The summer season has come to an end and Sorainen Intellectual Property (IP) team is once again ready to share intellectual highlights news with you. An interesting case of unfair competition related to a trademark, as well as the practice of applying advertising legislation in relation to means of individualisation for taxi services await you in a fresh highlights review.
Trademark in the Customs IP Registry and Unfair Competition
A Belarusian company (the Company) registered a trademark GLOBUS (the Trademark), covering, inter alia, various types of glue. The exclusive rights to the Trademark were subsequently assigned to a Belarusian individual entrepreneur (the Entrepreneur).
The trademark was included in the Customs IP Registry (the Customs Registry) by the Entrepreneur. Such actions, in essence, allow for the control of the import of goods marked with the Trademark (in this case, 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 o.o., manufacturer of glues GLOBUS and Super GLOBUS, and its local partners.
In May 2021, the Belarusian partner of the company Inter Globus Sp. z o.o. (the Applicant) filed an application regarding violation of antimonopoly laws in terms of unfair competition against, among others, the Entrepreneur and the Company.
Reference: Belarusian legislation establishes a ban on unfair competition related to the acquisition and/or use of intellectual property.
During the consideration of the case, in late July 2022 the Belarusian antimonopoly authority came to the conclusion that there was no unfair competition in the actions of the Entrepreneur and the Company. Among the arguments of the antimonopoly authority, we would highlight the following:
- Competitive relations between the Applicant, and the Company and the Entrepreneur were not established, since during the period of acquiring and using the Trademark by the Entrepreneur they did not sell and/or purchase goods in the same commodity market (commodity market for the wholesale trade of glues for industrial (construction) and household purposes)
- The Applicant had not yet been established in Belarus at the time the Company filed an application for registration of the Trademark
Reference: please note that there were similar cases in the practice of the Belarusian antimonopoly authority when the actions of registering a trademark and including it in the Registry were assessed as unfair competition, which is not allowed by law (please see our earlier highlights).
Yandex and Uber logos on taxicabs: advertising or not?
In early August 2022 the Ministry of Antimonopoly Regulation and Trade (MART) clarified (available in Russian) whether a state duty is payable for placing taxi service individualisation means (Yandex, Uber trademarks etc.) on taxicabs.
Based on a broad definition of “advertisement”, MART came to the following conclusions:
- placement of means of individualisation (a Yandex or Uber trademark, etc) on taxicabs is an advertisement. Such means of individualisation are used to identify taxi services, draw attention to the relevant services, generate or maintain interest in them and/or promote them on the market;
- placement of a means of individualisation on taxicabs on the basis of an agreement concluded between the carrier and the owner of this individualisation means they are subject to a state duty;
- at the same time, if the owner of such a means of individualisation (for example, a Yandex or Uber trademark, etc) is a foreign advertiser, then in order to place this advertisement on taxicabs, the foreign advertiser should conclude an agreement with the advertising agency. The advertising agency, in turn, will conclude agreements for the advertisement placement with carriers.
Reference: 1) advertisement – information about the advertising object, placed (or distributed) in any form by any means, aimed at drawing attention to the advertising object, and generating or maintaining interest in it and/or its promotion on the market
2) advertising agency – a Belarusian legal entity or individual entrepreneur providing services for the provision of advertising to an advertising distributor for its placement (or distribution) on the territory of the Republic of Belarus
Parallel import (update)
As we mentioned in the previous highlights, Belarus is going to legitimise parallel import for certain goods. We will keep you updated – as far as we know, as of mid-September, there are no new developments in this area in Belarus.
At the same time, based on publicly available sources, it is planned that the parallel import programme in Russia will be extended to 2023.
Our international Intellectual Property team is at your disposal, should you need advice on any legal issues you are facing.
Contact our experts:
Marina Golovnitskaya, counsel