Protection and Disputing Rights for Geographical Indications
In accordance with the article 1516 of the Civil Code of the Russian Federation a geographical indication (GI) is a sign representing or containing contemporary or historic, full or abridged name of the country, city, town or village, region or other geographical object as well as sign derived of such name that became well-known because it is used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin.
It is important to note that the right to use geographical indication of product’s origin can be granted to unlimited number of people who produce the same products on the same territory. These products have the same number of qualities, characteristics or reputation.
If geographical indication is not registered then you need to file an application for the registration of GI and for the right to use it. If the final decision for this application is positive, the geographical indication is registered, a special number is assigned to it and the applicant receives the certificate for the right to use such registered GI.
Subsequently all people manufacturing identical products with the same characteristics have the right to file applications for the right to use the registered GI.
At the moment in accordance with the Russian legislation it is prohibited to register as trademarks any signs similar or confusingly similar to the registered places of origin of products.
In regard to GI it is possible to dispute granting of legal protection for the name of origin of product (… disputing of final decision of the Federal Intellectual property executive body on state registration of the name of product’s origin and on granting exclusive right for such name as well as issuance of all certificates for the exclusive right for the name of product’s origin) – within the whole period of protection; to dispute granting exclusive right for the registered earlier name of origin of product ( … disputing of final decision of granting the exclusive right for the registered earlier name of origin of product and issuance of the certificate for the exclusive right for the name of product’s origin) within the whole period of validity of the certificate for the exclusive right for GI.
If you have a trademark with earlier priority and a certain person uses GI that confuses consumers then legal protection for such GI can be disputed in Rospatent and cancelled within 5 years from the date of publication of the information about state registration of the name of product’s origin in the official bulletin.
Zuykov & partners lawyers will be happy to help you in protection and disputing rights for geographical indications.