The provisions of Civil Code regarding intellectual property are being amended in Belarus
- 1. The requirement of personal creative contribution to the creation of a result of intellectual activity by a person claiming authorship in respect of such a result is specified.
- 2. The approach to determining the use of intellectual property is changed.
- 3. The rules of interpretation of contracts involving IP objects are established.
- 4. The list of IP objects, the exclusive right to which may be the subject of pledge, is extended.
- 5. The possibility of alienating or granting the exclusive right to an IP object without concluding a contract with the right holder is provided for.
- 6. The payment condition is excluded from the substantial terms of the exclusive right assignment contract.
- 7. The additional requirements are established for the exclusive right to be alienated under an assignment contract.
- 8. The requirements for the maximal term of a sublicense contract are set forth.
- 9. The subject matter of the contract on creation and use of the result of intellectual activity is supplemented by the obligation of the author to transfer to the customer the right to obtain a patent (certificate) for the object created under the contract.
- 10. The risk of accidental inability to fulfill the contract on creation and use of the result of intellectual activity shall be borne by the customer.
- 11. The correlation of norms regulating legal relations of the parties under the contract on creation and use of the result of intellectual activity is determined.
- 12. The moment of transfer to the customer of an IP object developed under the contract on creation and use of the result of intellectual activity is determined.
- 13. The status of an exclusive right to a result of intellectual activity created during the performance of a services rendering contract beyond the subject matter of such contract, is determined.
- 14. The conditions for liability for the exclusive right infringement are established.
- 15. The CC is also supplemented by Art. 1126, which defines the law applicable to foreign economic contracts with intellectual property rights as their subject matter.
On November 18, 2023 the Law of the Republic of Belarus on November 13, 2023 No. 312-Z “On amending of Codes” (hereinafter referred to as the Law) was officially published on the National Legal Internet Portal of the Republic of Belarus.
This Law provides for a complex of amendments to the Civil Code of the Republic of Belarus (hereinafter referred to as the CC), namely the provisions regarding intellectual property.
REVERA’s lawyers have reviewed the main amendments to the general provisions regarding the intellectual property (Chapter 60 of the CC).
1. The requirement of personal creative contribution to the creation of a result of intellectual activity by a person claiming authorship in respect of such a result is specified.
In particular, part 2 of paragraph 4 of Art. 982 of the CC expressly stipulates that persons who provided only technical, consulting, organizational or financial assistance to the author or who only contributed to the registration of rights to such a result shall not be recognized as authors.
2. The approach to determining the use of intellectual property is changed.
According to part 4 of paragraph 1 of Art. 983 of the CC, the use of the IP object belonging to the customer by third parties for the purposes of performing work or rendering services at the request (order) of this customer will not be recognized as the use of the IP object.
Previously, this provision was not included into the CC, but was stipulated by sectoral legislation in relation to trademarks and service marks. After the entry into force of the Law, such provision will be extended to apply to any other IP objects.
3. The rules of interpretation of contracts involving IP objects are established.
In accordance with parts 3 and 4 of paragraph 2 of Art. 985 of the CC, in case a contract contains elements of both the exclusive right assignment contract and the license contract, the rules regarding the license contract shall be applied.
A contract providing for granting the right to an IP object to another person, which does not specify the alienation of the exclusive right to such object, shall be deemed as a license contract.
4. The list of IP objects, the exclusive right to which may be the subject of pledge, is extended.
Paragraph 4 of Art. 985 of the CC permits a pledge of the exclusive right to any IP object.
Previously, this provision was applied only to trademarks and service marks.
5. The possibility of alienating or granting the exclusive right to an IP object without concluding a contract with the right holder is provided for.
In accordance with paragraph 5 of Art. 985 of the CC, such a possibility may be used, for example, when foreclosing of the right holder’s property.
6. The payment condition is excluded from the substantial terms of the exclusive right assignment contract.
In particular, such a contract may not contain an amount of remuneration for the assignment of the exclusive right or a direct indication that the contract is royalty-free as mandatory conditions.
7. The additional requirements are established for the exclusive right to be alienated under an assignment contract.
According to paragraph 4 of Art. 986 of the CC, the exclusive right to be transferred to the acquirer shall be free from the third party claims, unless the acquirer has agreed to obtain the exclusive right encumbered by third party claims. Failure of the right holder to comply with this obligation shall entitle the acquirer to demand termination of the contract and compensation for the losses caused to him.
In the event of alienation of an exclusive right in respect to which the right holder has concluded license contracts with third parties, the rights and obligations of the licensor shall be transferred to the acquirer of the exclusive right.
8. The requirements for the maximal term of a sublicense contract are set forth.
In particular, part 3 of paragraph 6 of Art. 987 of the CC limits the term of a sublicense contract to the term of the license agreement on the basis of which it was concluded.
9. The subject matter of the contract on creation and use of the result of intellectual activity is supplemented by the obligation of the author to transfer to the customer the right to obtain a patent (certificate) for the object created under the contract.
The relevant provision is introduced by part 1 of paragraph 1 of Art. 988 of the CC.
10. The risk of accidental inability to fulfill the contract on creation and use of the result of intellectual activity shall be borne by the customer.
The relevant provision is introduced by part 2 of paragraph 1 of Art. 988 of the CC.
11. The correlation of norms regulating legal relations of the parties under the contract on creation and use of the result of intellectual activity is determined.
In particular, paragraph 3 of Art. 988 of the CC stipulates that if the contract on creation and use of the result of intellectual activity provides for alienation of the exclusive right to the created result to the customer, the provisions of an assignment contract (except for the provisions on the state registration of the contract) shall apply to such contract.
If the contract for the creation and use of a result of intellectual activity provides for granting the customer with a right to use the created result within the limits determined by the contract, the provisions of a license contract (except for the provisions on the state registration of the contract) shall apply to such contract.
12. The moment of transfer to the customer of an IP object developed under the contract on creation and use of the result of intellectual activity is determined.
According to the general rule of part 1 of paragraph 4 of Art. 988 of the CC, the exclusive right to the result of intellectual activity shall be transferred to the customer from the moment of acceptance of the work performed.
Previously, this provision was not included into the CC, but was stipulated by sectoral legislation in relation to the contracts on creation and use of copyright and related rights objects. After the entry into force of the Law, such provision will be extended to apply to the contracts on creation and use of any other IP objects.
13. The status of an exclusive right to a result of intellectual activity created during the performance of a services rendering contract beyond the subject matter of such contract, is determined.
According to the general rule of Art. 989 of the CC, the exclusive right to this result of intellectual activity shall belong to the contractor.
The customer, however, shall be entitled, without the author’s or other right holder’s consent and without payment of additional remuneration, to use the created result of intellectual activity for the purposes for which the contract was concluded (inter alia, to ensure the operation of other objects created under the contract, if it is impossible to use them independently without such a result).
14. The conditions for liability for the exclusive right infringement are established.
According to the general rule of paragraph 3 of Art. 990 of the CC, only the culpable actions of the infringer shall be subject to liability for infringement of the exclusive right.
The infringer shall be liable for the exclusive right infringement committed in the course of business activity, unless he proves that such infringement has occurred as a result of force majeure.
The absence of the infringer's fault shall not exempt him from the obligation to stop the exclusive right infringement, and shall not prevent the infringer from publication of information about the committed infringement, or from suppression of actions that infringe the exclusive right or threaten to infringe such right, or from confiscation of the material objects created as a result of the exclusive right infringement. These actions shall be carried out at the infringer's expense.
15. The CC is also supplemented by Art. 1126, which defines the law applicable to foreign economic contracts with intellectual property rights as their subject matter.
In particular, if there is no agreement on the applicable law between the parties to a foreign economic contract, after the entry into force of the Law the following provisions shall apply:
- The international franchise contract shall be governed by the law of the country where the license complex is allowed to use. In case the license complex is allowed to use in several countries the international franchise contract shall be governed by the law of the country where the franchisor’s place of residence or main place of business activity is located.
- The international assignment contract shall be governed by the law of the country where the assigned exclusive right is valid. In case the exclusive right is valid in several countries the international assignment contract shall be governed by the law of the country where the assignor’s place of residence or main place of business activity is located.
- The international license agreement shall be governed by the law of the country where the licensee is entitled to use the IP object. In case the licensee is entitled to use the IP object in several countries the international license contract shall be governed by the law of the country where the licensor’s place of residence or main place of business activity is located.
- The other foreign economic contracts with intellectual property rights as their subject matter shall be governed by the law of the country with which the contract is more closely connected.
These amendments will enter into force on November 19, 2024.
The Law amends the provisions of the CC regarding certain objects of copyright, related rights and industrial property rights. Stay tuned for the further REVERA’s legal reviews.
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