How to protect copyright if a competitor registers your work as a trade mark

At first glance, the situation seems almost anecdotal. The work has already been created, the rightsholder is obvious, and the copyright object is being used lawfully — what could possibly go wrong?

Unfortunately, the answer is familiar to many rightsholders: a competitor registers the same object as a trade mark and starts dictating their own rules of the game.

REVERA’s lawyers successfully defended the interests of a client — a resident of the Republic of Belarus selling both large and small electric vehicles — in a copyright protection dispute considered by the Appeals Board of the National Centre of Intellectual Property (NCIP).

Legislative framework and legal grounds

Belarusian legislation provides an out-of-court procedure for challenging the legal protection of a trade mark. As a first step, such disputes are considered by the NCIP Appeals Board within the procedure for filing and examining objections to the grant of legal protection to a trade mark in the territory of the Republic of Belarus.

Pursuant to Article 5 of the Law of the Republic of Belarus dated 5 February 1993 “On Trade Marks and Service Marks”:

Designations identical to, or confusingly similar to, the following may not be registered as a trade mark:

• the title of a well-known work of science, literature or art;
• a character or a quotation from such a work;
• a work of art or a fragment thereof, without the rightsholder’s consent, if the right to the work arose earlier than the priority date of the trade mark being registered.

Three key conditions for challenging a trade mark

1. Confusing similarity: the mark must be visually, phonetically, or conceptually similar to the work.
2. Ownership of copyright: the applicant must prove that they are the rightsholder of the work.
3. Priority of rights: the rights to the work arose before the date of registration of the trade mark.

How REVERA secured protection for the client

REVERA’s lawyers proved that all three conditions were satisfied:

• the disputed designation fully reproduces the client’s copyright object;
• the rights to the work arose long before the date of registration of the trade mark;
• the rightsholder’s consent to use it was absent.

Following the consideration, the NCIP Appeals Board declared the registration of the disputed trade mark invalid, thereby ensuring proper protection of the client’s exclusive rights.

Practical recommendations

1. Check trade mark registrations for similarity with your works.
2. Document the initial creation and the dates on which rights arose.
3. Consult lawyers to understand the permissible scope of use and the priority of rights.

Authors: Aliaksei Fedarovich, Pavel Klementsov.

REVERA’s lawyers are ready to protect your intellectual property in Belarus and beyond.