“First, you work for your name, and then your name works for you” – this rule completely reflects the essence of the relationship between customers and brands. And, there will always be not quite honest companies that would try to get next to a well-promoted brand and make someone else’s name work in their favor. Nadezhda Hadanovich, Attorney’s Assistant of Stepanovski, Papakul and Partners, dwells on legitimate ways of combatting those who attempt to seize or discredit someone else’s brand.
What does an attempt to seize or discredit a brand look like?
- Use of someone else’s brand in advertisements or subvertisements:
- Usually, it is not the original brand, but a similar brand that is used (legally it is called “a confusingly similar designation”). Classical examples of forged brands: Gucci – Guchi, Hugo Boss – Huge Bous.
- As a rule, the original brand would be used in subvertisements. There are more and more cases, when feedback about companies (usually, negative and discrediting) is posted on various websites by bots rather than by real people. If you find a negative video feedback in YouTube, or a website with mostly negative comments on your company (though you have never posted at that resource, or the resource does not belong to you), if may point at an attempt to damage the reputation and image of your company.
- Use of others’ brand, including a fake, on goods (labels, packaging), in services
Such violations may be found on store shelves directly. For example, the Elema trademark was registered for Nice class 25 (clothing). Should unscrupulous competitors use the Elema designation in relation to clothing sold or manufactured by them, one may state an attempted seizure of the brand.
- Use of others’ brand in a domain name (the so-called cybersquatting):
- Typosquatting means registration of a domain name that is spelled close to the original domain name (such as probusines.by instead of probusiness.by).
- Brand cybersquatting means registration of a domain name that contains a registered trademark, i.e., for future use. In other words, there is a registered trademark, but there is still no registered domain name (or it is not registered in Belarus). The well-known examples of cybersquatting in Belarus are ravak.bу, google.by, kosht.by.
All these actions (use of a brand in advertisements, on goods, in a domain name) may be committed all together or separately in various combinations. The brand owner (provided that the brand as such is registered as a trademark in Belarus in accordance with the national or international procedure) may choose the ways of protecting their rights.
Off-court brand protection options
In the event of an infringement upon trademark rights, judicial recourse is not a cure-all and only solution possible. Moreover, judicial recourse does not necessarily bring the expected results, but it would always take quite a lot of time and efforts.
Thus, other than resorting to judicial recourse, one may:
- Submit a claim to the Ministry of Trade on inappropriate advertisements, as the use of others’ brands in advertisements is not allowed.
What are the benefits?
First, the perpetrator may be held administratively liable for breaching the advertisement regulations (a penalty from 10 to 50 basic units).
Secondly, the MoT may issue an instruction on removal of the established violation of the advertisement and subvertisement regulations.
Thirdly, this option is applicable even if your company does not have a registered trademark yet (as it is not allowed to use trademarks and emblems/other symbols of organizations in advertisements).
Fourthly, the claim is submitted free of charge. The MoT is obliged to provide a reply to a claim, generally, within 1 month. Moreover, such claims are satisfied quite often.
- Submit a statement of violation of the antitrust regulations, in part of unfair competition, to the antitrust authority.
This option is the most painstaking in terms of provability. It requires a registered trademark. You should also consider that the option is not applicable, when the perpetrator is a natural person who does not carry out entrepreneurial activity.
The statement submission is also free of charge. The statement is reviewed, as a rule, within 1 month.
The antitrust authority satisfies the claims of trademark owners much more rarely, than the MoT in relation to inappropriate advertisements. The reason is that the substantiation of the fact of violation of the antitrust regulations is a very complex process.
Judicial recourse
Please note that damages caused by illegitimate use of a trademark may be recovered through a court only. The Intellectual Property Board of the Supreme Court is the only authority in Belarus that has the jurisdiction to review cases of illegitimate use of trademarks.
Please keep in mind that the Board judgment comes into effect instantly. It cannot be appealed in the cassation order, which entails potential expenses for the company, if the case is lost (stamp duty costs, as a minimum).
There is no reason to press the panic button, if the perpetrator is not a resident of Belarus.
The practice of Belarusian companies already demonstrates positive examples of prosecution against non-residents for illegitimate brand use – you may learn about them here.
