact that the application for that patent had been filed later than the date of introduction of the competitor's packaging into the civil turnover.
Question: Is it possible to obtain trademark protection for a designation that almost reproduces a package that was previously the subject of protection of a revoked patent for an industrial design?
Answer: It is possible to obtain protection as a trademark for such a designation. Moreover, when recognizing the claimed designation to trademarks, the examination will not take into account the decision of the Supreme Court on the recognition of signs of unfair competition in the use of similar packaging. Such a trademark will exist for some time, however, such a trademark risks not becoming a long-lived one. The fact is that the validity of such a trademark may be challenged in the Board of Appeals just on the basis of an earlier decision of the Supreme Court. In accordance with Article 25 of the Law of the Republic of Belarus "On Trademarks and Service Marks", the provision of legal protection to a trademark may be invalidated in whole or in part: during the validity period of legal protection, if the actions of the trademark owner related to registration are recognized by an antimonopoly authority or a court as unfair competition.
