Non-use trademark cancellation is quite a common legal tool for combatting trademark piracy, as well as preventing rightsholders from “taking up space” with inactive trademark registrations.
In Belarus, a trademark registration may be fully or partially cancelled by a decision of the Intellectual Property Board of the Supreme Court if, without a valid reason, the trademark was not used for any three consecutive years after its registration. The term used to be five years, but currently legislation stipulates three years.
The burden of proof rests with the applicant and includes: 1) proving non-use of the trademark by the defendant and 2) proving intent to use by the applicant.
Proving non-use typically involves collecting evidence from the Belarusian authorities, for example, from customs with regards to goods supply, from the domain names registrar with regards to domain names, or from the registering authority if sale of goods requires registration (for example, with the Ministry of Healthcare for pharmaceuticals). In turn, the opponent may mount a defence by showing use of the trademark or by claiming that the non-use was for a valid reason (for example, due to waiting for registration of a branded pharmaceutical). It is worth noting that, although the burden of proof rests with the applicant, the defendant taking a passive approach in this category of cases significantly increases the probability of satisfying the claim.
Proving intent to use is a rather unusual requirement in Belarusian legislation, which is often not required in other countries. Proving intent to use may involve the presence of commercial interest in the use of the trademark, or the impossibility of it being used due to the administrative barrier caused by the legal protection of the trademark.
Recently the IP Board of the Supreme Court rendered a decision which clearly demonstrates the peculiarities of Belarusian non-use cancellations. The claim was submitted by a major global cosmetics manufacturer, and concerned the trademark “SIMPLE creative products”, which covers a range of goods in Class 03 of the ICTU.
The applicant filed a range of evidence, namely:
- information from the Belarusian state authorities confirming that the defendant did not apply for certificates in respect of products covered by the relevant trademark
- information from WIPO confirming that there were no licence or assignment agreements covering the relevant trademark.
These facts, as well as the defendant’s failure to provide any evidence proving the use of TM, were collectively assessed by the court as sufficient evidence of TM non-use.
Proving intent to use
According to case materials, the applicant proved commercial interest by submitting evidence of:
- ownership over trademarks containing the verbal element “SIMPLE”
- sales of 03 ICTU class products bearing the designation “SIMPLE” by an affiliated company
- the existence of an administrative barrier: namely, the refusal of the Belarusian patent office to register the combined trademark “simple” due to its confusing similarity to the defendant’s trademark.
This decision highlights the importance of active participation in case proceedings for the defendant should it wish to keep its trademark, and illustrates some examples of specific evidence which may be accepted by courts.
This article first appeared on WTR Daily, part of World Trademark Review, in September. For further information, please go to www.worldtrademarkreview.com.