TRADEMARK IN BELARUS

Requirements for national filing

A trademark application may be filed IMMEDIATELY upon receipt of the following information VIA FAX or e-mail:

name and address of the applicant
mark (word or image)
list of goods and services

LAW ON TRADEMARKS AND SERVICE MARKS

Entered into force 05.03.1993, edition from 29.10.2004

This Law governs the relations arising from the registration, legal protection and use of trademarks and service marks.

Title I

The Trademark and Service Mark and the Legal Protection Thereof

Article 1

Trademark and Service Mark

1. The trademark and the service mark (hereinafter referred to as "trademark") are signs that serve to distinguish the goods or services of one natural person or legal entity from the goods or services (hereinafter referred to as "goods") of the same type of another natural person or legal entity.

2. Signs which may be registered as trademarks are any signs capable of being represented graphically, words including personal names, letters, numerals, figurative elements, combinations of colors, three-dimensional signs including the shape of the goods or their packaging as well as any combination of such signs.

3. A trademark may be registered in any color or in any combination of colors.

Article 2

Legal Protection of Trademarks

1. The legal protection of a trademark in the Republic of Belarus shall be based on its official registration with the state institution "National Center of Intellectual Property" of the Republic of Belarus (hereinafter referred to as "the Patent Authority") effected in accordance with the provisions of this Law or under international treaties to which the Republic of Belarus is party.

2. The trademark may be registered in the name of a legal entity or in the name of a natural person.

3. The right to the trademark is protected by the State. The registration of a trademark shall give rise to the issue of a trademark certificate. The certificate shall attest the priority date of the trademark and the owner's exclusive right to the trademark for the goods specified in the certificate; it shall contain a representation of the trademark.

Article 3

Exclusive Right to the Trademark

1. The owner of the trademark shall have the exclusive right of use and disposal thereof, and also the right to prohibit other parties from making use of the trademark.

2. No one may make use of a trademark that is protected on the territory of the Republic of Belarus and for which a certificate has been issued without having obtained the authorization of the owner of the trademark.

3. The manufacture, use, importation, offering for sale, sale and any other form of marketing, or the holding for that purpose, of a trademark or of a product designated by a trademark or of a sign misleadingly similar to a trademark shall constitute infringements of the rights of the owner of the trademark if they occur without authorization and if they relate to goods of the same type or to goods not of the same type designated by a trademark recognized as a well-known trademark in the Republic of Belarus.

Article 4

Absolute Grounds for Refusal of Registration

1. Those trademarks may not be registered:

1.1 that lack any distinctive features;

1.2 that have become the general use as designation for goods of a particular type;

1.3 that constitute generally accepted symbols or terms;

1.4 that consist exclusively of signs or indications which are used to designate the kind, quality, quantity, properties, intended purpose or value of the goods, or the place and time of their production or sale;

1.5 that represent the shape of the goods or their packaging which results exclusively or mainly from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods.

2. The signs or indications referred to in paragraph (1) of this Article may be incorporated in the trademark as unprotected elements, insofar as they do not predominate.

3. The provisions of paragraph (1) of this Article may not apply in relation to the signs which on the filing date of the application for registration of a trademark have acquired a distinctive character in consequence of the use that has been made of them.

4. Those trademarks may not be registered that consist exclusively of signs which constitute armorial bearings, flags or emblems of States, official names of States, flags, emblems or abbreviated or full names of international intergovernmental organizations, official control, warranty or assay marks or decorations or other honorary distinctions, or are confusingly similar to such signs. Such signs may, with the authorization of the competent authorities or the owner, be incorporated in trademarks as unprotected elements.

5. Those signs may not be registered as trademarks:

5.1 that are false or liable to mislead the consumer as to the product, its place of manufacture or its manufacturer;

5.2 that constitute or consist of an indication of origin for wines or spirits which is protected under international treaties to which the Republic of Belarus is party, identifying wines or spirits not originating in the place indicated by the indication of origin in question;

5.3 that are contrary to the public interest, humanitarian principles or morality.

Article 5

Other Grounds for Refusal of Registration

1. Those signs may not be registered as trademarks that are identical or misleadingly similar:

1.1 to trademarks registered or filed for registration earlier in the Republic of Belarus in the name of a third party for goods of the same type, and the priority date of which is earlier;

1.2 to trademarks of third parties that are protected in the Republic of Belarus by virtue of international treaties for goods of the same type;

1.3 to trademarks of third parties recognized as well-known in the Republic of Belarus in the manner prescribed by the Patent Authority for goods of any type.

2. The signs which are misleadingly similar to the trademark referred to in paragraph (1) of this Article may be registered as trademarks on condition that the owner of the trademark agrees to such registration.

3. Those signs or indications shall not be registered as trademarks that constitute reproductions of:

3.1 trade names (or parts thereof) that are known in the territory of the Republic of Belarus and belong to third parties for goods of the same type;

3.2 industrial designs in which the rights are owned by third parties in the Republic of Belarus, if the priority date of the industrial design is earlier than that of the trademark in respect of which an application for registration has been filed;

3.3 appellations of origin that are protected in the Republic of Belarus;

3.4 titles of scientific, literary or artistic works known in the Republic of Belarus or names of persons or quotations from such works, artistic works or parts from such works without the authorization of the owner of the copyright or his successors in title;

3.4-1 titles of registered in the Republic of Belarus mass media without authorization of their constitutors in respect of similar goods;

3.5 family names, forenames, pseudonyms and derivatives thereof, portraits and facsimiles of persons known in the Republic of Belarus in infringement of their personal moral rights, except with the authorization of those persons or their successors in title;

3.6 certification marks protected according to the procedure established by the law in force.

4. The conditions for determining whether a trademark is well known as specified in subparagraphs 3.1, 3.4 and 3.5 of paragraph 3 of this Article shall be specified by the Patent Authority and shall be considered on the priority date of the sign applied for registration as a trademark.

Article 6

Application for Registration of a Trademark

1. The application for registration of a trademark (hereinafter referred to as "the application") shall be filed with the Patent Authority by a natural person or legal entity (hereinafter referred to as "the applicant").

2. The application may be filed through a Belarusian patent agent.

3. Foreign legal entities with headquarters abroad or natural persons resident outside the Republic of Belarus, and also their patent agents, shall, in order to secure the registration of trademarks or the prolongation of the term of validity thereof in the Republic of Belarus, act through patent agents registered with the Patent Authority in the established manner.

4. The application shall relate to one trademark only.

5. The application shall contain:

- a request for registration of a sign as a trademark, in which the applicant's name and also his headquarters or residence shall be stated;

- the sign in respect of which the application is filed;

- the list of goods for which registration of the trademark is sought, grouped according to the classes of the International Classification of Goods and Services for the Purposes of the Registration of Marks.

6. The application shall be accompanied by:

- a document attesting payment of the prescribed fee;

- a document attesting the powers of the patent agent if the application is filed through such an agent;

- the rules of the collective mark if the application is filed for the registration of a collective mark.

7. The requirements to be met by the documents constituting the application and the time limits for the filing of those documents shall be laid down by the Patent Authority.

Article 7

Priority of the Trademark

1. The priority of a trademark shall be determined by the date of filing of an application with the Patent Authority. The filing date shall be the date of receipt by the Patent Authority of the documents meeting the requirements specified in paragraph (5) of Article 6 of this Law.

2. The priority of a trademark may be determined by the filing date of the first application made in respect of the said trademark in a foreign country party to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at the Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, and as amended on October 2, 1979, (hereinafter referred to as "Convention priority"), provided that the Patent Authority receives the application within six months following the said date.

3. The priority of a trademark affixed to a product displayed at an official or officially recognized international exhibition organized on the territory of one of the States party to the Paris Convention for the Protection of Industrial Property may be determined by the date as from which the product in question was on public display at that exhibition (hereinafter referred to as "exhibition priority"), provided that the Patent Authority receives the application within six months following the said date.

4. The applicant who wishes to avail himself of the right of Convention priority or the right of exhibition priority shall state that fact on filing the application or within two months following the date of receipt of the application by the Patent Authority, and shall file at the same time the documents supporting the validity of his claim, or submit those documents within three months following the date of receipt of the application by the Patent Authority.

5. The priority of a trademark under the divisional application shall be determined by the date of priority of a trademark under the initial application filed in accordance with Article 8(7) of this Law.

6. The priority of a trademark may be determined by the date of priority of the international application for registration of a trademark filed under international treaties to which the Republic of Belarus is party.

Article 8

Examination of the Application for Registration of a Trademark

1. The examination of the application, which shall include the preliminary examination and the substantive examination, shall be conducted by the Patent Authority in accordance with this Law and with the implementing regulations thereof drawn up by the Patent Authority.

2. The applicant shall have the right, on his own initiative or at the request of the official examiner, to intervene in person or through his agent in order to settle questions arising in the course of the preliminary examination and the substantive examination.

3. During any stage in the examination of the application and before the date of registration of the trademark, the applicant shall have the right to supplement, detail or correct the elements of the application on his own initiative.

4. Where additional elements alter the substance of the sign in respect of which the application is filed or add goods to the list figuring in the application, they shall not be taken into consideration, and the applicant may file them as a separate application.

5. During the examination of the application, but before the date of registration of the trademark, the applicant shall have the right to file a request with the Patent Authority to change the name of the applicant thereon, on condition that the new applicant gives his consent.

6. The applicant may request the withdrawal of his application at any stage in the examination thereof, but not after the date of registration of the trademark.

7. During the examination of the application and before a decision is taken thereon, the applicant shall have the right to file a divisional application in respect of the same sign for some goods listed in the initial application on the date of filing thereof with the Patent Authority. Divisional applications shall continue to enjoy the filing date of the initial application and the priority date of the trademark concerned by that application.

Article 9

Preliminary Examination

1. The application shall undergo preliminary examination within two months following the date of its receipt by the Patent Authority.

2. The preliminary examination shall serve to ensure that the required documents specified in Article 6 of this Law are all present and that they meet the prescribed requirements, and also that the fees have been paid. During the preliminary examination, the applicant may be invited to supplement, detail or correct the elements of the application. Supplemented, detailed or corrected elements shall be submitted to the Patent Authority within three months following the date of receipt of the invitation to do so. That period may be extended at the applicant's request by no more than three months, on condition that the said request is received before the current period expires. If the applicant has not kept to the prescribed period or has not replied to the invitation, the application shall not be taken into consideration.

3. Depending on the results of the preliminary examination, the Patent Authority decides whether to take or not to take the application into consideration.

4. If the application is taken into consideration, the Patent Authority shall determine the filing date of the application, and also the date of Convention priority or exhibition priority, provided that the applicant has submitted the necessary elements substantiating the validity of his Convention or exhibition priority claim.

Article 10

Substantive Examination of the Application

1. The substantive examination shall take place on completion of the preliminary examination.

2. It shall serve to determine the priority date of the trademark if it has not been determined in the course of the preliminary examination, and to ensure that the claimed sign meets the conditions set forth in Articles 4 and 5(1) of this Law.

3. During the examination the Patent Authority shall have the right to invite the applicant to provide more information without which the examination is not possible. The additional information shall be furnished to the Patent Authority within three months following the date of receipt of the invitation. That period may be extended at the applicant's request, on condition that the request is received before the said period expires. If the applicant has not kept to the prescribed period, or has not replied to the invitation, the application shall be deemed to have been withdrawn and the applicant shall be informed accordingly.

4. The decision to register the trademark or to refuse registration shall be based on the results of the examination.

5. The decision to register the trademark may be reconsidered by the Patent Authority in the event of receipt of an application with an earlier priority date under Article 7 of this Law for an identical or misleadingly similar sign in respect of goods of the same type.

6. In the event of disagreement with the decision taken on the substantive examination, the applicant shall have the right, within three months following the date on which he has received the decision, to file a request for reconsideration with the Patent Authority. That period may be extended at the applicant's request, on condition that the request is received by the Patent Authority before the said period expires.

7. The procedure for extension of the time limits under paragraphs 3 and 6 of this Article shall be set forth by the Patent Authority.

8. The reconsideration shall take place within two months following the date of receipt of the applicant's request.

Article 11

Appeal Against the Decision on the Application

1. In the event of disagreement with the decision taken on the preliminary examination not to take the application into consideration or with that taken on the reconsideration of the claimed sign, the applicant shall have the right, within three months following the date on which he received the decision, to appeal against it to the Examination Appeal Board of the Patent Authority (hereinafter referred to as 'the Appeal Board').

2. The appeal shall be considered within four months of the date on which it was received. The procedure for consideration of appeals by the Appeal Board shall be laid down by the Patent Authority.

3. The applicant may appeal to the Supreme Court of the Republic of Belarus against the ruling of the Appeal Board within six months following the date on which he received the ruling.

Article 12

Registration of the Trademark and Issue of the Trademark Certificate

1. On the basis of the decision to register the trademark, the Patent Authority shall effect registration in the Official Register of Trademarks and Service Marks (hereinafter referred to as "the Register of Trademarks") within one month following the date of receipt of a document attesting payment of the prescribed fee. The particulars concerning the registration of the trademark and any amendment subsequently made to those particulars shall be entered in the Register of Trademarks. The contents of the particulars shall be determined by the Patent Authority.

2. The Patent Authority shall issue an extract from the Register of Trademarks at the request of any natural person or legal entity.

3. The trademark certificate shall be issued by the Patent Authority within one month following the date of registration of the trademark in the Register of Trademarks.

Article 13

Term of the Registration

1. The term of the registration of the trademark shall be 10 years from the date on which the Patent Authority received the application.

2. The term of the registration of the trademark may be renewed for further periods of 10 years at the request of the owner, filed in the course of the last year of validity of the current term of the registration. For the purposes of the renewal of the term of the registration of the trademark, the owner may, on request and subject to payment of an additional fee, be granted an additional period of six months after the term of the registration expires.

3. The Patent Authority shall record any renewal of the term of the registration of the trademark in the Register of Trademarks and, at the request of the owner, enter it on the trademark certificate.

Article 14

Amendment of the Registration and Rectification of Errors

1. The owner of the trademark shall inform the Patent Authority of any amendment to his business name (for legal entity), surname, forename or patronymic (for natural persons) or address, any reduction in the list of goods for which the trademark is registered, any amendment to elements of the trademark that have no effect on its nature and any other amendment concerning the registration of the trademark.

2. Any amendment shall be recorded in the Register of Trademarks and, at the request of the owner, entered on the trademark certificate.

3. The Patent Authority may, on its own initiative or at the request of the owner, rectify any grammatic, typographic or other obvious error in the elements of the registration of the trademark.

4. The registration of the trademark may be divided on the owner�s declaration by dividing the goods for which the trademark is registered.

Article 15

Publication of the Particulars of the Registration

The Patent Authority shall publish the particulars concerning the registration of the trademark that have been recorded in the Register of Trademarks in accordance with Article 12 of this Law in the Official Bulletin of the Patent Authority (hereinafter referred to as "the Official Bulletin") within three months following the date of registration of the trademark or the date of recording in the Register of Trademarks of amendments or rectifications concerning the registration.

Article 16

Registration of the Trademark Abroad

1. Any natural person or legal entity of the Republic of Belarus shall be entitled to have a trademark registered abroad or to effect the international registration thereof.

2. The application for international registration of the trademark shall be filed in accordance with the international treaties to which the Republic of Belarus is party.

3. The costs arising from registration of the trademark abroad or from the international registration thereof shall be borne by the applicant or, with his agreement, by any other natural person or legal entity concerned.

Article 17

Fees

1. Fees shall be payable for the performance of legal acts in relation to the registration of trademarks. Fees may be paid by the applicant, the trademark owner or, with their agreement, by any other natural person or legal entity.

2. The list of acts for the performance of which fees are payable, the procedure, amount and time limits for the payment of fees shall be determined by the Council of Ministers of the Republic of Belarus.

3. The conditions governing the application of fees shall be specified by the legislative texts of the Republic of Belarus.

Title II

Collective Marks

Article 18

Right to the Collective Mark

The trademark of an association of legal entities, the purpose of which is to designate goods manufactured and/or placed on sale by the association and having common qualitative or other characteristics, shall be considered a collective mark.

Article 19

Registration and Use of the Collective Mark

1. The application for registration of the collective mark shall be accompanied by the rules thereof which shall specify the business style of the association authorized to register the collective mark in its name, the list of legal entities authorized to use the said mark, the purpose of the registration thereof, the list and the common qualitative or other characteristics of the goods that will be designated by the collective mark, the conditions and the supervisory procedures to which its use is subject, and also the sanctions applicable in the event of violation of the rules of the collective mark.

2. In addition to the particulars specified in Article 12 of this Law, information on the legal entities authorized to use the collective mark shall be recorded in the Register of Trademarks and entered on the collective mark certificate. That information, to an extract from the rules of the collective mark that specifies the common qualitative or other characteristics of the goods for which the mark is registered, shall be published in the Official Bulletin by the Patent Authority. The owner of the collective mark shall notify the Patent Authority of any amendment to the rules of the collective mark.

3. If a collective mark is used on goods that do not have any common qualitative or other characteristics, the validity of the registration may be terminated, either totally or in part, on a ruling of the Supreme Court of the Republic of Belarus made at the request of any third party.

4. The collective mark or the application for registration thereof may be converted into the trademark belonging to one of the legal entities authorized to use the collective mark in accordance with the rules of the said mark, or into the trademark application. The conditions governing the said conversion shall be laid down by the Patent Authority.

Title III

Use of the Trademark

Article 20

Use of the Trademark and Consequences of Failure to Use the Trademark

1. The affixing of the trademark on goods for which it is registered or on the packaging thereof, by the owner of the trademark or by any person to whom the right to use the trademark has been granted pursuant to a license contract under Article 23 of this Law shall be deemed to constitute use of the trademark.

2. The mention of the trademark in advertising, in printed publications, or signs or in connection with the display of goods at fairs or exhibitions held in the Republic of Belarus may likewise be deemed to constitute use of the trademark, provided that the failure