EVERYBODY IS FAMILIAR WITH THE WORD "CUSTOMS". THERE ARE MUCH FEWER PEOPLE WHO ARE FAMILIAR WITH THE PHRASE "INTELLECTUAL PROPERTY". AND ONLY A FEW HAVE AN UNDERSTANDING OF HOW THE TWO ARE LINKED. BUT USING THE INTELLECTUAL PROPERTY PROTECTION MECHANISMS WHEN CLEARING THE GOODS BY CUSTOMS AUTHORITIES MAY HELP THE OWNER OF THE TRADEMARK AS WELL AS BRING PLENTY OF TROUBLE TO A DECLARANT TRYING TO ENTER THE COUNTERFEIT GOODS.
The legislation provides the trademark owner with an option to enter the information about its trademark into the Customs Register of Intellectual Property Objects. It is important to note that the same trademark may belong to different owners in different countries (and every country carries the Customs Register of its own). This means that, for example, if a product is purchased in Germany from the owner of a German trademark, when imported into Belarus, it may turn out that the same trademark concerning the same goods belongs to another person who is entitled to the import of goods of "the German colleague". And references to the legality of the purchase of the goods will not matter – in Belarus, the rights of the Belarusian owner, not the German one, are valid. Furthermore, the trademark duration is not limited (provided it is renewed in time), i.e., once registered, it may last quite long. Unlike patents (which have a limited validity period, after which any person can be sure that there can be no claims under any circumstances), the information that a trademark was registered "very long ago" does not in any way exclude the risk of colliding with a valid trademark. Some trademarks have been in effect for decades, there are trademarks that have been around for over a hundred years. And it is illegal to use the trademark without consent from its owner.
After the trademark is entered into the Customs Register, the customs authorities will be conducting checks of all the incoming goods bearing the trademark. If a declarant trying to enter the goods bearing the trademark is not listed in the Customs Register as an authorized person, then the declarant, as well as the owner of the trademark or its representative, are notified about the suspension of the goods, and a written consent needs to be submitted by the owner of the trademark before the customs authorities to go on with the clearance procedures and, subsequently, allowance of the goods. Upon the notification, the declarant will have to apply for the trademark owner's consent, otherwise, the entrance will incur administrative or civil misconduct (the owner of the trademark will have an option to decide on how to defend the rights).
The mechanism for entering the trademark information into the Customs Register gives several advantages to the owner of the trademark.
Firstly, the counterfeit may be revealed at the stage of the customs clearance. The owner not only may prevent the counterfeit goods from entering the territory of Belarus but also find and penalize the infringer.
Secondly, the procedure is useful in protecting the interests of distributors offering the goods for sale in Belarus as well as controlling volumes of the goods entering the territory of Belarus and suppliers providing the goods to the territory of Belarus.
And thirdly: the owner of the trademark is given a real mechanism for controlling the goods bearing its trademark crossing the border. This would help both not to allow to Belarus the goods not designed for this particular market (for instance, possessing technical standards other than adapted here – 110V electricity grid), and to fight so-called grey import.
Once the owner of the trademark decides to enter the information about its trademark into the Customs Register, the following information must be paid attention to:
1. The trademark is always registered for specified goods. The trademark may only be entered into the Customs Register in respect of the goods it is registered for. The existence of a registered and valid trademark is a mandatory condition.
2. If the goods are supplied to Belarus on a permanent basis, with no information on any authorized representative entered into the Customs Register, receiving the notifications from the customs authorities on suspension of the goods is going to be regular, and it's the owner of the trademark who is solely responsible to respond to them, and failing to respond to a single notification may lead to the exclusion of the trademark from the Customs Register.
3. Every country carries the Customs Register of its own, therefore, requirements for entering the trademark and options the entering grants differ depending on the country. For instance, in Belarus, only the trademarks possessing a word element are eligible for entering. Other countries allow entering information about other objects (for example, inventions). In Belarus, customs authorities conduct checking of the goods to enter the territory of Belarus, while in China, a two-way checking is conducted.
4. Customs measures are only taken if there is a customs border between Belarus and the other country. Within the framework of the Customs Union goods freely move from Russia to Belarus and there is no control from the customs authorities if the trademark is used lawfully.
The declarant trying to enter the goods marked with the trademark belonging to others without prior consent from the owner of the trademark should understand it may face the situation when expenses in connection with obtaining the trademark owner's permission may be significant and even nullify the income from the sale of the goods.
Therefore, trademark owners should bear in mind such mechanism for protecting their rights as the Customs Register of Intellectual Property Objects, which contributes to revealing counterfeit and grey import. At the same time, any importer who purchases goods outside lawfully should keep in mind that not every article may lawfully enter the territory of Belarus.
For instance, the declarant is going to enter a large batch of perishables without the prior consent from the right holder. The goods are suspended by the customs authorities and the owner of the trademark is given ten working days to decide whether to grant permission. The shelf life of the goods may be over and permission, even if granted eventually, will have no sense. Or the declarant is trying to enter goods of an exceptionally high price. The owner of the trademark refuses to grant permission for the goods to go through. Consequently, the declarant has the choice, either to enter the goods under the trademark owner's condition – for instance, to re-export the goods (otherwise, to face a civil proceeding from the owner of the trademark who already has all the evidence in hand), or decline the conditions and face the administrative proceedings which will most likely lead to a fine and confiscation of the goods.
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