Gowling WLG (International) Inc - Russia
On 26 July 2019 the Russian president signed a bill on a new, independent form of intellectual property – geographical indications (GIs). The bill introduces amendments to Part IV of the Russian Civil Code and the federal law on the manufacture and circulation of spirits and alcoholic products.
When the law comes into force next year, GIs will coexist with appellations of origin, which are currently protected under Russian law. Among the most famous Russian names registered as appellations of origin are Khokhloma painting, Gzhel porcelain, Russian Vodka and Abrau-Durso sparkling wine, to name a few. Such famous foreign names as prosecco for Italian wines, tequila for a Mexican national alcoholic spirit, habanos for Cuban cigars and prosciutto di parma for Italian dry-cured ham are among those already protected appellations of origin in Russia.
Geographical indications versus appellations of origin
A GI is a designation that identifies a product as originating from a geographical location, which substantially determines a certain quality, reputation or other characteristics of the product. At least one stage in the manufacturing process must take place in the specified geographical location.
As opposed to GIs, appellations of origin require that special characteristics of the product be determined solely by natural and human factors pertaining to that specified geographical location. For that reason, the entire manufacturing process must be carried out within one particular geographical location.
The recognition to be accorded to GIs aims to solve the ongoing issue of a cumbersome registration procedure for appellations of origin by providing an alternate means of protection with more lightweight requirements around a designation’s proof of status. Currently, only about 200 appellations of origin are registered in Russia. By contrast, more than 3,400 product names are protected as GIs in the European Union. It is expected that the new form of protection will stimulate the development of so-called regional brands and strengthen their protection in Russia.
The Russia Patent and Trademark Office (Rospatent) will accept applications for the registration of new local and previously registered foreign designations. It is noteworthy that foreign designations protected under a different means of individualisation in the state of origin can nevertheless be registered as GIs in Russia as long as the rights holders can present documentary evidence of its local right. However, appellations of origin require that the original form of protection be consistent with the requested status.
Exclusive rights for a GI may be obtained by one or more individuals or legal entities by filing an application with Rospatent. Moreover, a GI may be registered by an association organised and operating in accordance with the legislation of the country of origin.
The application must include information describing the connection between essential features of the product – namely the quality, reputation and other characteristics – and the place of the product’s origin or manufacture, along with documents confirming this. Similar to the appellations of origin, there will be a requirement to describe the special characteristics of the goods or to provide evidence that all goods produced under a certain GI are distinguished by a single unique set of features.
The exclusive rights to a GI will be valid for 10 years and renewable for an unlimited number of subsequent 10-year periods as long as the rights holder retains the ability to produce the goods consistent with the established set of characteristics. If rights holders for foreign designations lose their right in the country of origin, protection in Russia will terminate as well.
Exclusive rights to a GI
Rights holders are entitled to use their product’s GI by all means provided by the law, as well as to prohibit third parties from using the GI – even as a translation from another language or with a disclaimer ‘sort’, ‘type’ or ‘imitation’, as well as other confusingly similar designations that are likely to mislead consumers.
Rights holders will be entitled to use the appropriate warning signs “registered appellation of origin of goods” or “registered geographical indication” as the case may be, as well as the respective symbol (not introduced so far) in order to notify third parties of their rights.
As with appellations of origin, it will not be possible to transfer or assign exclusive rights to a GI.