Disposition of the exclusive right to a trademark containing an appellation of origin or a geographical indication

In today's world, trademarks are an essential part of any business. At the same time, some trademarks may include duly registered geographical indications (GIs) or appellations of origin of goods (appellations of origin), which additionally give them special value and recognition. The right holders of such trademarks strive to effectively dispose of their rights, increasing the value of their product and making a profit. At the same time, there are many questions regarding the specifics of the disposal of exclusive rights to trademarks that include GIs or appellations of origin of goods.

To begin with, it is necessary to understand the terms "trademark", "appellation of origin", "GI", and "disposal of the exclusive right".

Basic terms

The legal definition of a trademark is contained in Article 1477 of the Civil Code of the Russian Federation. In accordance with this article, a trademark is understood as a designation that serves to individualize goods, to which an exclusive right is recognized, certified by a trademark certificate. Thus, trademarks allow consumers to distinguish the products of one manufacturer from the products of other manufacturers.

Legal definitions of GIs and appellations of origin are contained in Article 1516 of the Civil Code of the Russian Federation.

For example, a GI, which is granted legal protection, is understood as "a designation that identifies a product originating from the territory of a geographical object, a certain quality, reputation, or other characteristics of which are largely related to its geographical origin (characteristics of the goods). On the territory of this geographical object, at least one of the stages of production of the product must be carried out, which has a significant impact on the formation of the characteristics of the product."

Appellation of origin, in turn, is " a designation that is a modern or historical, official or unofficial, full or abbreviated name of a country, urban or rural settlement, locality or other geographical object, including such a name or a derivative of such a name and became known as a result of its use in relation to a product, the special properties of which are exclusively determined by those characteristic of this natural conditions and (or) human factors. On the territory of this geographical object, all stages of production of goods should be carried out, which have a significant impact on the formation of special properties of the goods."

Properties of GIs and appellations of origin as means of individualization

Thus, GIs and appellations of origin are means of individualizing goods as originating from a specific territory and, in this regard, having special properties that make it possible to distinguish such goods from goods produced in another area.

Unlike a trademark, one GI and appellation of origin can have several right holders. As in the case of a trademark, an exclusive right arises in relation to the GI and the appellation of origin. At the same time, unlike a trademark, in respect of which the right holder has the exclusive right to use it and dispose of the exclusive right to the trademark, the right holder of the GI and the appellation of origin does not have the latter authority.

Thus, the provisions of Article 1519 of the Civil Code of the Russian Federation do not allow the disposal of the exclusive right to a GI and an appellation of origin (AO), including by alienating it or granting another person the right to use a GI and AO (for example, under a license agreement or a franchise agreement), as well as the transfer of the exclusive right to a GI and AO without entering into an agreement.

At the same time, it should be noted that the provisions of Article 1483 of the Civil Code of the Russian Federation provide for the possibility of registration of a trademark that includes a registered appellation of origin or GI as an unprotected element, but only if the person filing an application for registration of such a trademark has the exclusive right to the relevant GI or AO.

In this regard, the question arises: is it possible to dispose of the exclusive right to a trademark that includes GIs and appellations of origin? If so, are there any peculiarities of disposing of the exclusive right to such a trademark?

Disposal of the exclusive right to a trademark

The answer to this question can be found in the provisions of Articles 1488, 1489 of the Civil Code of the Russian Federation, according to which the disposal of the exclusive right to trademarks including, reproducing or imitating a GI or appellation of origin that has been granted legal protection in the territory of the Russian Federation is allowed only if the acquirer/licensee has an exclusive right to such a GI or such appellation of origin.

A similar provision is contained in sub-clause "k" of clause 3 of the Rules [1], according to which "the alienation of the exclusive right to a trademark that includes, reproduces or imitates a geographical indication or an appellation of origin of goods that have been granted legal protection in the territory of the Russian Federation, or the granting of the right to use such a trademark is allowed only if the acquirer or the person who has been granted the right to use the trademark is allowed only if the acquirer or the person who has been granted the right to use the trademark use of a trademark, the exclusive right to such geographical indication or such a name".

Thus, in the event of registration of a trademark with the inclusion of a duly registered GI or appellation of origin of goods, it is possible to dispose of the exclusive right to such a trademark only if the acquirer or licensee is the right holder of the relevant GI or appellation of origin included in the trademark.

At the same time, it should be noted that the provisions of Articles 1488, 1489 of the Civil Code of the Russian Federation and subparagraph "k" of paragraph 3 of the Rules apply only to those trademarks that were initially registered with the inclusion of GIs or appellations of origin as an unprotected element in them. Thus, the rule on the coincidence in one person of the owner of the exclusive right to the trademark and the owner of the right to use the GI or appellation of origin of goods is observed.

If the trademark was initially registered with the inclusion of a geographical name, which as of the date of registration of the trademark was not duly registered by the State Directorate or appellation of origin of goods, then the restrictions provided for by Articles 1488, 1489 of the Civil Code of the Russian Federation and subparagraph "k" of paragraph 3 of the Rules should not apply when disposing of the exclusive right to such a trademark. The above is also confirmed by judicial practice.

Juricial practice

Thus, CJSC BPC "Kolomensky", being the right holder of a series of trademarks "Kolomenskoye"/"Kolomensky", including in relation to goods and services of classes 30, 35, 39 of the Nice Classification, applied to Rospatent with an application for registration of granting the right to use trademarks under a license agreement in the name of LLC "Khlebny Dom".

Based on the results of consideration of the application, Rospatent sent a notice of refusal of state registration of granting the right to use trademarks under a license agreement with reference to sub-clause "k" of clause 3 of the Rules, due to the presence of a registered appellation of origin No 331 "Kolomna kalach" for the product "kalach", as well as AO No 165 "Kolomenskaya pastila" for the goods "pastila", the right holder of which is not the licensee.

Disagreeing with the refusal of Rospatent to register the granting of the right to use trademarks under the license agreement, Kolomensky applied to the Arbitration Court of the city of Moscow with a corresponding application to recognize such refusal as illegal and to register the obligation of Rospatent to register the granting of the right to use the Kolomenskoye/Kolomensky series of trademarks under the license agreement.

The Arbitration Court of the City of Moscow, by its decision dated 07.02.2025 in case NoA40-222017/24, upheld by the decisions of the Ninth Arbitration Court of Appeal dated 16.05.2025 and the Intellectual Property Court dated 27.08.2025, respectively, satisfied the claims of CJSC BPC Kolomensky.

At the same time, the courts noted that Rospatent did not take into account the fact that the state registration of exclusive rights to the disputed appellations of origin was carried out by Rospatent ten years later (29.12.2023 and 05.05.2017), which gave Kolomensky the exclusive right to use the trademark with the word element "Kolomenskoye" (the date of the earliest priority of the trademark is 21.02.2008).

At the same time, the provision of Clause 3 of Article 1489 of the Civil Code of the Russian Federation may be applied only to a trademark that was initially registered with the inclusion of a GI or AO as an unprotected element (Clause 7 of Article 1483 of the Civil Code).

Since neither the trademark owner nor the licensee are the appellations of origin of goods, the right holder, when granting the right to use the trademark under the contract, contrary to the opinion of Rospatent, does not exceed the rights that he has.

In this regard, Rospatent had no legal grounds for refusing to register the granting of the right to use trademarks under a license agreement.

Thus, it can be concluded that a broad interpretation of the provisions of Articles 1488, 1489 of the Civil Code of the Russian Federation and subparagraph "k" of paragraph 3 of the Rules is not allowed. These provisions should be applied only if the trademark was initially registered with the inclusion of a GI or appellation of origin as a non-protectable element in its composition.

Otherwise, the refusal of state registration of the disposal of the exclusive right to a trademark is illegal and deprives the right holder of the legal right to conduct business activities and make a profit.

Reference:

1. Rules for State Registration of the Disposal of the Exclusive Right to an Invention, Utility Model, Industrial Design, Trademark, Service Mark, Registered Integrated Circuit Topology, Computer Program, Database under a Contract and the Transfer of the Exclusive Right to Them without a Contract (approved by the Decree of the Government of the Russian Federation dated December 24, 2015 No 1416 as amended by the Decree of the Government of the Russian Federation dated April 17, 2020 No 532; dated February 9, 2023 No 189.)