Polina Antonenko, Associate

GRATA International

In Belarus, protection of copyright holders in case of parallel imports is implemented through the following special customs measures.

Copyright holders wishing to protect themselves from parallel imports should contact the State Customs Committee of the Republic of Belarus (hereinafter - SCC) with a corresponding claim and a package of documents on the adoption of measures by the customs authorities to protect the rights to intellectual property. It is mandatory to provide documents confirming the existence and ownership of the right to an intellectual property object (a certificate for a trademark).

The intellectual property object is being included either in the customs register of intellectual property objects of the Republic of Belarus on the basis of the decision of the SCC (Art. 55 of the Law of the Republic of Belarus of 10.01.2014 No. 129-Z "On Customs Regulation in the Republic of Belarus"), or, according to paragraph 1 of Art. 3 of the Agreement on the Unified customs register of intellectual property items of State members of the Customs Union of 21.05.2010, in unified customs register of intellectual property objects of the member States of the Customs Union (hereinafter - the Unified Register).

The main difference between the Customs Register of Belarus and the Unified Register is that if an object of intellectual property is included in the Unified Register, measures to protect it can be taken by any customs authority of a member state of the EEU when importing goods from third countries to the territory of such a member state of the EEU. But if an object of intellectual property is included only in the Customs Register of Belarus, then such measures may be taken exclusively by the customs authorities of our state and only in relation to imported goods.

Registration of an object in the Unified Register entails great advantages, but at the moment no objects are included in it due to the Unified Register includes intellectual property objects that are subject to legal protection in each of the EEU Member States. For items such as trademarks, this means that they must be registered in all member states. In turn, this significantly limits the list of trademarks that can be included in the Unified Register.

How does the protection mechanism work?

If when performing customs operations, the customs authorities find signs of violation of the rights of the copyright holder to intellectual property objects, the release period for such goods is suspended for 10 working days. This term can be prolonged for another 10 days at the request of the copyright holder or persons representing his interests, if they have applied to the authorized bodies for the protection of the rights of the copyright holder in accordance with the law.

The customs authority shall notify the declarant and the right holder or the person representing their interests about such suspension, the reasons and terms of suspension, and also informs the declarant of the name and location of the right holder and (or) the person representing his interests, and the right holder or the person representing his interests - the name and location (address) of the declarant no later than one working day following the day of the decision to suspend the release of goods containing intellectual property objects.

After receiving information from the customs authorities, the copyright holder may apply to the authorized bodies (customs authorities, internal affairs bodies, the Judicial Board on Intellectual Property Cases of the Supreme Court of the Republic of Belarus, etc.) for protection of his rights.

After the expiration of the period of suspension of release of goods containing intellectual property objects, the release of such goods is resumed and carried out in accordance with the procedure established by the Customs Code of the EAEU (hereinafter - CC), with the exception of cases when the customs authority is provided with documents confirming the withdrawal of goods, the sequester of them or their confiscation, or other documents in accordance with the legislation.

If the customs authority is provided with documents confirming the withdrawal of goods, the sequester of them or their confiscation, the release period for such goods is not renewed and the customs authority refuses to release them on the basis of subparagraph 6) of paragraph 1 of Article 125 of the CC of the EAEU.

If the term has expired, and the copyright holder has not applied for protection of his rights to the court or to the customs authority with an application for revocation of the decision to suspend the release of goods, the intellectual property object is excluded from the Customs Register of Belarus.

In practice, there are situations when the right holder does not apply for protection of their rights for various reasons, for example, when importing goods by authorized distributors of the right holder, or the batches of parallel imports are so small that the right holder does not see the need to sue for them.

However, it should be remembered that if the application to the authorized bodies for the protection of rights or to the customs authorities to cancel the decision to suspend the release of goods is not made, the intellectual property object is excluded from the customs register.

Procedure for protecting the copyright holder

The trademark owner can choose the following ways to protect their rights.

  1. Filing a lawsuit with the judicial board for Intellectual Property Cases of the Supreme Court of the Republic of Belarus.

According to the Law "On Trademarks and Service Marks» the trademark owner can file a claim for damages in court, payment of compensation in the amount of up to 50,000 basic units (determining the amount of compensation, the court usually proceeds from the nature of the violation), as also the destruction of counterfeit goods (if it is impossible to remove the trademark from them).

The rate of the basic unit as of March 16, 2021 is 29 Belarusian rubles (about 9.5 euros).

NB: if a dispute has arisen between legal entities and (or) an individual entrepreneur it is required to file a claim to the violator before going to court.

The term of consideration of the case – approximately 3 months.

At the same time, it is also necessary to apply to the court with a written request to secure the claim (in particular, to seize the property), which will be considered by the court without calling the parties no later than 3 days from the date of the appeal. The court's ruling on the imposition of interim measures will be sent to the customs authorities no later than the next day after its issuance, which will make it possible to further suspend the release of goods on the Belarusian market.

  1. Applying for an administrative offense to the authorized bodies (customs authorities, bodies of the State Control Committee). (Article 11.26 of the Code of Administrative Offenses).

The named authorities should conduct an appropriate check, and if there are signs, draw up a protocol on an administrative offense and transfer the materials to the court for their consideration.

The term of consideration of the case – approximately 3 months.

For reference: the paragraph 4 of Article 3 of the Law on Trademarks contains the rules for the exhaustion of the exclusive right to a trademark, according to which it is not recognized as infringement of the exclusive right to a trademark the use of that trademark in relation to goods legitimately introduced in the civil turnover in the territory of member states of the Eurasian Economic Union directly by the owner of the trademark or another person with consent of the owner of such a mark. I. e. Belarus has adopted a regional regime for the exhaustion of exclusive rights in respect of trademarks.

Simultaneous use of two methods of protection is allowed.