- The applicant alleged that the registrant of the GLOBUS mark and the entrepreneur to which the mark had been assigned had engaged in unfair competition.
- The authority, considering a range of factors, found that there was no unfair competition in this case.
- Among other things, competitive relations between the applicant, the registrant and the entrepreneur were not established.
The dispute at issue involved Belarusian companies and an individual entrepreneur, with the bone of contention being glue sold under the mark GLOBUS. This case is signifcant as it underlines 1) the benefits enjoyed by the trademark owner, and 2) the potential difficulties faced by third parties, including the original brand creator, in this ‘first to file’ country.
In 2011 a Belarusian company (‘the registrant’) registered the trademark depicted below, covering, among other things, various types of glue:
The exclusive rights to the trademark were assigned to a Belarusian individual entrepreneur in 2020.
Later in 2020, the trademark was included in the Customs IP Registry by the entrepreneur. Such inclusion allows, in essence, to control the import of goods marked with the trademark (ie, glue). In other words, the entrepreneur was given the right to prohibit the import of the relevant goods by other companies, including Inter Globus Sp z oo, the manufacturer of the GLOBUS and Super GLOBUS glue, and its local partners. Inter Globus is the original brand creator.
In May 2021 the Belarusian partner of Inter Globus (‘the applicant’) filed an application against, among others, the entrepreneur and the registrant, claiming violation of the anti-monopoly laws in terms of unfair competition. According to the applicant, the GLOBUS trademark had not been registered for the purpose of manufacturing glue marked with that trademark, but with the purpose of eliminating competitors, including the applicant.
For reference, Belarusian legislation prohibits unfair competition related to the acquisition and/or use of intellectual property.
Decision of the anti-monopoly authority
After an investigation lasting more than a year, in late July 2022 the Belarusian anti-monopoly authority found that there was no unfair competition by the entrepreneur and the registrant. While deciding on the case, the authority considered a range of factors based on competition law, which can be regarded as an unfair competition test.
First factor – competitive relations in the relevant commodity market
Two main conclusions were made at this stage – namely:
- Competitive relations between the applicant, the registrant and the entrepreneur were not established since, during the period when the entrepreneur acquired and used the trademark, they did not sell and/or purchase goods in the same commodity market; and
- The applicant was not yet established in Belarus at the time when the registrant filed an application for registration of the trademark.
Second factor – acquiring advantages in entrepreneurial activities
To qualify as unfair competition, actions should aim to cause losses to competitors. In the present case, it should be established that the trademark use aimed to cause losses to competitors, which were using the mark long before the trademark application was filed.
Considering the conclusions on the first factor, the applicant did not use the trademark long before the trademark application was filed. Moreover, the inclusion of the trademark in the Customs Registry could not have led to the acquisition of advantages in entrepreneurial activities, as the applicant and the entrepreneur were not competitors.
Third factor – violation of the Belarusian law or the requirements of good faith and reasonableness
There was no such violation, as the actions aiming to protect the exclusive rights to the trademark complied with Belarusian law. Further, these actions also corresponded to the obligations by third parties not to violate exclusive rights.
Fourth factor – causing loss/damage to the business reputation of competitors
There was no loss/damage to business reputation of competitors in this case. There was no reason to believe that there was at least a possibility of redistributing consumer demand in favour of the registrant and the entrepreneur as a result of their actions.
This article first appeared on WTR Daily, part of World Trademark Review, in October. For further information, please go to www.worldtrademarkreview.com.