Author: Valiantsin Rachkouski, Associated Partner, Patent Attorney of Belarus, Appraiser of Intellectual Property, Lawyer
When resolving conflicts in the field of trademarks in Belarus, an ambiguous practice of appointing of examinations to assess the degree of similarity of the trademark with the designation by which third parties violate the rights to this trademark has developed.
The degree of similarity of the trademark and designations that violate the rights to this trademark is determined in Belarus by the same method by which the examination of trademarks is carried out by the patent office when they are registered. The analysis of designations is carried out by the criterion of sound, visual and semantic similarity. This evaluation is subject to the question of whether the compared designations are associated with each other in general, despite some differences. If the answer is affirmative, the notations are considered to be similar to the degree of confusion. If the disputable designation is used without the consent of the rightholder, then the conclusion about similarity to the degree of confusion with the trademark is sufficient for ascertaining the violation of the exclusive right.
The civil disputes in this category of cases are resolved in the Judicial Board for Intellectual Property cases of the Supreme Court of the Republic of Belarus. It is a specialized court on disputes arising from intellectual property law, and it has exclusive competence in this category of cases.
Cases of administrative offenses are examined by various general courts at the place where the offense was discovered, usually by district or city courts.
The parties of the conflict should be prepared for the fact that the resolution of this legal issue in substance, having a decisive importance for the case, can be delegated to the expert.
Motivation to the appointment and approaches to the examination of the Judicial Board of Intellectual Property cases (in the settlement of civil disputes) and general courts (in cases of administrative violations) are significantly different.
The Judicial Board of Intellectual Property cases is a specialized court and can’t invoke the fact that its judges do not possess the necessary knowledge and skills in the application of intellectual property legislation, but its judges very often appoint the expertise on trademark infringement cases and ask the experts to answer the question if the compared designations are associated with each other as a whole.
The expert commission can include a patent attorney or several patent attorneys, and, depending on the type of designations being compared, the can include a linguist or a designer. At the same time, according to the established practice, the court doesn’t share questions for experts in accordance with their qualifications. The general group of questions is addressed to the commission of experts. Linguist or designer, as a rule, don’t have knowledge of the technique and rules of carrying of examination of trademarks and give their answers to the questions about the degree of similarity of the compared designations mainly from general knowledge or intuitively. In fact, in this case the patent attorneys are responsible for the method of examination of designations in expert commissions. Their qualification characteristics include the knowledge of legislation on intellectual (industrial) property and the skills of its practical application. The judges of the specialized judicial board, which is formed by professional judges and by experts in the field of patent law and practice, have the same qualification characteristics. As a result, when appointing the expertise on civil disputes, the court doesn’t compensate by this way the lack of knowledge in special areas, but transfers in this way to the opinion of experts, primarily on the examination of patent attorneys, the burden of dispute resolution in general.
In practice, in the vast majority of cases the court agrees with the conclusions of the expert examination, duplicating them in the decision and supporting by the reference to the expert conclusion. Thus, the Supreme Court seeks to make decisions, which are extremely difficult to challenge in supervisory procedure. However, there remains the question of the adequacy of the impact of expert opinion on the outcome of the case resolution in civil disputes by the specialized court.
When resolving this category of cases, the parties of the conflict need to take into account the described lack of litigation and actively participate in the formation of questions for experts, seeking their detailed elaboration and division according the competence of experts and excluding the transfer of legal issues by the court to the resolution of experts.
The law enforcement authorities and the courts of general jurisdiction in cases of administrative offenses don’t have yet the profound skills of application of specific legislation on intellectual property, which would be sufficient to form their own conclusions about the degree of similarity of the compared designations. In this regard, they seek to obtain the expert opinion with a direct conclusion about the existence or absence of violation of the right to a trademark. An expert is asked whether there is a similarity between comparable designations to a degree of confusion. The examination is appointed in this case at the stage of verification of the fact of violation by law enforcement agencies and only upon receipt of the expert’s conclusion about the presence of similarity to the degree of confusion between the compared designations the case can be sent to the court. The absence of an expert opinion in the presence of a dispute between the parties of the conflict about the degree of similarity of the designations is equated in this case with the lack of evidence of a violation of the right to a trademark.
In the ruling on the administrative case, the court doesn’t justify the similarity to the degree of confusion by its own conclusions, but limits to a reference to the proof of this fact by the conclusion of the examination. Since the court is not specialized, such an approach is fully justified and apparently will remain until law enforcement authorities and general courts accumulate sufficient experience in resolving administrative matters in the field of trademark protection.
The parties to the conflict need to take this into account and actively participate in the appointment and conduct of the examination in appropriate procedural forms, from the stage of elaboration of questions to the selection of experts. As a rule, the parties are invited to independently find an expert, pay for the examination and submit a report to the authority conducting the administrative process. The ignoring of such a possibility by the party of the conflict reduces significantly its chances for a successful outcome of the case.