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The peculiarities of the registration of the designations comprising geographical names

Feb. 19, 2019

As a result of an active state policy on promoting and developing the regional brands, the interest in registering the designations comprising geographical names has deepened.

The use of geographical names in means of individualization

According to the Great Soviet Encyclopedia, geographical names shall mean: “... the proper names of mainlands, oceans, seas, rivers, lakes, islands, mountains, countries, cities, settlements and all other geographical objects on the surface of the Earth.”[1] It is advisable to use geographical names in the designations that individualize a product, thus forming in the consumer’s mind an associative connection between the product and the peculiarities of a particular geographical object.

The means of individualization containing geographical names can be divided into two groups:

1. The objects in which the geographical name is one of the elements.

2. The designations consisting of a geographical name.

Considering the possibility of the existence of several manufacturers or distributors of similar products on the territory of one geographical object, the specialists of Rospatent, in order to protect the interests of ordinary consumers, pay special attention to the examination of such designations.

The peculiarities of the registration of the designations comprising geographical names

A trademark is the most frequently registered means of individualization. As a general rule, according to Subparagraph 3 of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation: “No state registration as a trademark shall be granted to the designations, which do not have distinctiveness or which consist only of the elements that: characterize the products, including the ones that indicate to their kind, quality, quantity, property, purpose, value as well as to the time, place and method of their manufacture or sale....” However, it is allowed to include in the trademark the above elements as unprotected, provided that they do not occupy a dominant position in the designation. Consolidating the restrictions of such kind is not incidental: the right holder of the trademark has the exclusive right to the registered object. If Rospatent provides legal protection to the trademark consisting solely of a geographical name, it will be impossible to use such element in other designations.

The variety of trademarks comprising geographical names.

1. Considering the position that the geographical name occupies, the following shall be distinguished:

― The designations partly consisting of geographical names. In this case, the means of individualization shall be granted protection, and the geographical name shall be included as an unprotected element.

― The trademarks totally consisting of a geographical name. The registration of such designations is made very rarely. As the specialists of Rospatent point out, the protection of such trademarks is permissible only in the case when the geographical name used is not well known.[2]

2. Depending on the purpose for which use the geographical name is used.

― The element is included to indicate to the place of the manufacture, sales or location of the manufacturer. The position of the specialists of Rospatent is that granting protection to such designations is unadvisable. According to Paragraph 2.4 of the Rospatent Recommendations on Certain issues of the Examination of the Claimed Designations: “... The approach is explained by the fact that the geographical name indicating to the geographical origin of the product must be free for use by different manufacturers who manufacture the products, which quality, reputation and other characteristics are associated with the peculiarities of the place of manufacture of the product, with the natural conditions of the latter.” The registration of the designation is possible with the indication of a geographical name as an unprotected element.

― The geographical names used in the designations as a fantasy element and not perceived as an indication to the place of manufacture or sale of the product. According to Rospatent, the trademarks with such elements constitute the least representative group of designations.

The designations with a geographical name as a dominant element

The name of the place of origin of the product as a means of individualization indicating to a particular geographical object

According to the provisions of Article 1516 of the Civil Code of the Russian Federation, the NPOP is a designation that consists of or includes a geographical name (or its derivatives), which has become famous as a result of its use in relation to the product, which special properties are mainly determined by the natural conditions being characteristic of this geographical object and/or the human factors. Thus, the product in relation to which the NPOP is used is necessarily associated with the geographical object and it guarantees the presence of special qualities of the product. The legislator limits a number of the objects that are allowed for the registration – the designation must be known for the reason of the use in relation to the declared product. The applications for the registration of the names of the places of origin of the products are required to include the descriptions of specific properties of the product and an indication of the place of origin of the product, the natural conditions and (or) the human factors that determine the specific properties of the product. According to Paragraph 5 of Article 1522 of the Civil Code of the Russian Federation, if the geographical object is located on the territory of the Russian Federation, it is necessary to enclose a conclusion of the authorized executive authority on the fact that within this geographical object the applicant manufactures the product that meets the requirements of Paragraph 1 of Article 1516 of the Civil Code of the Russian Federation. Both the compliance of the designation with the requirements and also the justification of the indication of the product’s origin are checked during the examination.

This year, the Bill containing the proposals for amending certain provisions of Part 4 of the Civil Code of the Russian Federation was submitted to the State Duma.[3] The following condition is proposed to add to the requirements for the use and registration of the NPOP: “All stages of the product manufacture that influence on the formation of its special properties should be carried out on the territory of the given geographical object.” Adding the requirement to describe the specific properties of the product in the application for the NPOP is also considered.

A geographical indication is a new means of individualization for promoting the regional brands

In the middle of 2018, in the first reading, the State Duma adopted Bill No. 509994-7, according to which it is proposed to add a new object of legal protection – a geographical indication. Currently, the document is being finalized for the second reading. The text of the Bill is available for reviewing. According to the provisions of the act under consideration, a geographical indication is defined as: “... a designation that allows identifying a product as originating from the territory of a geographical object, while the product’s certain quality, reputation or its other characteristics are largely determined by its geographical origin.”

A number of specific requirements will be brought forward for the registration of such designations. Firstly, at least one of the stages of the product manufacturing that influence on the formation of the quality, reputation or other characteristics should be carried out on the territory of the indicated geographical object. Secondly, the applicant is obliged to submit the data on the place of origin of the product, on the association of the product’s certain quality, reputation or other characteristics with the place of origin. The product’s specific features, the conditions of storage, transportation and the procedure for monitoring the compliance with the conditions of the manufacture and the characteristics of the product should be described in the application.

Advantages and disadvantages of using the means of individualization containing geographical objects

The obvious advantage of such designations is drawing the consumer’s attention to the product by indicating to the product’s unique characteristics associated with the peculiarities of the geographical object. However, when using the means of individualization with geographical names, it is highly probable that the consumer will be confused in relation to the properties of the product or to its manufacturer. Thus, thinking whether it is advisable to use a geographical name in the designation, it should be taken into account that the inclusion of such specific element can both strengthen the position of the right holder at a competitive market and weaken it reducing the consumer’s demand in the result of mixing the similar products.

 

[1] The Great Soviet Encyclopedia. — М.: The Soviet Encyclopedia. 1969—1978 – URL: https://dic.academic.ru/dic.nsf/bse/78455/%D0%93%D0%B5%D0%BE%D0%B3%D1%80%D0%B0%D1%84%D0%B8%D1%87%D0%B5%D1%81%D0%BA%D0%B8%D0%B5

[2] Order of Rospatent of March 23, 2001 No. 39 (the version of July 6, 2001) “On Approval of the Recommendations on Certain Issues of the Examination of the Claimed Designations”

[3] Bill of July 13, 2018 No. 509994-7 “On Amending Part Four of the Civil Code of the Russian Federation” – URL: http://sozd.parliament.gov.ru/bill/509994-7

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Author of article

Sergey Zuykov

Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney