Protection against trademark infringements while import to Belarus

published on May 20, 2019 | reading time approx. 3 minutes

In order to secure industrial property rights in the Republic of Belarus it is essential to perform control over import, which proves to be an effective tool aimed at combating trademark infringements and “grey imports” already at the border. The control of goods that are protected by trademark law is automatically carried out by the respective customs authorities of the member states of the Eurasian Economic Union (hereinafter “EAEU”) when the trademark is registered in the respective national customs register of intellectual property rights.

Thus, if a trademark is entered into the customs register of intellectual property rights the import of goods by any unauthorized importer will be suspended by the customs bodies and the right holder will have the opportunity to exercise his rights and take necessary measures.

With reference to the Madrid Agreement on the International Registration of Trademarks of 1891, Belarus is the member of this system, hence international trademarks gain protection in Belarus.

Exclusive rights belonging to a trademark owner

Trademarks are legally protected in the territory of the Republic of Belarus if the following conditions are met:

a trademark is registered in the Belarusian Intellectual Property Centre
or
a trademark is subject to protection under the international treaties of the Republic of Belarus (Madrid Agreement).

According to Article 3 of the Law of the Republic of Belarus No. 2181-XII dated February 5, 1993 “On trademarks and service marks“ (hereinafter - “Law on Trademarks“), only the trademark owner is entitled to use the trademark belonging to him as well as prohibit its use by third persons. In addition provision 2 of Article 3 of the Law on Trademarks contains the right to prohibit the use of trademarks protected in the Republic of Belarus performed without the permission of the trademark owner. Such right refers also to the right of import of goods labelled by the relevant trademarks.

Types of use of trademarks

Under Article 20 of the Law on Trademarks the use of a trademark shall mean its application:

on goods that are offered for sale, including their labels or packages;
on documentation related to the entry of goods into the market;
in advertising, print publications, signboards, while exposure at exhibitions and fairs held in Belarus;
on the Internet (including in domain names).

“Grey” or “parallel” import

According to Belarusian law the violation of the exclusive right to a trademark occurs when the use of trademark or designation similar to it to the degree of confusion is made without the permission of the right holder.

A related topic here is a so-called “grey” or “parallel” import. Such notion refers to import of goods purchased abroad and imported to the EAEU via distribution channels that are not authorized by the trademark owner, i.e. not via authorised importers.

Entry of the trademark in the customs register as the most effective way of the protection of rights

By means of entry of trademark into the customs register grey or parallel import can already be intercepted when the importer attempts to import goods into the Customs Union of the EAEU. This will automatically prevent the flow of goods into the EAEU market.

The Customs Register of Intellectual Property Objects of the Republic of Belarus is regulated by Chapter 44 of the Law of the Republic of Belarus “On Customs Regulation in the Republic of Belarus”.

Although the introduction of the EAEU-wide intellectual property rights customs register was already agreed in the EAEU agreements, the EAEU member states have so far failed to implement it in practice. Therefore, trademarks have yet to be individually registered in all national customs registers of the EAEU member states in order to ensure the EAEU-wide import protection.

In order to register a trademark in the Belarusian Customs Register and thus to ensure trademark control at the Belarusian EAEU external border, the right holder must file an application for registration with Belarusian customs office.

If the registration has been made, it is valid for two years and can be extended numerous times.

Possible ways of protection of infringed rights of the right holder

If the customs authority discovers the signs of infringement of the rights to trademark while import of goods into Belarus, the importation of the goods is suspended for 10 business days.

The customs office immediately informs the right holder about the suspension of the import procedure.
The right holder then has the opportunity to undertake one of the following actions:

To seek protection of the infringed rights, i.e.to initiate the procedure of seizure, confiscation of goods. Such actions are sought from the competent authorities including Customs office, Internal Affairs, the judicial board for intellectual property affairs of the Supreme Court of the Republic of Belarus or
Release goods for further customs clearance (cancel suspension and allow import).

If the right holder does not react to the customs authorities’ notification within 10 business days, the goods are released for customs clearance and can be freely imported to Belarus.

The right holder is not entitled to take any other actions, as these are not provided for in the EAEU Customs Code. For example, the right holder is not entitled to oblige the importer to export the goods or to declare objection to import.

Trademark infringements recognized in due time while import into the Republic of Belarus can be combatted by certain regulatory measures. In addition, the right holder has the option to bring a civil lawsuit against the importer.

Belarusian control at the customs thus offers far-reaching possibilities to apply sanctions to grey imports or trademark infringements already at the stage of import of goods. It is however decisive here to observe the 10-day deadline. In order to ensure compliance with the deadline, it is particularly advisable for foreign right holders to have a local representative who can respond promptly and take the necessary actions in a timely manner.