Special measures of the Republic of Belarus: unauthorized use of IP owned by residents of "unfriendly countries" and parallel import
Under the Act of January 3, 2022 "On Restrictions on Exclusive Rights to Intellectual Property Objects" (hereinafter – the Law) restrictions on exploitation of exclusive rights in IP owned by legal entities or individuals of foreign states that commit unfriendly acts against the Republic of Belarus have been imposed.
The Law grants the right to:
- unauthorized use of IP without the consent of the rightsholder for regulated amout of remuneration paid to National Center for Intellectual Property of the Republic of Belarus (hereinafter – NCIP);
- import of goods into the Republic of Belarus without the consent of the IP rightsholders (so-called parallel import).
Use of the IP without the consent of the rightsholder
Unauthorized use of IP without the consent of the rightsholder or collective property rights management organization (hereinafter – CMO) is possible if the following criteria are satisfied:
- rightsholder / CMO is from foreign countries, committing unfriendly actions*;
- who have prohibited or failed to give a consent (permission) to use IP on the territory of the Republic of Belarus;
- lawfully made available works of the types listed below.
Rightsholders and CMOs are defined as persons:
- related to unfriendly foreign states (including citizenship of such states, place of registration, place of predominant economic activity or predominant profit-making in such states);
- which are under the control of these foreign persons, regardless of the place of their registration or the place of their predominant business activity.
Work that is subject to unauthorized use include the following types:
- computer program (the rightsholder of which is a person included in the list of rightsholders of computer programs);
- audio-visual works (the rightsholder of which is a person, or the management of which is transferred to CMOs included in the list of rightsholders of audio-visual works), that is part of a television program, edited by a state organization and (or) used by the film distribution and (or) film exhibition organizations;
- music (the rightsholder of which is a person, or the management is transferred to a CMO included in the list of rightsholders of music);
- TV and radio broadcast (the rightsholder of which is a person included in the list of rightsholders of broadcasts).
The Council of Ministers of the Republic of Belarus determines the state bodies authorized to determine and maintain abovementioned list.
For such cases the Law suspends art. 55 (2) of the Belarusian Copyright Act (Violation of copyright or related rights).
Payment of remuneration
For the unauthorized use of IP the rightsholders are entitled to remuneration, the amount calculation of which will be determined by the Council of Ministers of the Republic of Belarus. The remuneration is credited to the current bank accounts of the NCIP, where it is kept until demanded by the rightsholder, but no later than 3 years from the date of crediting without the right to use the said remuneration by the patent authority.
NCIP is entitled to deduct from the remuneration accrued a maximum of 20% to cover its costs related to the recording of such remuneration and its payment to the rightsholders and the CMO.
After 3 years the unclaimed remuneration shall be transferred by the NCIP to the income of the Republican budget within 3 months.
Importation of goods without consent of the IP rightsholders
The Law allows unauthorized importation of goods where IP objects are used (contained, included) to the territory of the Republic of Belarus and making them available without the consent (permission) of the rightsholders from foreign states, including those committing unfriendly actions, if such goods are included in the lists of goods (groups of goods) that are essential for the domestic market.
Such goods (groups of goods) should be legally introduced into civil turnover on the territory of any state directly by IP holders or other authorized persons – there is a presumption of legality of introduction of goods into civil turnover.
The Council of Ministers of the Republic of Belarus is authorized to determine the state bodies authorized to determine and maintain the lists of goods (groups of goods) which are essential for the domestic market, as well as the procedure for formation and maintenance of such lists.
According to the Law, the goods will not be included in the list of goods essential for the domestic market, if:
- rightsholders or other persons with their consent (permission) with respect to such goods (groups of goods) carry out trade and economic cooperation with legal and (or) natural persons of the Republic of Belarus; and
- such cooperation does not lead to a critical shortage of these goods (groups of goods) in the domestic market.
The State Customs Committee of the Republic of Belarus will temporarily exclude IP from the Customs Register of Intellectual Properties concerning the goods (group of goods) included in the relevant list of goods (groups of goods).
Provisions of the Law will come into force in 10 days after its official publication and will be effective until December 31, 2024 inclusive.
Commentary
With the adoption of the Law, parallel import is actually legalized in Belarus, which means the possibility of supplying goods (from the established list) to the country without the permission of the IP rightsholder, including registered trademarks, patents and industrial designs, copyright.
It will be enough that the goods were lawfully introduced into civil circulation in the territory of any state. Note that in case of a dispute the rightsholder will have to prove that the goods were originally introduced into civil circulation in the territory of any state unlawfully.
Together with the Executive Order of the President of the Republic of Belarus of April 07, 2022 No.137 "On enforcement documents", which suspended the implementation of the enforcement documents in favor of the residents of foreign countries, committing unlawful acts, the perspectives of litigation for the foreign right holder becomes quite low.
So far, the question arises on compliance of the provisions of the Law with the norms of international treaties concluded by the Republic of Belarus on the protection of intellectual property.
