As summer and the vacation season is rapidly approaching, the Sorainen Intellectual Property team once again shares intellectual property news about Belarus. Statistical data on the intellectual property market, the dispute around “PETROLEUM”, and an update on restrictions on intellectual property owners are presented for your review.
Key statistics re: the intellectual property market in 2022
Belarus is a “first-to-file” country in relation to industrial property: for example, in relation to inventions, utility models, industrial designs, trademarks. This means that, as a rule, an industrial property receives legal protection only after its registration. Registration matters are handled at the national level by the Belarusian patent authority, the National Center of Intellectual Property (NCIP).
Agreements which are typical for the field of industrial property (licences, assignments, pledges, franchises) should also be registered with NCIP if their subject matter is a national industrial property. Otherwise, such agreements are invalid.
Below are the relevant statistics for 2022 published by NCIP. More information about the statistics can be found via this link (available in Russian).
Dynamics of applications filed for granting titles of protection (2021–2022), except for trademarks and geographical indications
Compared to 2021, in 2022 the number of applications for:
- invention patents – decreased by approx. 11%
- utility model patents – decreased by approx. 8%
- industrial design patents – decreased by approx. 29%
- plant variety patents – increased by approx. 90%
- topologies of integrated circuits – increased by approx. 67%
Dynamics of trademark applications filed under national and international procedures during 2021–2022
In 2022 the total number of trademark applications received was 6,696, which is approx. 15% less than in 2021 (when there were 7,850 applications).
Distribution of trademark applications filed under national and international procedures in 2022
Similarly to in previous years (2017–2021), the applications submitted under the international procedure prevail numerically.
Distribution of trademark applications filed under the national procedure by national and foreign applicants
Foreign applicants apply to NCIP for registering trademarks more often than Belarusian applicants.
We also noted that in 2022 there were no applications for granting the right to use a geographical indication.
Shares of license, assignment and franchise agreements in the total number of agreements registered in 2022
In addition, in 2022 one agreement on pledge of industrial property rights was registered.
In 2022 the most popular subjects of industrial property agreements were trademarks.
Dispute between bars over the trademark “PETROLEUM”
The trademark “PETROLEUM” (the Trademark):
The word “neft” depicted on the mark means “petroleum” in English.
The dispute involved two Belarusian bars offering services under the brand “NEFT”: Bar A and Bar B. Bar A has Trademark registration, unlike Bar B.
The dispute was triggered by Bar B’s use of designations arguably similar to the Trademark:
Designations used by Bar B (the Designations)
The Trademark has been registered since 2020. Some time later Bar A discovered that Bar B was using the Designations on outdoor and indoor signage, menu, social networks, etc. In August 2022, Bar A applied to the antimonopoly authority, claiming unfair competition.
According to a decision dated 14 March 2023, the authority did not find unfair competition or other violations of antimonopoly law during the investigation. The reasoning was based on the following:
- The Trademark and the Designations are not similar to the extent that they cause confusion
The antimonopoly authority considered the Trademark and the Designations to be graphically and visually distinguishable. Moreover, a potential customer can visually separate them. This ground was also confirmed by specially engaged experts. The experts, inter alia, established that the Trademark and Designations use different figurative styles and have different degrees of graphical complexity. As to the used fonts, they belong to the group of grotesque fonts which are public and do not have unique characteristics.
- Bar A and Bar B cannot be considered competitors
According to the antimonopoly authority, the bars carry out their catering business within different geographical market boundaries: Bar A, only in the capital of Belarus, Minsk; and Bar B, only in the town of Rechitsa.
- Customers are not likely to be confused by the Designations used by Bar B
After analysing the Trademark and Designation use options, the antimonopoly authority established that a potential customer, when entering the relevant bar, has a clear idea of the place visited due to the visual distinctiveness of the bars.
Moreover, as to food delivery: on the one hand, Bar A uses a service which delivers food only in Minsk, not in Rechitsa; on the other hand, Bar B uses another service which delivers food only in Rechitsa, not in Minsk.
Finally, the customer comment books (special journals placed for customers and available for state inspections) of Bar A and Bar B do not contain complaints as a result of confusing Trademarks with Designations. The visitors’ residences are mostly limited to the cities in which the bars are located.
- Bar B did not acquire advantages in entrepreneurial activities
It was established that Bar B could not acquire advantages in entrepreneurial activities, including elimination of Bar A from the market. The reason is that the Designations used by Bar B could not mislead customers about Bar B belonging to Bar A.
- There was no loss/damage to business reputation caused to Bar A
The antimonopoly authority concluded that there was no reason to believe that there was at least a possibility of redistributing consumer demand in favour of Bar B as a result of using the Designations.
Use of Intellectual property without its owner’s consent and parallel import: current status
As mentioned in the previous highlights, in early 2023 Belarus adopted the Law on Limitation of Exclusive Rights to Intellectual Property, which provides, among other, for:
- use of intellectual property without the owners’ consent
- legalisation of parallel import
As of 25 May 2023, to our knowledge, the Law has not been de facto applied, because the following lists have not been published:
- list of rightsholders/collective management organisations whose intellectual property may be used without consent
- list of goods essential for the domestic market for which parallel import is allowed
We will keep you posted on further developments.
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