A trademark is a strong competition tool helping consumers to navigate through variety of supply. The value of some trademarks can reach as much as $170 billion. Considering the intangible nature of trademarks, no wonder there is big temptation to take advantage of someone’s business reputation and marketing efforts. And trademark owners face counterfeits, parallel imports, non-use cancellations, genericide... But probably the most dramatic is trademark hijacking, when a third party registers a well-known brand in its own name, and may not only enjoy free riding, but close the market for the original brand owner.
In our experience, the legal framework in Belarus is quite favourable for hijackers. In short, the point of this article is “check whether your trademark is registered in Belarus, otherwise one day you may be in trouble”. For those who want more detail, below we quickly run through the legislative framework and comment on possible solutions if your trademark has been hijacked.
No registration – no protection
In order to be protected in Belarus, a trademark should be registered either via extending international registration or via national registration with the Belarus patent authority. If there is no registration, essentially there is no protection.
Belarus does not recognise the concept of prior use or unfair registration. Therefore, even if an unregistered trademark is used for supplies to Belarus for decades, the mark is not protected. Paradoxically, the more the trademark is used, the more vulnerable it becomes because it is known to consumers and attractive for hijackers.
Three typical situations in which you may discover that your trademark has been hijacked are:
- you try to register your trademark but your application is refused because it is identical/confusingly similar to the hijacker’s trademark;
- you discover a counterfeit on the market and want to enforce your rights but your counsel in Belarus reports not only that you cannot enforce because you do not have registration but in fact the trademark has already been registered by the “counterfeiter”;
- you face a trademark infringement claim for supplying your original products bearing your original trademark because you violate the hijacker’s rights.
Hijacking discovered. What to do?
Once you discover that your trademark has been hijacked, the options typically considered are:
- negotiate – the upside is potential saving of the time and cost involved in a legal battle; the downside is potential reputational damage and hijacking multiplication; in addition, this option may be unavailable as the hijacker might not be willing to negotiate;
- battle – and here we come to checking the anti-hijacking tools available under Belarus law.
Typically the three mostly considered anti-hijacking tools are: non-use cancellation, challenging the registration, and claiming unfair competition.
- Non-use cancellation
The hijacker’s registration may be fully or partially cancelled by decision of the Supreme Court if, without a valid reason, the trademark was not used continuously during any three years after its registration. The burden of proof rests with the applicant. Typically, evidence is collected from the Belarus authorities, for example, from customs re goods supply, from the domain names registrar re domain names, or from the registering authority if sale of goods requires registration (for example, the Ministry of Healthcare for pharmaceuticals). In turn, the hijacker may mount a defense by showing use of the trademark or by claiming that non-use was for a valid reason (for example, waiting for registration of a branded pharmaceutical).
- Challenging the registration
The hijacker’s registration may be cancelled by decision of the patent authority’s appeal board if grounds exist for cancellation. These grounds are limited and include situations when the hijacker’s trademark misleads consumers; or is identical or confusingly similar to a company name or parts of a company name protected in Belarus; or is identical to the name of a work of science, literature or art that is well known in Belarus, or to a character / quotation from such a work. The misleading consumers ground is currently interpreted very literally and is recognised when, for example, a trademark says “made in USA” but is applied to a Chinese product. As to other grounds, no established practice exists, so an applicant is likely to struggle to prove them.
- Unfair competition
The hijacker’s registration may be cancelled following a decision by the antimonopoly authority recognising the registration as unfair competition. Proving unfair competition is challenging. Firstly, the applicant and hijacker should be recognised as competitors, ie, active in the same Belarus market. In the case of a foreign trademark owner this essentially means that the claim should be submitted by a local distributor. Secondly, the applicant may be asked to prove damage, for example, clear evidence of refusal by a particular customer to purchase from the applicant because of the hijacker. Thirdly, unfair competition cannot be pleaded against an individual, because individuals are not covered by competition law. Overall, unfair competition is more likely to serve as a defense if the hijacker attacks, rather than as a tool of attack.
Combating a hijacker in Belarus is legally challenging. Be aware and ensure your trademark is protected.