Recent disputes about unfair competition with the use of trademarks in various commodity markets (cheeses, veterinary products, etc.) – all this and more is described in in a fresh highlights review prepared for you by the Sorainen Intellectual property (IP) team.
Bonfesto vs Bonvissto: dispute between cheese makers
A Belarusian dairy plant (the Plant), as well as another Belarusian cheese manufacturer (the Company) participated in a “cheese dispute”. The dispute started when the Plant drew attention to a Bonvistto-branded mozzarella cheese produced by the Company, similar to the mozzarella cheese produced by the Plant, Bonfesto:
The Plant has held the Bonfesto trademark since 2014. However, the Company is the owner of the Bonvistto trademark, registered in 2021:
In October 2021, the Plant applied to the Belarusian antimonopoly authority. The Plant initially referred to the article of the Belarusian antimonopoly law which prohibits unfair competition, in particular related to acquisition and use of the exclusive right to trademarks.
During consideration of the case it was established that the Company had legally obtained the exclusive right to use the Bonvissto trademark, and unfair competition under this article was excluded.
This did not end the case. The Belarusian antimonopoly authority analysed the possibility of applying another article of the Belarusian antimonopoly law, which prohibits unfair competition, in this case applying it to copying or imitating the packaging of mozzarella cheeses.
After an investigation lasting almost a year, the antimonopoly authority found that the Company’s actions did not constitute unfair competition. A sociological survey was conducted during the investigation. The results of the survey showed that the vast majority of respondents did not see a similarity between packages of Bonfesto and Bonvissto mozzarella cheeses. Furthermore, according to the respondents it was impossible to confuse these cheeses with each other.
Conflict between the Turkish and the Belarusian Nevpa
The next dispute about unfair competition took place in relation to the automotive parts market. This time a conflict arose between the Turkish manufacturer of automotive parts Nevpa and its former official representative in Belarus, NEVPA-Trading LLC.
After the termination of business relations, Nevpa discovered the following issues with the actions of NEVPA-Trading LLC:
- NEVPA-Trading LLC was promoting goods using a similar domain name. The official website of NEVPA-Trading LLC, at http://www.nevpa.by, coincides with the official website of Nevpa, at http://www.nevpa.com.tr, in terms of content, structures, use of colour elements, etc.
- NEVPA-Trading LLC were misleading the public when selling third-party products under the Trademark
For reference: “The Trademark” means the trademark:
- NEVPA-Trading LLC, having registered the Trademark in 2013, continued using it upon the termination of legal relations with Nevpa;
- the official website of NEVPA-Trading LLC contains advertisements for Nevpa products.
Thus, in 2020 Nevpa applied to the Belarusian antimonopoly authority with an unfair competition claim.
After two years of consideration of the case, the Belarusian antimonopoly authority established there was an absence of unfair competition from NEVPA-Trading LLC. This decision was justified, among other things, by the following:
- with regard to the domain name: 1) the domain name “nevpa.by” is similar to the company name and Trademark owned by NEVPA-Trading LLC; 2) the domain name “nevpa.com.tr” is not registered in the national Internet domain zone (“.by” or “.бел”); 3) it was established that the sites http://www.nevpa.by and http://www.nevpa.com.tr are completely different in terms of design theme, colour scheme, site structure, etc;
- with regard to the Trademark: 1) The Trademark is registered in the name of NEVPA-Trading LLC; 2) there is no information about registered trademarks in the name of Nevpa, and neither have any applications for trademark registration been filed;
- with regard to advertising: 1) NEVPA-Trading LLC has not sold goods manufactured by Nevpa since 2013; 2) the goods sold are marked with the logo of another company, the official representative of which since 2013 has been NEVPA-Trading LLC.
Unfair competition following trademark registration
This time, a dispute about unfair competition took place in the veterinary products market. The parties to the conflict were two Belarusian suppliers of veterinary products: Company A and Company B.
Company A, which sells veterinary drugs including Metrostim-Bel, filed a claim with the Belarusian antimonopoly authority about unfair competition from Company B.
Upon review of the claim, the following was found:
- company B is the owner of the marketing authorisation with regard to the veterinary product Metrostim-Bel in Belarus;
- when Company B registered the Trademark, the veterinary product named Metrostim had already been in production and known in the CIS and the Baltic countries for some time;
For reference: “The Trademark” means the trademark:
- after registration of the Trademark, Company B sent a cease-and-desist letter to Company A to stop the illegal use of the Metrostim-Bel designation, withdraw from market and destroy the counterfeit goods, labels and packaging for Metrostim-Bel products, and pay compensation for the illegal use of the Trademark. In addition, Company B also sent an application to the police with a request to conduct an inspection in relation to Company A.
Based on the results of the consideration of the case, the antimonopoly authority made the decision that the actions of Company B were indeed unfair competition. The actions of Company B described above were found to be illegal and aimed at obtaining business advantages. According to the antimonopoly authority, Company B intended to eliminate a competitor, and features of unfair competition were identified with regard to acquiring and using the exclusive right to a trademark.
Innovations in November in the field of intellectual property at the regional level
Additions and amendments to the Patent Instructions of the Eurasian Patent Organisation (EAPO) came into force on 1 November 2022.
For reference: EAPO is an international organisation established in order to perform administrative tasks related to the issuance of Eurasian patents through the functioning of the Eurasian patent system, which includes Belarus, Turkmenistan, Tajikistan, Russia, Kazakhstan, Azerbaijan, Kyrgyzstan and Armenia.
The main innovation is the option to include digital three-dimensional (3D models) of applied objects in Eurasian patent applications. This innovation relates both to inventions and industrial designs.
According to EAPO, this innovation is expected to simplify the process of filing a Eurasian application and obtaining a Eurasian patent for applicants. They will get more opportunities to demonstrate the applied objects. In the future this may reduce the time taken to issue a patent, which means it will speed up market entry. This innovation is especially important in relation to industrial designs and the appearance of products.
Among other November innovations, it is also worth noting the following changes:
- the deadline for filing oppositions will now be nine months from the date of publishing information on the grant of a Eurasian patent for an invention or industrial design;
- the list of inspections carried out in relation to an applied industrial design at the examination stage is expanding, and there are also more ways to exclude elements of the product appearance for which the applicant does not claim legal protection.
Our international Intellectual property team is at your disposal, should you need advice on any legal issues you are facing.
Contact our experts:
Maksim Salahub, partner
Marina Golovnitskaya, counsel