REVERA law group case: protecting copyright against bad-faith trade mark registration

Case summary

At first glance, the situation looked almost anecdotal: the work had already been created, the right holder was очевиден (self-evident), and the copyright-protected subject matter was being used lawfully. However, a competitor registered that same subject matter as a trade mark and began imposing its own rules for use.

The legal position was based on the provisions of the Law of the Republic of Belarus of 5 February 1993 “On Trade Marks and Service Marks”, under which designations that are identical or confusingly similar to a work of science, literature or art, its character, a quotation or a fragment, are not registrable without the right holder’s consent, provided that the right to the work arose earlier than the trade mark’s priority date.

For a successful challenge, it was necessary to prove three key conditions:

• confusing similarity;
• the applicant’s ownership of the copyright;
• priority (earlier arising) of rights in the work.

Actions taken by REVERA law group’s legal team

REVERA law group lawyers developed a legal protection strategy and represented the client before the NCIP Appeal Board. In the course of the work, the following was established:

• the disputed designation fully reproduces the client’s copyright-protected subject matter;
• the rights in the work arose significantly earlier than the trade mark’s registration date;
• the right holder’s consent to use the work was absent.

The team prepared an objection to the grant of legal protection to the trade mark and ensured confirmation of all legally relevant circumstances.

Following the review, the NCIP Appeal Board declared the registration of the disputed trade mark invalid.

Project features: practical value and demonstrative expertise

This case demonstrates the practical use of the out-of-court mechanism for challenging trade marks in the Republic of Belarus and the interaction of two independent intellectual property institutions — copyright and trade marks.

A practical takeaway for right holders: it is necessary to regularly monitor trade mark registrations for similarity to your works, record the dates on which rights arise, and seek timely legal support to protect intellectual property.

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Authors: Aliaksei Fedarovich, Pavel Klementsov.

REVERA law group provides legal support on matters of protection of intellectual property objects in the territory of the Republic of Belarus and beyond.