The start of 2023 has been rather eventful for Belarusian intellectual property (IP) legislation. The Belarusian Government has allowed usage of IP owned by residents of “unfriendly states”, under certain conditions (with compensation for the use still possible), and opened the country’s market to parallel import – again, under certain conditions. Please see the overview of the Law of the Republic of Belarus No. 241-Z dated 3 January 2023 “On Limitation of Exclusive Rights to Intellectual Property” (Limitation Law). Also, the trademark of the Eurasian Economic Union (EAEU trademark) seems about to come into force for real. Please see the overview of the Law of the Republic of Belarus No. 243-Z dated 9 January 2023 “On Amending Laws on Legal Protection of Intellectual Property” (Amendment Law).
Use of IP without the permission of rightsholders, registration of the EAEU trademark and other news – all this and more is described in a fresh highlights review prepared for you by the Sorainen Intellectual Property team.
Use of IP without its owner’s consent
Limitation Law allows IP use without the permission of its rightsholder or collective management organisation, provided that the following conditions are satisfied:
1. the rightsholder or collective management organisation with respect to this IP is from an “unfriendly state”, which means that they are:
- related to the “unfriendly states” (e.g. citizens of an “unfriendly state”; legal entities registered in, located at, having their main business activity in, or receiving their principal income from an “unfriendly state”);
- controlled by persons mentioned above, regardless of the place of their registration or main business activity.
2. the rightsholder or collective management organisation has forbidden or has not permitted use of the IP in Belarus; and
3. the rightsholder or collective management organisation is included in the lists1 compiled by the Belarusian state authorities appointed by the Belarusian Government.
The regulation described above relates to legally released IP. Limitation Law, in particular, indicates computer programs, audio-visual works (e.g. films), music, and TV and radio broadcasts. The new regulation may concern businesses such as those related to software provision, companies providing films for local cinemas, and providers of content for local TV.
Users still have to pay in Belarus for the use of IP originating from “unfriendly states”. The remuneration will be credited to the account of the Belarusian patent authority and kept there for three years unless there is a demand by the rightsholder. Subsequently, if the funds have still not been demanded, they will be directed to the Belarusian budget.
Parallel import is allowed
The Limitation Law essentially allows parallel import of specific goods in certain circumstances. Namely, import and circulation of goods in Belarus with the use of IP (e.g. trademarks) is allowed without the consent of IP rightsholders from foreign states, including “unfriendly” ones. This is applicable subject to the following condition: these goods should be included in the list of goods which are essential for the domestic market. The described use is not considered IP infringement.
Lists2 of goods will be compiled by the Belarusian state authorities appointed by the Belarusian Government. Another peculiarity is that goods should not be included in these lists if the rightsholders or other entities (with rightsholders’ consent) have trade and economic cooperation with Belarusian legal entities or individuals and this cooperation “prevents a critical shortage of these goods in the domestic market”.
Finally, if goods are included in the list of goods which are essential for the domestic market, the relevant IP should be temporarily excluded from the Belarusian IP customs register.
The most important provisions of Limitation Law entered into force on 17 January 2023 and will remain in force until 31 December 2024 inclusive. Upon termination of such provisions, the following actions will not be recognised as IP infringements:
✔ further sales of goods which are included in the lists of goods essential for the domestic market and imported into Belarus from 17 January 2023 until 31 December 2024 inclusive;
✔ further IP use on goods without the consent of the IP rightsholders if such IP is needed for use of the goods in accordance with their purpose.
The Amendment Law was published on 12 January 2023. Most of the provisions will come into force on 13 November 2023. The Amendment Law affects the following IP: trademarks, geographical indications, inventions, utility models, industrial designs, plant varieties and integrated circuit layouts, as well as copyright and related rights objects.
The following provisions are among the most interesting changes:
1) the possibility of registering a single colour as a trademark is provided – previously, the opportunity had existed to register combinations of colours (but not a single colour) as a trademark
2) the possibility of registering an EAEU trademark is described – so far, it is still not possible to register the EAEU trademark.
3) the definition of trademark “use” is clarified – trademark use should not be established for actions3 performed by third parties for the trademark owner according to the owner’s task (or) expressed in the agreement;
4) a new possibility to grant a compulsory licence for the use of inventions, utility models or industrial designs without the consent of the patent owner is prescribed4 – such a licence can be issued by the decision of the Belarusian Government in order to ensure national security, state defence, or protection of people’s life and health;
5) a new case of free use of a musical work without the consent of the copyright holder is added – such a use is possible when holding and/or covering cultural events in the mass media, subject to the following conditions: 1) they have state, political, historical, ideological, international or public significance; 2) they are financed from the budget; 3) they are dedicated to public holidays and memorable dates or important events in the life of the state and society.
1 As far as we know, as of 6 March 2023 the relevant lists have not been published.
2 As far as we know, as of 6 March 2023 the relevant lists have not been published.
3 For example, the trademark use of goods, when rendering services, in advertising, on the internet, etc.
4 This provision has already entered into force.
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